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Problems of protecting exclusive trademark rights in
advertising
Zebiniso GOFUROVA
1
Tashkent State University of Law
ARTICLE INFO
ABSTRACT
Article history:
Received March 2025
Received in revised form
15 April 2025
Accepted 25 April 2025
Available online
25 May 2025
This article examines the legal challenges of protecting exclusive
trademark rights in the context of advertising. The purpose of the
research is to analyze how trademark law and advertising law interact
to balance the exclusive rights of trademark owners with the needs of
advertisers to reference others’ brands. The study uses a comparative
legal method, reviewing legislation and cases from multiple jurisdictions
(including Uzbekistan, the European Union, and the United States) to
identify common approaches and differences. The results demonstrate
that unauthorized use of another’s trademark in advertising can lead to
consumer confusion and dilution of the brand’s reputation, thereby
infringing the trademark owner’s excl
usive rights. At the same time,
many legal systems permit comparative advertising and other
nominative uses of trademarks under certain conditions, recognizing
that truthful, non-misleading comparisons can benefit consumers and
competition. Key findings indicate that modern laws
–
such as those in
the EU and US
–
provide clear criteria distinguishing lawful comparative
advertising from trademark infringement. However, the enforcement of
these rules remains a challenge: even where laws are adequate, lack of
awareness and weak enforcement mechanisms can undermine the
protection of trademark rights in advertising. The conclusions drawn
from this research underscore the need for a balanced approach. It is
recommended that jurisdictions like Uzbekistan implement
international best practices by clarifying the boundaries of permissible
brand use in ads (for example, use of competitors’ marks is allowed for
objectively substantiated comparisons or to indicate genuine products
and spare parts) while strengthening measures against deceptive and
unfair advertising. By improving legal provisions, increasing
accountability for violators, and fostering a culture of fair competition, it
is possible to ensure effective protection of trademarks in advertising
without stifling legitimate comparative advertising.
2181-
1415/©
2025 in Science LLC.
https://doi.org/10.47689/2181-1415-vol6-iss4/S-pp
This is an open access article under the Attribution 4.0 International
(CC BY 4.0) license (https://creativecommons.org/licenses/by/4.0/deed.ru)
Keywords:
unfair competition,
brand dilution,
comparative advertising,
business reputation.
1
Tashkent State University of Law, Tashkent, Uzbekistan
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Reklamada tovar belgilarini himoya qilish muammolari
ANNOTATSIYA
Kalit so
‘
zlar:
insofsiz raqobat,
noqonuniy foydalanish,
brendlarning chalkashligi,
ishchanlik obro'si.
Raqobat muhitining faol rivojlanishi davrida reklama
materiallarida tovar belgilaridan reklamalarda foydalanish bir qator
huquqiy ziddiyatlarni keltirib chiqarayotgani aniqlandi. Vijdonlik
mezonlari bajarilgan holda qiyosiy reklamani ruxsat etuvchi
qonunchilikning Tovar belgilari egalari va raqobatchilar manfaatlari
balansini saqlashga ta’siri baholandi. Birovning tovar belgisini
reklamalarda noqonuniy ishlatish iste'molchilarni chalg‘itishi hamda
huquq egalarining huquqlarini poymol qilishi mumkinligi tasdiqlandi
va shu bois qonunchilikda alohida huquqlarni himoya qilish
mexanizmlari ko‘zda tutilganligi ko‘rsatildi. Xalqaro huquqiy tartibga
solish va xorijiy yurisdiksiyalar tajribasi (Yevropa Ittifoqi, AQSh va
boshqalar) ko‘rib chiqilib, tovar belgilarni hi
moya qilish va reklamani
erkin olib borish o‘rtasidagi ziddiyatlarni hal qilishga qaratilgan
yondashuvlar tahlil qilindi. Tovar belgilarini reklamalarda himoya
qilishning asosiy muammolari qonunchilikdagi bo‘shliqlar bilan
emas, balki uning samarali tatbiq
etilishini ta'minlash bilan bog‘liqligi
aniqlandi. Huquqni qo‘llash amaliyotini takomillashtirish, noinsof
reklama uchun javobgarlikni oshirish, shuningdek reklama bozori
ishtirokchilari
va agentliklarga boshqa brendlardan foydalanishning
huquqiy jihatdan xavfsiz va ruxsat
etilgan usullarini tushuntirish
bo‘yicha tavsiyalar taklif etildi.
