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ABSTRACT
This article analyzes the procedure for resolving disputes in the field of intellectual property, in particular the
mechanism for the protection of trademark rights at the national and international levels, identifies the main problems
existing in the legislation and law enforcement practice on the issues of parallel import and introduction into civil
circulation of counterfeit products in the Republic of Uzbekistan. The concept of terms such as counterfeit and parallel
imports, which includes practices and international acts in the field of intellectual property, is also investigated.
KEYWORDS
Unlike objects, which include the results of intellectual activity, the means of individualization are not associated with
the creative process of an individual subject, but as indicated in article 97 of the Civil Code of the Republic of
Uzbekistan, they are equated in their legal regime with them.
INTRODUCTION
Objects of intellectual property have always been
subject to unauthorized use, unlike other objects of
civil circulation. This is due to the fact that the process
of protecting the created intellectual labor is complex,
multifaceted and has its own nuances. Any actions of
third parties aimed at the use and distribution for
commercial purposes without permission are
tantamount to an encroachment on the exclusive
Research Article
INTERNATIONAL LEGAL PROTECTION AND MECHANISM FOR THE
PROTECTION OF TRADEMARK RIGHTS
Submission Date:
February 17, 2023,
Accepted Date:
February 22, 2023,
Published Date:
February 27, 2023
Crossref doi:
https://doi.org/10.37547/ajast/Volume03Issue02-06
Rakhmonova Mohichehra Nodirbekovna
Department Lecturer Intellectual Property Right Of Tsul, Uzbekistan
Journal
Website:
https://theusajournals.
com/index.php/ajast
Copyright:
Original
content from this work
may be used under the
terms of the creative
commons
attributes
4.0 licence.
Volume 03 Issue 02-2023
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rights of the real creators or copyright holders of
intellectual property.
This paper analyzes the need to register one of the
most popular means of individualization - a trademark
and a service mark (hereinafter referred to as a
trademark), in particular the international registration
system.
The extent of the exclusive right to a trademark is
limited to the territory of the state where the
trademark is registered. The need to register a
trademark in the territory of other countries today is
explained by many factors. In particular, with the entry
of enterprises of the Republic of Uzbekistan into world
markets, the widespread development of cross-border
relations and communication systems, the distinctive
feature of the goods and services of all companies
must be properly formalized and confirmed by the
protection Documents.
In his speech on measures to improve the system of
protection of intellectual property objects on October
12, 2020, the President of the Republic of Uzbekistan
Shavkat Mirziyoyev stressed the importance of
registering trademarks, especially at the international
level. As mentioned in his speech: "In our country,
about 4.5 thousand objects of intellectual property are
registered annually, including more than 2 thousand
trademarks." [1]
However, the international registration system today
lags far behind. To date, only 78 domestic brands have
passed such registration. Incoming international
applications to the market of Uzbekistan are several
times more - 66671 for all time, and 45401 are valid[2].
Growing competition is forcing world-famous brands
to think through increasingly creative and complex
trademark design, resorting to expensive advertising
campaigns to maintain exclusivity. This, in turn, creates
a fertile ground for unfair competition, as most
companies are looking for easy ways to get rich quick
at the expense of well-known brands, rather than
coming up with their own ways of development and
recognition. Also, the main problem is expressed in the
fact that trademarks on the principle of territoriality
have restrictions in protection on the territory of other
states. Most unscrupulous enterprises, having learned
that potentially developing trademarks do not have
protection in their state, register these trademarks,
receive protection and act on behalf of real copyright
holders.
The question arises of how to improve this mechanism,
what international standards to implement in their
normative documents and to strengthen their position
in the international market for goods and services.
Law No. 534 of May 2, 2019 increased responsibility and
made appropriate changes and additions to the Code
of the Republic of Uzbekistan on Administrative
Responsibility for the Illegal Use of Goods in order to
ensure the exclusive rights of right holders. This also
gives reason to believe that the protection of
trademarks at this stage has reached a new level.
The Agreement on Trade-Related Aspects of
Intellectual Property Rights (hereinafter referred to as
TRIPS) is currently the basic document within the
framework of the World Trade Organization
(hereinafter referred to as the WTO), which regulates
the protection of intellectual property, and also sets
standards for IP protection for WTO member states.
The peculiarity of the provisions of TRIPS is the content
in it of reference rules to other existing multilateral
international agreements, for example, to the norms
of the Paris Convention for the Protection of Industrial
Property (1967), the Berne Convention for the
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Protection of Literary and Artistic Works (1971), the
Rome Convention for the Protection of Performers,
Producers
of
Phonograms
and
Broadcasting
Organizations (1961) and the Treaty on Intellectual
Property in Respect of Integrated Circuits (1989) year).
Unlike other international agreements in the field of
intellectual property, TRIPS has a very broad scope due
to the fact that it establishes the requirements that the
legal systems of the participating States must meet in
the field of enforcement and effective protection of
intellectual rights.
Thus, the study of the international system of
registration of trademarks, mechanisms for protecting
the rights of trademark owners, according to the
author, is a priority for both beginners and modern
lawyers who perform a variety of legal work:
developing the terms of a contract in the field of
intellectual property (complex business license
agreement, copyright agreement, license agreement,
etc.), drawing up and accompanying the transaction,
advising on the protection of intellectual property
rights, representing the interests of a party in a court
that considers and resolves a dispute in the field of
intellectual property.
Features of the international trademark registration
system. The territorial effect of a trademark does not
make it possible to fully use this asset. For example,
when an enterprise enters the markets of other
countries, it becomes necessary to think about
protecting its product in this territory. The trademark
is no exception. Being one of the ways of advertising
and leaving behind the perception and memory of the
company's products and activities, we can safely say
that a trademark is a brand image.
As is often the case in practice, there may be various
situations that a trademark owner may encounter
during the initial stage of entering a new market. For
example, a similar or exactly the same trademark has
already been registered in this state, and the right of
priority has already exhausted itself, or, according to
some internal national rules, this trademark cannot be
registered. To do this, you need to study the market in
advance, conduct a preliminary search and identify
acceptable and possible scenarios for the development
of events. Thus, all the grounds for registering a
trademark in one's own country are applicable to the
commercialization of goods or services in foreign
markets.
