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PROSPECTS FOR INTRODUCING THE FIRST TO USE PRINCIPLE IN
RESOLVING ISSUES RELATED TO THE PROTECTION OF
TRADEMARK RIGHTS IN ADVERTISING
Gofurova Zebiniso
Tashkent State University of Law, Tashkent, Uzbekistan
Abstract.
This article explores the prospects of introducing the “first to use”
principle into the trademark law system of Uzbekistan. The current “first to file”
regime is analyzed and compared with international practices, particularly those of
common law countries. It is argued that the adoption of a use-based priority could
better protect good-faith brand users and help prevent bad-faith registrations.
However, such reform requires legal, judicial, and administrative adjustments. The
article proposes gradual measures, including opposition procedures, unfair
competition claims, and public awareness strategies. The study aims to balance
legal certainty provided by registration with the equitable protection of actual
brand creators.
Keywords:
first to use, first to file, unfair competition, registration, branding.
Annotatsiya.
Mazkur maqolada O‘zbekistonda savdo belgilariga oid huquqiy
tartibga “birinchi foydalanish” (first to use) prinsipini joriy etish istiqbollari ko‘rib
chiqilgan. Hozirgi “birinchi ro‘yxatga olish” (first to file) tizimi xalqaro tajriba,
ayniqsa common law tizimidagi davlatlar amaliyoti bilan solishtirilgan. Maqolada
bu prinsip halol tadbirkorlarni himoya qilish va nohaq ro‘yxatdan o‘tkazishni oldini
olishda foydali bo‘lishi mumkinligi ta’kidlanadi. Biroq bu yondashuvni amalga
oshirish uchun qonunchilik, sud
amaliyoti va ma’muriy mexanizmlarni isloh qilish
talab etiladi. Taklif etilayotgan choralar qatoriga qarshi e’tirozlar, insofsiz
raqobatga qarshi da’volar va targ‘ibot ishlari kiradi. Tadqiqotning maqsadi –
ro‘yxatdan o‘tkazish orqali yaratiladigan huquqiy
aniqlik hamda amalda brend
yaratgan subyektlarni adolatli himoya qilish o‘rtasidagi muvozanatni topishdir.
Kalit so
‘
zlar:
first to use, first to file, insofsiz raqobat, ro‘yxatdan o‘tkazish,
brend.
Аннотация.
В статье рассматриваются перспективы внедрения
принципа «первого использования» (first to use) в регулирование прав на
товарные знаки в Узбекистане. Анализируется существующая система
правовой охраны, основанная на принципе «первой регистрации» (first to f
ile),
и сравнивается с международной практикой, особенно с правом стран
общего права. Установлено, что принцип фактического использования
способен усилить защиту добросовестных пользователей брендов и
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предотвратить недобросовестную регистрацию. Однако внедрение данного
подхода требует реформ законодательства, изменений в судебной
практике и административных процедурах. Предлагаются поэтапные
меры адаптации, включая механизмы оппозиции, иски о недобросовестной
конкуренции и просветительские кампании. Работа направлена на поиск
баланса между правовой определённостью регистрации и справедливой
защитой реально использующих бренды субъектов.
Ключевые слова:
first to use, first to file, фактическое использование,
недобросовестная конкуренция, регистрация, брендинг
.
Introduction
In the context of the global development of trademark law and advertising
regulation, the issues related to the legal protection of trademarks are becoming
increasingly complex. One such issue concerns the principle on the basis of which
trademark rights are granted
—
first to file or first to use. Uzbekistan, like the
majority of civil law countries, adheres to the first to file principle, whereby
exclusive rights to a trademark arise upon its official registration with the
competent authority.
However, in practice, this approach creates certain legal challenges,
especially in advertising, where brand identification plays a key role. Conflicts
may arise when different parties use similar or identical designations without
registration, or when one party registers a trademark that has already been used
in commerce by another. In such situations, the rigid adherence to the first to file
rule may result in injustice
—
particularly for those who have built commercial
reputation and consumer recognition through prior use of a trademark.
The first to use principle, as applied in many common law countries, offers
a different model that prioritizes actual commercial use of a mark over formal
registration. This principle allows for the recognition of unregistered rights if a
business can demonstrate prior and continuous use of the mark in the market.
Consequently, it provides enhanced protection for business goodwill and fair
competition.
In light of global integration, digital commerce, and the increasing
complexity of advertising methods (including influencer marketing, contextual
advertising, and SEO), it is important to assess whether the first to use principle
has prospects for adoptio
n or partial integration into Uzbekistan’s legal
framework. This study aims to explore the potential benefits and risks of such an
approach and analyze its applicability within the national context.