Проблемы защиты товарных знаков в рекламе
АННОТАЦИЯ
Ключевые слова:
недобросовестная
конкуренция
,
неправомерное
использование
,
размывание бренда
,
сравнительная реклама
,
деловая репутация
.
Обнаружено, что в современных условиях активного
развития рекламы использование товарных знаков в
рекламных материалах создаёт ряд правовых коллизий.
Оценено
влияние
законодательства,
позволяющего
сравнительную рекламу при соблюдении критериев
добросовестности, на баланс интересов правообладателей и
конкурентов.
Установлено,
что
неправомерное
использование чужого товарного знака в рекламе может
вводить потребителей в заблуждение и ущемлять права
правообладателей, в связи с чем законодательство
предусматривает механизмы защиты исключительных прав.
Рассмотрено международно
-
правовое регулирование и опыт
зарубежных юрисдикций (ЕС, США и др.), демонстрирующие
подходы к разрешению конфликтов между защитой брендов
и свободой рекламы. Выявлено, что основные проблемы
охраны прав на товарные знаки в рекламе связаны не
столько с пробелами законодательства, сколько с
обеспечением его эффективного применения. Предложены
рекомендации
по
совершенствованию
практики
правоприменения и повышению ответственности за
недобросовестную рекламу, а также по разъяснению
участникам рекламного рынка и агентствам допустимых
способов использования чужих брендов
.
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INTRODUCTION
Under market economy conditions, advertising plays a pivotal role in the
promotion of goods and services. A trademark grants its owner the exclusive right to use
a designation to distinguish their goods and services; thus, the unauthorized use of
another's trademark in advertising can infringe upon the rights of the trademark owner
and mislead consumers. On one hand, the law protects trademark holders from unfair
advertising practices that use their trademarks without permission. On the other hand, it
is essential to provide conditions that support fair competition and inform consumers,
such as permissible comparative advertising. Consequently, there is a challenge in finding
a balance between protecting brand owners' rights and allowing competitors freedom in
advertising activities.
This research aims to identify key conflicts and trends in protecting exclusive
rights to trademarks in advertising and to develop recommendations for improving legal
regulations and enforcement practices. Many authors highlight the necessity of clear
criteria distinguishing between permissible mentions of other brands and infringements
of exclusive rights (Grigoriadis, 2014; Lott, 2018). However, gaps in enforcement and
emerging forms of advertising (such as internet advertising and contextual marketing)
present new challenges for legal professionals. Hence, comprehensive research into
international experience and current national legislation is essential for developing an
integrated approach to address these issues.
METHODS
In studying the issues related to trademark protection and the utilization of
agencies’ trademarks in advertising, a comprehensive review was initially undertaken of
official legislative documents and regulatory frameworks issued by the government and
relevant authorities of Uzbekistan, including Decrees by the President of the Republic.
Detailed attention was paid to evaluating the objectives established by these legislative
instruments, as well as assessing their practical implementation and effectiveness.
Furthermore, to evaluate the alignment of Uzbekistan’s legal norms and
advertising practices with international intellectual property standards, key international
treaties and conventions, such as the Paris Convention for the Protection of Industrial
Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS), were carefully studied. Comparative analyses were conducted using legal
provisions and regulatory frameworks from foreign jurisdictions, including the European
Union, the United States, and South Korea, examining practices in these countries
regarding the use of agency trademarks within client advertisements.