These reasons are not an obstacle to skip the
registration step, since a protected designation is
many times better than when there are no rights to it,
especially in a foreign country. When a foreign
enterprise does not have security or licensing
documents, this may affect the rights of third parties.
Moreover, not only large enterprises, but also those
who have small businesses seek to protect their
products from mixing or counterfeiting. Since, starting
your own business, you can significantly expand it in a
couple of years, offering your products in many
regions, which will require not only its protection
against counterfeiting, but also the difference
between the products of this manufacturer and similar
products from other manufacturers.
To prevent such problematic situations, as well as to
expand the scope of the territorial influence of the
enterprise, it is necessary to resort to the international
registration of a trademark. There are several
registration methods and systems for this.
The first way, which is provided for in the Paris
Convention for the Protection of Industrial Property of
1883, is the use of national treatment. With regard to
the protection of industrial property, the nationals of
each country shall enjoy in all other member countries
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the same benefits as are accorded or will be accorded
to their own nationals [3].
Based on the right of priority, each applicant may
register a trademark abroad at any time, subject to the
condition that the application abroad must be filed
within six months of filing the application for
registration in the country of origin [4]. In other words,
if a mark is applied for in another country within six
months and the registration is successful, then the
mark will be considered registered in that country from
the date the mark is filed in the country of origin.
To prevent the theft of a new individualizing
designation, it is recommended to have time to
register it within this period of time. Of course, this
cannot be done everywhere. But with the main initial
registration of a trademark with enterprises aiming to
cover specific sales regions, they can use this
procedure. Due to the fact that many countries use the
provisions of the Paris Convention in their internal
rules, and other international documents duplicate the
rules from this convention [5], this method is still one
of the best options.
Moreover, unlike patents or industrial design rights, in
the case of which, if the deadline for claiming the right
is missed, the possibility of filing subsequent
applications may be lost, in the case of trademarks, if
the six-month period is missed, the application filed
outside the country will be dated on the day of its
actual filing, rather than the filing date of the original
application[6]. This means that filing a trademark
application directly with the country in which
protection is needed is also possible. This procedure is
called national.
The national procedure for registering a trademark
means that the applicant applies to the authorized
national departments of a particular country on his
own. In this case, the applicant must follow all the
formalities prescribed in the legislation of this country.
These include filing an application in the state language
of that country, paying fees for consideration of the
application and issuing a certificate, and in some
countries the obligation to apply to the services of
patent attorneys for trademarks. The terms for
consideration of an application in each country are
individual, depending on those international acts that
were adopted in a particular state.
There is also the possibility of receiving an application
in one region, that is, in several states at once. This
procedure is called regional. It makes it possible to
obtain protection in countries that are members of the
regional trademark system. Thus, by submitting an
application to a specific regional office, you can get
protection that is valid on the territory of all countries
participating in the system. The most demanded
system of regional procedure is the system of the
European trademark, the registration authority which
is the European Union Intellectual Property Office
(EUIPO). 135,000 register with this office every year,
and all members of the European Union are members
[7].
Whereas previous methods of registration referred to
filing an application directly with the country or region
in which protection is sought, while respecting all the
domestic rules provided for in those systems, the
International Procedure has been created to unify this
process. The so-called Madrid System got its name
from the adoption of the Madrid Agreement of 1891,
and the subsequent adoption of the Madrid Protocol
of 1989. The system is administered by the World
Intellectual Property Organization (WIPO).
On April 14, 1891, the Madrid Agreement on the
International Registration of Marks entered into force,
providing for the possibility of providing citizens of the
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states that signed the agreement with the protection
of their registered marks in other countries
participating in the agreement by filing applications
with the International Bureau of the World Intellectual
Property Organization.
The Protocol to the Madrid Agreement Concerning the
International Registration of Marks was adopted on
June 27, 1989. The most important innovation is that an
international application is now based not only on
registration, but also on an application for registration
with the Office of the country of origin of the basic
application. All countries that have joined the Protocol
are members of the union. Membership of the
intergovernmental organization on special terms is
also envisaged.
A very important condition of this protocol is the
provision on the relationship between the protocol
and the Stockholm version of the Madrid Agreement
on International Registration. According to this article,
if, in respect of a specific international application or a
specific international registration, the Office of origin is
the Office of a State that is both a party to the protocol
and the Madrid Agreement in its Stockholm version,
then the provisions of the said Protocol will not have
effect in the territory of any other State that is also
simultaneously party to the Protocol and the Madrid
Agreement.
But as of November 2015, all Contracting Parties to the
Madrid System are parties to the Madrid Protocol,
which governs all transactions by or against
Contracting Parties and users [8] .
The created system has two goals:
–
facilitating the acquisition of protection for marks
(trademarks and service marks);
–
simplification of the registration management
process.
These objectives are implemented as follows: the
registration of a mark in the International Register
provides its protection in the contracting parties to the
same extent as if this designation were the subject of
an application for registration in each of the
contracting parties[9].
Since an international registration is equivalent to a set
of national registrations, the subsequent management
of such protection is greatly simplified. While the sign
will be protected in all Madrid Member States, only one
registration will need to be renewed, and the entry in
the register of changes such as a change in ownership
or a change in the name and address of the owner, or
a limitation in the list of goods and services, may be
carried out with a single procedural action that will
cover multiple registrations[10]. On the other hand, if
there is a wish to transfer the registration for only
some of the designated Contracting Parties, or only for
some goods or services, or to limit the list of goods and
services for only some of the designated Contracting
Parties, the Madrid System is flexible enough to
achieve this.
Other features of the Protocol to the Madrid
Agreement include the possibility of converting an
international registration into national or regional
registrations. For example, if an international
registration is canceled at the request of the Office of
the country of origin of the mark, the applicant has the
right to file an application for registration of the same
mark in any of the countries that have signed the
Protocol. At the same time, the priority of filing an
application is retained under certain conditions from
the date of its receipt by the International Bureau of
WIPO.