Methods
In conducting this research, a doctrinal and comparative legal approach was
adopted to explore the theoretical and practical implications of adopting the first
to use principle in the context of trademark protection in advertising. The study
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commenced with a thorough analysis of the current legislative framework of the
Republic of Uzbekistan, particularly the Law “On Trademarks, Service Marks and
Appellations of Origin of Goods” (2001), as well as relevant provisions of the Civil
Code and the
Law “On Advertising” (2019). Special emphasis was placed on
identifying how Uzbekistan’s existing first to file system functions in practice and
its legal implications for trademark use in advertising.
To evaluate the international relevance and potential for reform, the
research relied on a comparative analysis of trademark systems in both civil law
and common law countries. Jurisdictions such as the United States, Canada, and
the United Kingdom were examined in detail for their incorporation of the first to
use principle, particularly with regard to doctrines such as common law rights
and passing off. Attention was also paid to countries with mixed models or
evolving practices (e.g., India and South Korea), offering insights into transitional
mechanisms from first to file to first to use hybrids.
Discussion
In common law countries, trademark rights are largely based on the actual
use of the mark. The first to use principle means that priority belongs to the party
who first began using the designation in commerce in good faith to identify their
goods or services. For example, in the United States and Canada, legal protection
for a trademark arises from its actual use in commerce, while registration serves
an auxiliary role. According to the U.S. Trademark Act (Lanham Act), protection
may be granted either based on current use or on a bona fide intent to use the
mark in the near future, provided that actual use is later confirmed. In other
words, in these jurisdictions, trademark priority is determined by the date of first
use, not the date of application.
Even without formal registration, the first good-faith user of a trademark in
the United States may obtain so-called common law rights in a particular
geographic area. A similar situation exists in Canada: historically, trademark use
was required before registration, and although Canadian law has evolved,
unregistered but used trademarks remain protected through tort-based remedies
(such as passing off claims for unfair business practices).
The United Kingdom and other jurisdictions that formally follow the first to
file model also recognize the importance of use. In British law, beyond the
registration system, the tort of passing off is well developed, providing protection
for the reputation of an unregistered designation. This means that if a company
has long used a brand, it may prevent others from registering or using a similar
mark by demonstrating consumer confusion. Thus, even in countries with formal
registration-based systems, there are exceptions that prioritize the first user. For
instance, in the UK, passing off grants the owner of an unregistered mark certain
rights to challenge even later-registered trademarks.
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International law does not fully unify the principle for the acquisition of
trademark rights, leaving countries free to choose between first to use and first to
file systems. However, international treaties establish minimum standards for the
protection of well-known unregistered marks and for preventing unfair
competition.
A key instrument in this regard is the Paris Convention for the Protection of
Industrial Property (1883), to which Uzbekistan has been a party since 1991.
Article 6bis of the Paris Convention obliges member states to protect well-known
trademarks even if they are not registered in the respective country. States must
provide legal means for refusing registration, canceling a registration, or
prohibiting the use of a mark that copies or imitates a well-known brand if such
use for identical or similar goods is likely to mislead consumers. In other words,
a brand that is widely known on the international or national market is protected
from trademark squatting, even without national registration. For example, a
country must reject the registration of a mark that replicates an unregistered but
well-known brand used by another party in that country.
The TRIPS Agreement (1994), which forms part of the WTO system,
expanded these protections. Article 16(2) of TRIPS extended protection of well-
known marks to the field of services and required consideration of the mark’s
recognition among relevant sectors of the public, as well as the extent of its use
and advertising. Article 16(3) of TRIPS further obliges member states to protect
registered well-known trademarks from use on dissimilar goods if such use
suggests a connection with the trademark owner and the owner's interests may
be harmed. Thus, international treaties ensure protection for well-known and
famous unregistered trademarks, establishing exceptions to the registration-
based principle.
Moreover, Article 8 of the Paris Convention protects trade names without
requiring registration, while Article 10bis obliges countries to repress acts of
unfair competition. This includes prohibiting actions that could cause confusion
regarding a competito
r’s business or goods. In the trademark context, this means
that even in the absence of registration, the use of another’s designation that
results in confusion or misleads consumers about the origin of the product may
be suppressed as a violation of unfair competition norms. In this way,
international law provides a degree of protection to first users of trademarks
through the concepts of well-known marks and prohibitions on unfair
competition.
It is important to emphasize that neither the Paris Convention nor TRIPS
require countries to adopt a full first to use regime for all trademarks. They
merely establish minimum guarantees in special cases (well-known marks, trade
names, prevention of consumer deception). As a result, many countries (including
Uzbekistan) follow the first to file principle in general, supplementing it with
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mechanisms for protecting unregistered marks within the framework of these
exceptions.
Results
However, the introduction of the
first to use
principle carries significant
risks and complexities that must be taken into account:
1.
Legal Uncertainty
: Under a
first to file
system, the trademark register
provides clear legal certainty as to who holds rights to a mark. Under a use-based
system, the boundaries of those rights are often blurred, especially when the use
is local or limited. Disputes may arise regarding who actually used the mark first
and in what geographic area. This increases litigation and associated costs for
establishing the facts of use (requiring evidence such as dated advertising
materials, sales records, etc.).