RESULTS AND DISCUSSION
International treaties establish foundational principles for the protection of
trademarks and combating their unfair use, including in advertising. According to the
Paris Convention of 1883, member states are obligated to grant legal protection to
trademarks and prevent unfair competition through acts that might mislead the public
concerning the nature of goods or commercial activities of competitors (Paris
Convention, 1883, Article 10bis). The TRIPS Agreement of 1994 confirms that holders of
registered trademarks possess exclusive rights to prevent third parties from using signs
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identical or confusingly similar to their trademarks in commercial contexts, including in
advertising goods or services without the consent of the trademark owner (WTO, 1994).
Simultaneously, international law acknowledges permissible fair informative use of
trademarks; for instance, Uzbekistan (like many other countries) adheres to the principle
of exhaustion of trademark rights
—
once a trademarked product has been introduced
into the market by the rights holder, subsequent resale and advertisement of such
product using the trademark do not violate the owner’s rights (Law of Uzbekistan on
Trademarks, 2001, Article 19). This principle is crucial for advertising, as it permits
dealers and retailers to legitimately use manufacturers' trademarks when advertising
original products they offer (McCarthy, 2017). Consequently, international law maintains
a balance between protecting consumers and brands from misleading advertisements
and permitting fair mention of others' trademarks for informative or comparative
purposes.
Developed countries' legislation includes specific rules governing the use of
competitors' trademarks in advertising. Within the European Union, Directive
2006/114/EC on misleading and comparative advertising permits comparative
advertising provided specific conditions are met: advertising must be objective, truthful,
non-misleading, must not confuse the origin of products, must not discredit or defame a
competitor or their trademark, nor unfairly exploit the reputation of another’s brand.
These requirements are reflected in the national laws of most European countries. For
example,
Germany’s Act Against Unfair Competition allows comparisons in advertising
only when characteristics are accurate, objective, consumer deception is avoided, and
competitors' marks are not unjustifiably used (European Commission, 2016). Similar
implementations of this directive are found in the UK and other EU member states,
ensuring consistent rules across the advertising market.
In contrast, the United States does not have a specific federal law governing
comparative advertising, but it operates under provisions of trademark law (Lanham
Act) and unfair advertising regulations. US courts typically allow competitors'
trademarks in advertising claims if truthful and not likely to confuse product origin.
Moreover, US law recognizes the doctrine of nominative fair use, whereby judicial
decisions allow the mention of competitors' brands when necessary for product
identification, proportionate to necessity, and without suggesting endorsement by the
trademark owner. Overall, comparative advertising in the US is seen as competition-
enhancing, with lawsuits typically filed under trademark infringement or false
advertising, based on misleading or deceptive practices. The judiciary has thus
established a balanced approach: truthful comparative claims are permissible, whereas
deceitful or unjustified exploitation of another's renowned trademark is prohibited
In recent years, Uzbekistan has actively modernized its intellectual property and
advertising laws, incorporating international best practices. Notable amendments in
trademark legislation aim to balance stakeholders’ interests. The primary legislation
regulating trademarks is the Law of Uzbekistan "On Trademarks, Service Marks and
Appellations of Origin" No. 352-II dated August 30, 2001 (as amended). This law details
exclusive rights and legally protected uses of trademarks, explicitly including their use in
advertising, printed publications, announcements, signage, and other materials (Article
15). Thus, Uzbek law explicitly recognizes that unauthorized placement of
another’s
trademark in advertisements may constitute unlawful use. Trademark owners possess
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exclusive rights to control trademark use and prohibit third-party use without consent,
except under legally stipulated circumstances, such as the principle of rights exhaustion
or non-commercial descriptive uses.
Advertising activities are specifically regulated by the Law of Uzbekistan "On
Advertising" of December 26, 2019. This law defines requirements for advertising
content and prohibits unfair advertising practices. Article 6 classifies unfair advertising
as containing incorrect competitor comparisons, defamation, or misleading information.