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As WIPO explains on its website, the Madrid System is
a convenient and cost-effective mechanism for
registering and managing trademarks around the
world.
The simplification of the procedure lies in the fact that
by submitting only one application to the authorized
office for the registration of trademarks, in the
protocol such an office is referred to as the “office of
origin”,
it is possible to obtain legal protection for a
trademark simultaneously in several states at the
choice of the applicant. At the moment, the system
includes 124 states. The language of the registration
process is also fixed. The applicant chooses one of
three languages - English, French and Spanish.
However, if some countries put under the conditions in
which particular language to draw up an application,
then these conditions will have to be met. Moreover,
WIPO has developed uniform forms that the applicant
must complete in order to file a registration, which is
very convenient and efficient. The international
registration procedure saves a lot of time. The period
of examination of an international trademark
application has clear time limits: no more than 12
months for the countries of the Madrid Agreement and
no more than 18 months for the countries of the
Madrid Protocol.
The economy lies in the fact that by choosing this
procedure, the applicant receives a fixed fee from
WIPO and a calculated individual fee in each country
where protection is required in a single currency - the
Swiss franc. At the same time, everyone can calculate
the fee online on the WIPO website; this fee calculator
is designed for the convenience of applicants. Thus, an
analysis of approximate costs is made in advance, and
no extra funds are spent.
The Madrid System greatly simplifies the subsequent
management of trademarks, as it is possible to record
subsequent changes or renewals in a single procedural
step[11]. The application processing time is extended.
The Office of the country to which the application for
registration has been sent must notify the
International Bureau of WIPO of a total or partial
refusal of protection no later than 18 months[12].
However, the holder does not have to wait for the
Office of each Contracting Party in which protection is
sought to take a positive decision on the registration of
the mark; if, within the prescribed period of 18 months,
the Office does not give notice of refusal, the mark
shall enjoy protection in the Contracting Party
concerned. In some cases, the holder does not even
have to wait for the expiration of this period to find out
whether the mark is protected in a particular
Contracting Party, since he may receive a statement of
grant of protection from the Office of that Contracting
Party before the expiration of this period.
The validity of an international registration is 10 years,
according to Art. 6 of the Protocol to the Madrid
Agreement (in the Madrid Agreement itself, this period
was 20 years). This period of international registration
can be extended for 10 years an unlimited number of
times, subject to payment of the established fees.
As Krylepova A.O. points out, speaking about the
extraterritorial effect of the legal protection of
trademarks
that
have
received
international
registration, the following should be noted. The
establishment of issues included in the intellectual
statute in relation to trademarks, it seems appropriate
to carry out under the law of the state of origin of the
object (lex loci originis). The law of the state of origin
of the trademark is the law most closely related to the
relation, in view of the fact that protection in the state
of origin of the mark in question is dependent on
international registration, and, as a consequence,
protection in other states[13].
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At the expiration of a period of five years from the date
of the international registration, that registration
becomes independent of the basic application or the
registration based on it, or of the basic registration, as
the case may be (Article 6 of the Protocol to the Madrid
Agreement).
Perhaps this is one of the shortcomings of the Madrid
system, that for five years, the status of an
international registration directly depends on its status
in the national office. That is, if during this time there is
a refusal, cancellation of a trademark in the state
where the mark was created, then the international
registration will be terminated. Only after the
expiration of the five year period does the
international registration become independent of the
national registration[14].
International registration, however, gives advantages
to Trademark Offices. They do not need to conduct due
diligence, or classify goods or services, or publish
marks. These responsibilities are assumed by the
International Bureau, carrying out a formal
examination.
According to WIPO, Offices of Contracting Parties are
compensated for their work: the individual fees
collected by the International Bureau are transferred
to the Contracting Parties in respect of which they
were paid, and additional and additional fees are
distributed annually to Contracting Parties not
receiving individual fees, in proportion to the number
of designations, made for each of them. If the
International Bureau closes its biennial accounts at a
profit, the proceeds are distributed among the
Contracting Parties[15].
So, speaking about the procedure itself, it is initially
necessary to register or file an application for
registration of a trademark (basic application) with the
office of a member country with which the legal entity
has a direct connection by virtue of doing business or
is connected with the fact of being in this country. This
office is called the "office of origin". It sends an
application for international registration of a
trademark to the International Bureau of WIPO, where
a formal examination of the designation is carried out,
lasting on average no more than 6 months.
An international application filed by the applicant
directly with the International Bureau will not be
treated as such and will be returned to the sender.
The international application must contain an image of
the mark and a list of the goods and services for which
protection is sought, classified in accordance with the
International Classification of Goods and Services (Nice
Classification) and the Vienna Classification[16].
The correctness of paperwork and payment of fees is
checked, information about the application is
published in the international register. If the
international application complies with the established
requirements, the information about the mark is
entered in the International Register and published in
the Gazette.
At this stage, the applicant receives the status of an
international registration and is listed in the Madrid
Monitor database. At this stage, it is important to
indicate in which countries the legal protection of the
mark is sought. If you wish to expand the scope of the
trademark, you can select Contracting Parties
throughout the international application.
Further, the Office of each designated Contracting
Party conducts the substantive examination of the
international registration in exactly the same manner
as in the case of an application filed directly. The
deadlines are fixed. If within the prescribed period (12
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or 18 months, depending on whether the country
belongs to the Madrid Protocol or the Agreement) a
decision on the refusal of registration is not received
from the Office of the designated Contracting Party,
the trademark receives legal protection in the territory
of the declared state [17].
An international application is subject to the payment
of the following fees: a basic fee, an additional fee for
each designated Contracting Party in respect of which
no individual fee is payable, and an additional fee for
each class of goods and services in excess of three; No
additional fee is payable, however, if all the
designations are those in respect of which an individual
fee is payable.