2.
Evidentiary Burden
: The burden of proving prior use would fall on
businesses. They would need to document the date of first commercial use,
volume of sales, and consumer recognition. In the absence of registration, bad-
faith actors might attempt to falsify such evidence. The judicial system would
need to be prepared to scrutinize and assess extensive evidentiary material in
each case, complicating legal proceedings.
3.
Conflict with Existing Rights
: Uzbekistan’s current trademark
registration procedures provide legally recognized rights to registered owners.
Granting priority to unregistered users could jeopardize the stability of existing
registered trademarks. Conflicts may arise between registered owners and prior
users. Transitional provisions would be necessary to balance interests and avoid
mass challenges to valid registrations.
4.
Institutional Reform Requirements
: Administrative bodies such as the
patent office and the judiciary would need to adapt their practices. For instance,
trademark examination procedures could become more complex
—
beyond
checking the official registry, it might be necessary to assess whether there are
earlier unregistered uses of similar marks (a procedurally difficult task).
Additionally, mechanisms for publicizing claims to unregistered marks may be
required to inform third parties
Potential Advantages of Intoducing the First to Use Principle
A transition to protecting trademark rights based on actual use (either fully
or partially) could bring several benefits to Uzbekistan:
1.
Protection of Good-Faith Businesses
: Companies that first began using
a brand in the country would receive priority protection, even if they had not
registered it in time. This would counteract trademark squatting practices, where
bad-faith actors register well-known marks and make claims against original
users. Adopting a use-based system would ensure greater fairness and protection
for local entrepreneurs who have built brand reputations.
2.
Reduction of Bad-Faith Registrations
: If trademark priority can be
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challenged by a prior user, the incentive for bad-faith registrations (e.g.,
registering a well-known mark with the intent of blocking its real owner)
diminishes. This aligns with the principle of preventing unfair competition and
could help improve the business environment.
3.
Business Flexibility
: The business community would benefit from the
ability to develop a brand and invest in marketing without fear of instantly losing
rights due to procedural formalities. Small and medium-sized enterprises (SMEs),
in particular, would benefit, as not all of them register trademarks at the initial
stage. The
first to use
rule would grant them time and priority if the brand gains
market traction.
Substantive Legal Protection
: Under a use-based regime, courts would
focus more on substantive facts
—such as who used the mark first, the brand’s
recognition, advertising presence, and good faith
—
rather than solely on formal
registration dates. This may lead to more substantively fair outcomes in
trademark disputes, granting rights to those who actually created and promoted
the mark.
Conclusion
If the legislator in Uzbekistan decides to soften the strict first-to-file regime,
a phased introduction of principles recognizing partial priority for first use may
be considered, supported by appropriate legal mechanisms.
Implementation of an opposition procedure: Introduce a procedure that
allows objections to be raised during the examination stage or shortly after
registration (either through judicial or administrative means) by a party that can
prove prior actual use of an identical or confusingly similar mark. Such opposition
could be granted provided that the opposing party used the mark in Uzbekistan
prior to the applicant’s priority date and that such use was sufficient to establish
commercial recognition. For instance, in certain jurisdictions with a first-to-file
system incorporating elements of first-to-use (such as India), the law
acknowledges the priority of first use, and a later-filed application should not
infringe rights acquired through prior use.
Recognition of claims based on unregistered trademarks: Expand the scope
of legal protection through unfair competition laws and civil torts. For example,
allow legal actions similar to “passing off,” in which the plaintiff must prove that
their unregister
ed mark has acquired a reputation, and that the defendant’s
registration or use of a similar mark misleads consumers. This could be facilitated
by invoking general provisions of the Civil Code on the protection of business
reputation or specific competition law norms.
Educational and transitional policy: Transitioning to a new system should
be accompanied by business awareness initiatives emphasizing that registration
remains important even when prior use is recognized. It may be prudent to
preserve priority for those who file in good faith without knowledge of another
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party’s prior use. In other words, protection would only be extended to first users
against clearly bad-faith registrations. This moderate model is already partially
applied in practice through the criterion of consumer confusion: examination
authorities could reject applications where the applied-for mark is confusingly
similar to a mark already in use in the country.
In conclusion, full adoption of the first-to-use principle represents a
significant step requiring reforms to trademark and competition law, as well as
changes in enforcement practices. Partial measures
—
such as protecting well-
known and previously used marks from bad-faith registrations
—
appear more
realistic as an initial stage. In this way, Uzbekistan could gradually introduce
elements of first-user protection (e.g., through opposition procedures,
cancellation mechanisms, and unfair competition claims), without abandoning
the well-established registration-based system. This would help maintain a fair
balance between those who first registered a trademark and those who were the
actual creators and early users of the brand.