Conversely, Article 13 permits comparative advertising if it meets objectivity and
accuracy criteria, avoids confusion, relies on verifiable data, and does not harm
competitors' reputation. Thus, Uzbek legislation aligns substantially with European
standards, endorsing fair comparative advertising while prohibiting misleading or
defamatory advertisements.
Despite having an updated legal framework, Uzbekistan continues to encounter
challenges in trademark protection within advertising. These issues primarily relate to
law enforcement rather than legislative gaps.
Firstly, effective enforcement is required: unfair use of trademarks must be swiftly
addressed by antitrust and judicial authorities. Monitoring and prompt responses to
violations, especially in online advertising, remain challenges. For example, for quite a
long time, the advertising banners of the Elmakon household appliance store were
accompanied by the text "Take care of the "second wife" (Ikkinch xotin"ga g'amxo'rlik
qiling), which is contrary to the law, since polygamy is prohibited by the provisions of the
Criminal Code of Uzbekistan. Only after gaining popularity among the public, the
Committee for the Development of Competition and Consumer Protection announced
that all Elmakon advertising banners with this inscription would be dismantled.
Secondly, educating market participants is crucial. Advertisers and marketers
often lack clear guidance on permissible uses of third-party trademarks. Clarifying
boundaries, such as lawful mentions under rights exhaustion and illegal uses involving
imitation products, is essential. Additionally, permissible comparative advertising must
be factual, objectively evidenced, and neutrally phrased to avoid negative connotations.
Insufficient awareness risks either unjustified fears of legitimate comparative advertising
or unintentional infringements.
Thirdly, novel digital advertising forms, including social media influencer
partnerships and keyword-based advertisements, require clarification in Uzbek judicial
practice. National authorities must consistently interpret principles preventing consumer
deception and misuse of reputation, drawing upon international experiences. The
American media investment company GroupM, Hidden online advertising, falsely
presented as independent reviews but incorporating unauthorized trademarks,
constitutes unfair competition requiring regulatory action.
Fourth, consider the following scenario: an advertising agency (advertising
producer) wishes to use its registered trademark (logo or name) in advertising materials
produced for a client (advertiser). The key question concerns the legitimacy of such an
action under Uzbek legislation, alongside the protection of the interests of both parties
involved.
Under the Republic of Uzbekistan's Law on Trademarks (2001), the exclusive
rights to a registered trademark belong to its owner, who may use the mark at their
discretion for the goods and services listed upon registration. Others are prohibited from
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using similar marks without the owner's permission, especially if such use might mislead
consumers regarding the origin of goods or services. Consequently, within the
advertising context, the unauthorized use of another entity’s trademark in advertising is
unlawful if it generates consumer confusion about the origin of advertised goods.
However, an advertising agency using its registered trademark in a client’s
advert
isement does not infringe upon another’s rights, as it is employing its mark rather
than someone else's. From the standpoint of Uzbek trademark law, this use is inherently
permissible, provided it does not mislead consumers regarding the advertised goods or
their producer.
Significantly, the roles of parties involved in advertising are distinctly outlined in
the new version of Uzbekistan's Law on Advertising (7 June 2022). Typically, advertising
involves three entities: the advertiser (the party commissioning the advertising, whose
goods or services are promoted), the advertising producer (the agency or entity that
creates advertising materials), and the advertising distributor (the platform for
advertising dissemination, such as TV, billboards, or websites). According to Uzbek law,
the advertiser bears primary responsibility for compliance with legal advertising
standards, whereas the advertising producer is responsible for meeting technical and
other applicable standards.
Thus, an advertising agency operates on behalf of and in the interests of the
advertiser, creating advertising content representing the advertiser. While copyrights for
advertising materials such as videos or layouts may belong to the agency (or specific
individuals, like designers or directors), these rights are typically transferred to the client
under advertising service agreements. Nevertheless, agencies may retain the right to
claim authorship (for example, within portfolios). Uzbek advertising law explicitly
acknowledges advertising as intellectual property created by the advertising producer.