The levying of an additional fee for each additional
class of goods, as provided for by international legal
registration, is another of its shortcomings, while the
creators of the Madrid Trademark Registration System
name its advantages precisely the possibility of saving
efforts and money by participants in commercial
circulation when registering used designations by
them. The payment of each additional class can
significantly hit the budget, since in some states its
amounts reach half of the amount of the individual fee.
Thus, the Madrid System is the best choice among
manufacturers to protect their trademarks worldwide.
The system is especially popular among multinational
companies trading all over the world. Potential
applicants should take into account a number of
factors when deciding whether to choose a system -
national, regional or international - and compare the
advantages and disadvantages of all three application
systems.
The most important factor in choosing to protect a
trademark through an international registration under
the Madrid System is probably its low cost compared
to other protection options. It is also easy to file an
international application by completing a single
application form and sending it to one Office. In
practice, multinational companies that meet the “basic
application” requirement may file an international
application directly through the Office of origin,
without the use of a representative. Thus, in addition
to the low cost of this option, it also saves the applicant
time and resources. An international registration also
benefits the Trademark Offices of the Contracting
Party.
They do not need to check compliance with formal
requirements, or classify goods or services, or publish
marks. When considering the choice of this path,
attention should be paid to the shortcomings of the
Madrid system, which are also the subject of this work.
However, when the advantages and disadvantages of
the Madrid system are weighed, its advantages prevail,
as reflected in the increase in the number of
international applications filed by multinational
companies. To date, the WIPO database contains more
than 600,000 international applications registered
under this system, and every year the interest in this
procedure is growing.
General Provisions and Fundamental Principles of the
TRIPS Agreement. The provisions of TRIPS, first of all,
determine the range of objects related to intellectual
property. According to TRIPS, these include
copyrights, related rights, trademarks, geographical
indications, industrial designs, patents, topologies of
integrated circuits, closed information. It is worth
noting that this list is not exhaustive, since TRIPS also
includes the norms of other international agreements,
according to which the category of protected may fall
into the category of protected and other types of IP.
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Speaking about the legislation of the Republic of
Uzbekistan in the field of intellectual property, first of
all, we refer to Section IV of the Civil Code of the
Republic of Uzbekistan (hereinafter referred to as the
RUZ GK). Based on the meaning of Chapter 59 of the
Civil Code of the RUZ, it can be concluded that the
general provisions and range of objects relating to
intellectual property do not differ from the provisions
of TRIPS and are similar.
Thus, according to Art. 1031 of the Civil Code of the
RUZ, the objects of IP include the results of intellectual
activity, works of science, literature and art,
performances,
phonograms,
transmissions
of
broadcasting organizations, programs for electronic
computers and databases, inventions, utility models,
industrial
designs;
selection
achievements;
undisclosed information, including production secrets
(know-how);
trade
names,
trademarks
and
appellations of origin of goods.
A similar point is that the list of IP objects given in Art.
1031 of the Civil Code of the RUZ is not exhaustive, as
indicated in the General Provisions of TRIPS.
One of the basic principles of IP protection in TRIPS, in
accordance with Article 3, is the principle of "national
treatment". This principle obliges WTO Member States
to accord to nationals of other Member States the
same treatment that they accord to their own
nationals with regard to IP protection.
It should be emphasized that Member States have the
right to derogate from national treatment if this is
expressly provided for in international agreements in
the field of IP protection. For example, if the Republic
of Uzbekistan becomes a member of TRIPS, it can
apply the provisions of the Paris Convention for the
Protection of Industrial Property or the Berne
Convention for the Protection of Literary and Artistic
Works and derogate from the national treatment
established by TRIPS, since it has ratified these two
Conventions. In the case of exceptions to the principle
of national treatment, Member States shall adhere to
the most-favoured-nation principle in their relations
with other WTO Members (Article 4) and shall not
allow any discrimination or disguised restrictions on
trade with respect to WTO Members.
TRIPS under Article 1 also does not limit the right of
Member States to grant greater IP protection by States
on their territory than trips requirements.
An important feature of TRIPS is that it has not settled
the issue of the principle of exhaustion of intellectual
property rights (national, regional or international),
which is why some states may allow "parallel imports"
into their territory of goods legally acquired in other
states, others require the consent of the right holder
to import the relevant products. Thus, in accordance
with Art. 6 TRIPS, this issue is not among the resolved
and states enjoy great discretion as to which principle
of exhaustion of rights they will follow in their national
legal systems.
On this issue, the Republic of Uzbekistan, according to
Art. 11071 of the Civil Code of the Republic of
Uzbekistan adheres to the "national principle" of
exhaustion of intellectual property rights. And so,
Article 11071 states the following: "It is not an
infringement of the exclusive right to a trademark that
the use of this trademark by other persons in respect
of goods that have been lawfully introduced into civil
circulation directly by the owner of the trademark or
with his consent." In this case, it should be noted that
the Civil Code of the RUZ establishes a "national regime
of exhaustion of rights" only in respect of one object
of intellectual property - trademarks.
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Scope and use of intellectual property rights of the
TRIPS Agreement. This section will provide a
comparative analysis of the provisions of TRIPS and the
legislation of the Republic of Uzbekistan regarding the
scope and use of trademark rights.
No.
Provisions of TRIPS
Legislation of the RUZ
1
Trademarks
Article 15
A trademark may be any sign (including
names of persons, letters, numbers,
figurative
elements
and
color
combinations, as well as any combination
of such signs), provided that such sign has
distinctiveness, i.e. its ability to distinguish
goods
and
services
of
different
enterprises in the eyes of the consumer.
Moreover, such a distinctive ability can be
both initial and acquired in the process of
use.
Article 3. Trademark and Service Mark (Law on
Trademarks, Service Marks and Appellations of
Origin).
A trademark and service mark (hereinafter
referred to as a trademark) is a duly registered
designation that serves to distinguish goods and
services (hereinafter referred to as goods) of
some legal entities and individuals from similar
goods of other legal entities and individuals.
"Registration of the designations specified in
subparagraphs "e" - "h" of this paragraph is
admissible subject to the provision of evidence
that the designation has actually acquired
distinctness as a result of its use for specific goods.
(Rules for compiling, submitting and reviewing
trademark and service mark applications.
Appendix to the Order of the Director of the SAP
of 24.06.2009 N 72,
registered by the Ministry of Justice on July 29,
2009 N 1988).
Members shall publicly disclose each
trademark, either prior to or immediately
after its registration, and shall provide a
reasonable opportunity to apply for
cancellation of registrations. In addition,
members may provide the opportunity to
object to the registration of a trademark.
Article
19
Publication
of
registration
information (Trademark Law)
Information on the registration of a trademark,
an appellation of origin and (or) the right to use
an appellation of origin is published in the official
bulletin of the Agency, which is also posted on its
official
website.
Compound
published
information determined Agency .
The owner of a registered trademark has
the exclusive right not to allow third
parties, without his consent, to use in the
course of trade identical or similar
designations for goods or services that are
identical or similar to those for which the
trademark is registered, where such use
could lead to the possibility of confusion .
Where an identical designation is used for
identical goods or services, the likelihood
of confusion is considered to exist. The
Article 26 Exclusive right to a trademark
(Trademark Law).
The trademark owner has the exclusive
right to use and dispose of the trademark.
The exclusive right to a trademark is
valid for the goods specified in the certificate. In
this case, the exclusive right is exercised during
the period of validity of the registration, starting
from the date of registration of the trademark in
the State Register of Trademarks, and
information on the registration of the trademark
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rights described above do not prejudice
any existing rights that have arisen
previously, and do not affect the ability of
members to make the existence of rights
contingent on their exercise.
on the same day is posted on the official website
of the Agency.
An infringement of the exclusive right to a
trademark is the unauthorized manufacture, use,
importation, offer for sale, sale, other
introduction into civil circulation or storage for
this purpose of a trademark or product marked
with this sign, or a designation confusingly
similar to it, in for similar goods.
Article 6 bis of the Paris Convention (1967)
applies mutatis mutandis at your service.
In determining whether a trademark is
well known, Members shall take into
account the familiarity of the trademark in
the relevant circles of society, including
the familiarity in the Member country
which has been achieved as a result of the
advertising of the trademark.
Section 321. Well-Known Trademark (Trademark
Law)
At the request of a legal or natural person, a well-
known trademark in the Republic of Uzbekistan
may be recognized as a trademark protected on
the territory of the Republic of Uzbekistan on the
basis of its registration, a trademark protected
on the territory of the Republic of Uzbekistan
without registration in accordance with an
international treaty of the Republic of
Uzbekistan, as well as a designation, used as a
trademark, but not having legal protection on
the territory of the Republic of Uzbekistan
, if
such trademarks or designation as a result of
their intensive use became widely known
among the relevant consumers in relation to the
goods of this person as of the date indicated in
the application in the Republic of Uzbekistan.
A well-known trademark shall be granted legal
protection provided for by this Law for a
trademark.
The duration of the initial registration and
each renewal of a trademark registration
shall be at
least seven years
. Registration
commodity sign Maybe resume unlimited
number times .
Article 21
A trademark certificate or a certificate of the
right to use an appellation of origin is valid
for
ten years
from the date of filing the application.
If the use is a requirement for the
continued validity of the registration, then
the registration may be canceled only
when the mark has been uninterrupted for
at least three years, unless the trademark
owner provides good reasons based on
the existence of obstacles to such use.
Circumstances arising independently of
the will of the trademark owner that
Article 25
The validity of a trademark certificate may be
terminated early, in whole or in part, on the basis
of a court decision made at the request of an
interested person, if the trademark has not been
used continuously during the last three years of
its validity, as well as in case of violation of the
agreement on the use of a collective mark. When
resolving the issue of early termination of the
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create an obstacle to its use, such as
import restrictions or other government
requirements for goods or services
protected by the trademark, should be
recognized as valid reasons for not using
the mark.
validity of a trademark certificate due to its non-
use,
evidence submitted by the trademark
owner of the non-use of the trademark due to
circumstances beyond his control may be taken
into account.
The use of a trademark by another person
under the control of the owner of the
mark is recognized for the purposes of the
continued use of the trademark in
registration.
Article 27. Use of a trademark
The use of a trademark is considered to be its use
on goods for which the trademark is registered,
and (or) their packaging by the owner of the
trademark or a person to whom such a right is
granted on the basis of a license agreement, in
advertising, printed publications, on official
letterheads, signboards, during demonstration
exhibits at exhibitions and fairs, on labels,
packaging of goods that are produced, offered
for sale, sold or otherwise introduced into civil
circulation or stored and (or) transported for this
purpose, or imported into the territory of the
Republic Uzbekistan ;
The use of a trademark in commerce must
not be unreasonably restricted by special
requirements, such as use with another
trademark, use in a particular form, or use
in a manner that would prejudice its ability
to distinguish the goods or services of one
undertaking
from
those
of
other
undertakings. This does not change the
requirement to use a trademark that
identifies an enterprise that produces
goods or services, along with, but without
connection with, a trademark that
distinguishes certain goods or services of
the said enterprise.
Absent
Based on the results of comparing the provisions of
TRIPS and the legislation of Uzbekistan, we can
conclude that many of the fundamental provisions
regarding the procedure for granting protection to
trademarks are similar. Among the distinguishing
features we can include the following:
1. In the TRIPS Agreement, the requirements for the
term of trademark protection are at least seven years,
i.e. The TRIPS Agreement basically specifies the
minimum term of protection, and in accordance with
the legislation of the Republic of Uzbekistan is the term
of protection is ten years.
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2. With regard to the early cancellation of a trademark
certificate, both the TRIPS Agreement and the
legislation of Uzbekistan provide for the condition of
non-use of the trademark for the last three years, and
there is also a reservation on the possibility of
providing by the owner of the trademark evidence of
non-use of the trademark for independent reasons .
circumstances from him. However, the TRIPS
Agreement, in addition to this clause, discloses a list of
situations that can be attributed to circumstances
beyond the control of the owner: “import restrictions
or other state requirements in relation to goods or
services protected by a trademark must be recognized
as good reasons for not using the mark.”
3. In terms of recognizing a trademark as used by third
parties in the legislation of Uzbekistan, the list of
recognized actions as use is much wider than the
requirements of the TRIPS Agreement itself. The
presence of the scope and use of rights to trademarks
both in the TRIPS Agreement and in the legislation of
the Republic of Uzbekistan and the absence of
significant differences between them indicates the
compliance of the legislation of the Republic of
Uzbekistan with the requirements of TRIPS in terms of
the scope of rights for trademark protection.
TRIPS requirements for the protection of trademark
rights. According to the TRIPS Agreement, in addition
to the existence of appropriate intellectual property
rights in national legislation, it is also necessary to
provide for effective remedies to combat potential
intellectual property infringements, as well as to
ensure the proper functioning of law enforcement
authorities.
In order to become a member of the WTO, it is not
necessary to create specialized courts for the
protection of intellectual property rights, but national
legislation must contain procedures and mechanisms
to ensure the observance of intellectual property
rights. Appropriate criteria have also been established
for these procedures and mechanisms: effective, equal
for all and fair (in terms of procedural guarantees).
However,
these
procedures
should
not
be
unnecessarily complicated or expensive in terms of
accessibility, and should not lead to unreasonable
delays or unreasonable delays.
TRIPS STANDARDS FOR GENERAL REMEDIES
TRIPS criteria
Requirements By TRIPS standards
Comments ( legislation of the
Republic of Uzbekistan)
Criteria in civil and administrative cases
1.
Justice
procedures (
TRIPS Article
42)
- the right of copyright holders to apply to
the court for the protection of their
rights;
- the right of the defendants to be
promptly notified in writing of the basis of
the claim and the merits of the claims;
- the right of the parties to be represented
by independent legal advisers (lawyers);
- the absence of overly onerous
requirements for mandatory personal
attendance
at
meetings;
- equal right of the parties to protect their
These TRIPS requirements are
provided for in the legislation of
the Republic of Uzbekistan,
namely the Civil Code of the
Republic of Uzbekistan, the Civil
Procedure Code, the Economic
Procedure Code.
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interests, substantiate claims, present
evidence
in
the
case;
- the right to the protection of
confidential information, unless it is
contrary
to
existing
constitutional
requirements.
Disclosure
evidence
(
Article
43
TRIPS)
The right of the judiciary to require
disclosure
of
information
(issue
appropriate court orders) that a party
needs to substantiate its claims and which
is under the control of the opposing party
(to which the interested party does not
have access), subject to the requirements
of maintaining the confidentiality of
information.
The possibility for WTO Members to
provide in their legislation adverse
consequences (up to and including an
unfavorable decision on the merits of the
dispute) against a party that intentionally
and without good reason refuses access
to the necessary information or does not
provide it within a reasonable period of
time, or significantly makes it difficult to
access.
These TRIPS requirements are
provided for in the Law of the
Republic of Uzbekistan “On Trade
S
ecrets”.
Reimburseme
nt losses (
Article
45
TRIPS)
In connection with the infringement of
intellectual property rights, right holders
should have the right to file a claim for
damages and compensate for the
damage they caused to a person who
knew or should have known that he was
committing
illegal
acts.
The right to damages also includes the
right to recover legal costs (including
attorneys' fees) at the expense of the
wrongdoer. WTO Members are also free
to provide in their legislation for such
types of remedies as the recovery of all
proceeds received or pre-established
damages (i.e. statutory damages or
compensation for violation of exclusive
rights), even if the infringer did not know
or had no good reason to know that he
was carrying out illegal actions.
The right to compensation for
damages is provided for by the
Civil Code of the Republic of
Uzbekistan. In addition, the rules
regarding compensation for lost
profits are provided for in the Law
of the Republic of Uzbekistan “On
Copyright and Related Ri
ghts”,
however, unlike the requirement
of the TRIPS Agreement, the
maximum compensation should
not exceed 1000 basic calculated
values.
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Confiscation
of
goods,
materials and
equipment
(TRIPS Article
46)
Copyright holders have the right to
demand the withdrawal from circulation
and destruction of counterfeit goods
without
any
compensation.
Rights holders also have the right to
demand the removal from circulation of
materials and equipment that were
mainly used in the creation of counterfeit
goods, without any compensation. In
considering requests, courts should take
into account the proportionality of such
measures, taking into account the
seriousness
of
the
offense,
the
consequences of such court orders and
the interests third parties
[19]
.
The possibility of withdrawal
from circulation and destruction
of counterfeit goods without any
compensation in relation to
trademarks is not provided for in
the legislation of the Republic of
Uzbekistan, however, there is an
administrative responsibility for
violating the rights of authors in
the form of confiscation of
materials and equipment that
were used to create counterfeit
goods.
Criminal procedures
Criminal
penalties and
procedures
for
infringement
of intellectual
property
rights (Article
61 TRIPS) [20]
WTO Members are required to provide
for criminal penalties and procedures in
their legislation for willful infringement of
copyright
and
trademark
rights
committed in commercial circulation.
Members of the WTO retain the ability to
provide for criminal penalties and
procedures also for other infringements
of intellectual property rights. Criminal
penalties and sanctions should be
sufficient to fulfill their preventive role
(the role of deterring potential infringers)
and should include: a) imprisonment; b)
monetary fines; c) confiscation and
destruction of materials and instruments
of production.
Criminal punishment in the
legislation of the Republic of
Uzbekistan is provided only for
violation of rights to objects of
copyright. Unfortunately, at the
moment there are no rules that
allow to prosecute persons who
mass-produce
counterfeit
products
using
foreign
trademarks. Types of punishment
also do not include imprisonment.
According to article 149 of the
Criminal Code of the Republic of
Uzbekistan, persons who violate
the rights of authors and
inventors are fined or deprived of
certain rights and sent to
corrective labor.
Border measures ( TRIPS Articles 51-60)
Are common
obligations
WTO members are required to
provide in their legislation measures
to control the movement of goods
across the border with another
state so that right holders who have
Provided by the Customs Code
of the Republic of Uzbekistan.
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reasonable grounds to suspect that
goods with an illegally used trademark
or goods produced with copyright
infringement may be imported can
submit a written application to the
competent administrative or judicial
authority for the suspension by the
customs authorities of the release into
free circulation of such goods .
Members of the WTO have the right,
but
are
not
required
to:
- extend the regime of border
measures to goods that contain other
violations of intellectual property
rights (in addition to violations of
trademarks
or
copyrights);
- provide for appropriate procedures
regarding the suspension by the
customs authorities of the release
from their territories of counterfeit
goods
intended
for
export;
- extend the application of such
measures to imports of goods placed
on the market in another country by
the right holder or with his consent
(cases of parallel imports), or to goods
in
transit;
- apply border measures to a small
amount of goods of a non-commercial
nature contained in the personal
luggage of passengers or sent in small
lots.
Procedure for
taking border
measures
at
the request of
the
right
holder
1. As a general rule, in order to
suspend the release of counterfeit
goods into free circulation by the
customs authorities, an application
from the right holder is required. At
the same time, he must provide:
a) convincing evidence that there is a
violation of his intellectual property
Provided by the Customs Code
of the Republic of Uzbekistan.
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rights;
b) give a detailed description of the
goods for their easy identification by
the
customs
authorities.2. The
competent authority has the right to
require the applicant to provide a
reasonable security or equivalent
guarantee sufficient to protect the
defendant
and
the
competent
authority and prevent abuse of rights
by
the
right
holder.
3. The
competent
(judicial
or
administrative) authority must, within
a reasonable period of time, inform
the applicant of the acceptance of his
application, as well as immediately
notify the applicant and the importer
of the suspension of the release of
goods
into
circulation.
4. The competent authorities should
have the authority to provide the right
holder with a reasonable opportunity
to inspect any goods detained by the
customs authorities in order to
substantiate
his
claims.
The
competent
authorities
are
also
empowered to provide the importer
with an equivalent opportunity to
inspect
any
such
goods.
5. The duration of the suspension of
the release of goods for free
circulation, as a general rule, should
not exceed 10 days. If within this
period the applicant or other
interested party has not initiated legal
proceedings on the merits of the
dispute, the goods may be released
for
free
circulation.
6. The competent authority should
have the right to issue a decision
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ordering
the
destruction
or
withdrawal
from
circulation
of
counterfeit
goods [22].
7. If the detention of the goods is
found to be unlawful, the relevant
authority has the right to issue a
decision ordering the applicant to pay
the importer, consignee and owner of
the goods adequate compensation
for the damage caused.
Procedure for
the adoption
of
border
measures
at
the initiative
of
the
competent
authorities
The TRIPS provisions allow for a
situation where border measures are
taken by the competent authorities
on their own initiative, if they have
sufficient information about the
import
of
counterfeit
goods.
In this case, the competent authorities
have the right contact the right holder
for any information that may assist
them in exercising these powers.
The importer and right holder must be
immediately
notified
of
the
suspension of the release of goods for
free circulation so that they can
subsequently resort to the necessary
remedies
for
their
interests.
The competent authorities retain the
right to issue a decision ordering the
destruction or withdrawal from
circulation of counterfeit goods.
In case of good faith actions, public
authorities and their employees are
released from any liability.
Absent
Based on the analysis carried out for the availability of
protection mechanisms that meet the TRIPS criteria,
which are provided for in the legislation of the Republic
of Uzbekistan, it should be concluded that the
measures applied in terms of civil liability against
persons who violate the rights of trademark owners
fully comply with the provisions of the TRIPS
Agreement . Despite this, there are points that do not
meet the requirements of TRIPS, namely:
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1.
Absence of criminal liability in relation to
persons who grossly violate the rights of
owners to trademarks;
2.
Lack of a clear protection mechanism applied
within the borders of the Republic of
Uzbekistan (border protection measures):
(a) According to the latest amendments to the Civil
Code and the Law on Trademarks, Service Marks and
Appellations of Origin of Goods of the Republic of
Uzbekistan, provisions have been introduced on the
exhaustion of exclusive rights to a trademark (Article
1071¹ and Article 26 respectively) according to which: -
The use of this trademark by other persons in relation
to goods that were lawfully introduced into civil
circulation directly by the owner of the trademark or
with his consent is not a violation of the exclusive right
to a trademark. This novel introduces the principle of
exhaustion of trademark rights into the legislation.
Exhaustion of rights to a trademark means that the
owner of the mark does not have the right to prohibit
the use of the trademark by other persons in relation
to goods introduced into civil circulation by himself or
with his consent. Exhaustion of rights becomes
relevant in the context of foreign trade relations, in
particular in matters of the so-called "parallel imports".
However, the fact that this article does not clearly
indicate the territory for introducing goods into
circulation may lead to different interpretations of this
rule and lead to the fact that the international principle
of exhaustion of rights to trademarks is in force in the
Republic of Uzbekistan;
(b) The legislation of the Republic of Uzbekistan also
does not provide for the application of border
measures by the competent authorities on their own
initiative, if they have sufficient information about the
import of counterfeit goods. At the same time, there is
also no application of the notification procedure for
the right holder about the violation of his rights in the
border territory of the Republic of Uzbekistan. The
competent authorities do not have the right to issue a
decision ordering the destruction or withdrawal from
circulation of counterfeit goods.
Based on the results of the legal analysis, some
inconsistencies between the provisions of the
legislation of the Republic of Uzbekistan and the
requirements of the TRIPS Agreement regarding the
application of criminal liability and the application of
border measures, which, in particular, arise in the
protection of trademark rights, were identified. The
presence of such inconsistencies may become an
obstacle to Uzbekistan's accession to the WTO and the
compliance of the provisions of the law with the
standards of the TRIPS Agreement.
The conducted comparative legal analysis became the
basis for the formulation of proposals and the
following recommendations, which, in our opinion, will
speed up the process of compliance of the mechanisms
for protecting rights to trademarks with international
standards:
1.
In order to successfully combat negative
phenomena in the sphere of ownership and use of
intellectual property objects, in particular, those aimed
at the individualization of goods, it is necessary to
clearly understand what the legislator means by the
term "counterfeit". Thus, in accordance with the Law
of the Republic of Uzbekistan “On Trademarks”,
goods, labels, packaging of goods on which a
trademark or a confusingly similar designation is
illegally used are counterfeit. We propose to give 3
tbsp. 27 of the Law of the Republic of Uzbekistan “On
Trademarks, Service Marks and Appellations of Origin
of Goods” No. 267
-II dated August 30, 2001 as follows:
“goods, labels, pack
aging of goods on which a
Volume 03 Issue 02-2023
63
American Journal Of Applied Science And Technology
(ISSN
–
2771-2745)
VOLUME
03
I
SSUE
02
Pages:
44-64
SJIF
I
MPACT
FACTOR
(2021:
5.
705
)
(2022:
5.
705
)
(2023:
7.063
)
OCLC
–
1121105677
Publisher:
Oscar Publishing Services
Servi
trademark is illegally used, confusingly similar to it the
designation, as well as original products, the import of
which was carried out without the consent of the
copyright holder, are recognized as counterfeit”
2.
Include the t
erm “parallel import” in the
Customs Code of the Republic of Uzbekistan and give
it the following definition: “is the import of original
products into the territory of the Republic of
Uzbekistan without obtaining the consent of the
copyright holder.”
3.
Assign to the customs authorities the authority
to suspend the import of counterfeit products without
filing an application from the right holder and sending
a notification to the right holder, which will lead to the
launch of a mechanism for the customs authorities to
independently respond to such violations ( ex officio ).
4.
The customs authorities should be given the
right to independently, without judicial authorities,
within the framework established by law, control and
make decisions on the suspension of cargo already on
the basis that trademarks are included in the TRIP. This
will save the customs authorities from constant
litigation, relieve the courts and protect the rights of
both domestic and foreign right holders.
5.
Grant the customs authorities the right to bring
the offenders in the field of intellectual property to
administrative responsibility for violations of the
relevant norms established in the customs legislation.
6.
Create a new div under the Ministry of
Internal Affairs of the Republic of Uzbekistan, which
would be directly involved in the elimination of
offenses in the field of intellectual property, entrusting
it with the obligation to confiscate counterfeit
products and impose fines on violators in order to
prevent the sale of such goods, and thereby protect
the copyright holder from the occurrence he has lost
profits.
7.
Provide for in the Code of Administrative
Liability the confiscation of counterfeit products and
goods on the spot in the form of a fine for the sale and
production of counterfeit goods.
8.
Provide in the Criminal Code liability for large-
scale production and import of counterfeit products.
The implementation of these proposals in
practice would contribute not only to the protection of
the rights and interests of trademark and service mark
holders, but would also raise the prestige of our state
as an active fighter against intellectual property
infringement. In addition, it would also protect
consumers of goods from deception by unscrupulous
sellers.
REFERNCES
1.
https://president.uz/ru/lists/view/3887
2.
https://www3.wipo.int/madrid/monitor/en/
3.
Article 2 of the Paris Convention for the Protection
of Industrial Property of 1883, as amended on
October 2, 1979
4.
Article 4 of the Paris Convention for the Protection
of Industrial Property of 1883, as amended on
October 2, 1979
5.
This refers to paragraph 2 of Article 4 of the
Protocol to the Madrid Agreement Concerning the
International Registration of Marks, as well as
Article 15 of the Singapore Treaty on the Law of
Trademarks.
6.
Making a mark: An introduction to Trademarks for
SMEs. WIPO Publication No. 900.1. With. 62
7.
https://euipo.europa.eu/ohimportal/trade-marks
8.
Adapted from WIPO Publication No. 418 ® ISBN: 92-
805-1373-7 Madrid System.
Volume 03 Issue 02-2023
64
American Journal Of Applied Science And Technology
(ISSN
–
2771-2745)
VOLUME
03
I
SSUE
02
Pages:
44-64
SJIF
I
MPACT
FACTOR
(2021:
5.
705
)
(2022:
5.
705
)
(2023:
7.063
)
OCLC
–
1121105677
Publisher:
Oscar Publishing Services
Servi
9.
Nikulina V.S. Legal protection of a trademark and
fight against unfair competition. - M.: Statute, 2015.
- p.100
10.
Adapted from WIPO Publication No. 418 ® ISBN: 92-
805-1373-7 Madrid System.
11.
Obtaining legal protection of a trademark abroad
under the international procedure. Tashkent:
Intellectual Property Agency of the Republic of
Uzbekistan, 2015.: p.512. Abs. b Clause 2, Article 5
of the Protocol to the Madrid Agreement
Concerning the International Registration of
Marks.
12.
Krylepova.
Mechanisms
for
extraterritorial
protection of trademarks
13.
Orlov. The impact of the Madrid system of
international trademark registration on the
development of intellectual property.
14.
WIPO Publication No. 418R Madrid System for the
International Registration of Marks. Goals,
features, benefits. 2018.
15.
Making a mark: An introduction to Trademarks for
SMEs. WIPO Publication No. 900.1. With. 64
16.
Абдурахманова,
Нодирахон.
"Вопросы
регулирования и внедрения смарт
-
контрактов в
национальное законодательство." Общество и
инновации 3.11/S (2022): 170
-178.
17.
Рахмонова М. Analysis of the legal p
ractice of
Uzbekistan and EU countries in the field of legal
regulation of blockchain and cryptocurrency
//Общество и инновации. –
2022.
–
Т. 3. –
№. 11/S.
–
С. 270
-282.
18.
Abdurakhmanova N. ISSUES OF REGULATION AND
IMPLEMENTATION OF SMART CONTRACTS IN
NATIONAL LEGISLATION.
–
2022.