Regarding the use of an agency’s trademark within a client’s advertisement, Uzbek
advertising legislation contains no explicit provisions either permitting or prohibiting
such practices. Consequently, this matter is governed by general advertising regulations,
particularly the requirement for advertisements to be accurate and fair, avoiding
consumer deception concerning the characteristics, origin, or endorsement of products.
For instance, Article
16 of Uzbekistan’s Advertising Law prohibits claims suggesting
official endorsement by government bodies to avoid misleading consumers. Similarly,
any information included within advertisements should not create false impressions
about product origins or attributes.
Applying this to the scenario involving an agency’s trademark, consumer confusion
might arise if, for example, an agency’s logo appeared prominently in a car
advertisement, potentially suggesting agency involvement in manufacturing or selling
vehicles. However, consumers typically differentiate clearly between the advertised
product's brand and a modest agency logo, if noticeable. Uzbek legislation does not
explicitly prohibit the inclusion of third-party logos within advertisements, provided
such inclusion does not constitute unlawful advertising or concealed promotional
activity, and does not compromise consumer rights to truthful information.
Under civil and contractual law in Uzbekistan, relationships between advertisers
and advertising agencies are governed primarily by contracts. Parties can explicitly
include clauses concerning the use of the agency’s trademark within advertising service
agreements. An agency might, for instance, request permission to feature its logo
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discreetly in advertisement corners or add a label such as "Produced by ____". If consent is
granted by the advertiser, this arrangement becomes contractual. Conversely, if an
agency inserts its trademark without client approval, this may constitute a breach of
contractual terms, especially if the contract explicitly assigns all advertising rights and
control to the advertiser. Thus, internal contractual arrangements are vital; without
express client consent, agencies should refrain from including additional trademarks or
logos.
Considering international experience (EU, USA, South Korea, and CIS countries),
the use of an agency’s trademark within advertisements is generally permissible when
agreed upon explicitly in contracts, ensuring transparency, clarity, and preventing
consumer confusion.
Practical recommendations for Uzbekistan include:
•
Explicit contractual clauses on trademark use.
•
Development of ethical guidelines or industry standards.
•
Clear regulatory clarifications where necessary.
•
Prevention of covert advertising through transparent and subordinate
agency branding.
Overall, clear agreements and transparency between advertising agencies and
advertisers constitute the best practices, effectively balancing legal compliance with
ethical promotional standards.
Thus, Uzbekistan faces three critical areas for improving trademark protection in
advertising: (1) clearly defining permissible trademark uses for advertisers and
advertising agencies; (2) consistently applying sanctions (fines, regulatory directives) to
deter infringements; and (3) adapting enforcement practices to the evolving digital
marketplace
CONCLUSION
Upon analyzing international standards and practices from various jurisdictions, it
becomes clear that the issue of trademark protection in advertising revolves around
achieving an optimal balance. On one hand, it is essential to prevent unfair competitors
from misusing others’ brands and misleading consumers. On the other hand, it is equally
important to allow fair comparative advertising, which fosters competition and informs
the marketplace. International experience, including that from the EU, the USA, and other
developed regions, offers several approaches relevant to Uzbekistan.
Firstly, clear criteria are required to define permissible comparative advertising.
Uzbekistan's legislation already includes such criteria
—
objectivity, verifiable
comparisons, the absence of deception, and non-
defamation of competitors’ reputations.
These standards should not only be preserved but also effectively implemented.
Advertisers and advertising agencies must strictly adhere to these guidelines, clearly
understanding the boundaries of permissible practices.
Secondly, the effective operation of regulatory authorities responsible for
overseeing compliance with advertising laws, particularly antimonopoly bodies, is
crucial. It is recommended that explanatory guidelines or manuals be developed for the
advertising sector, clarifying when mentioning another entity’s trademark is lawful (for
instance, when indicating original branded products or making honest comparisons of
product characteristics) and outlining how to do so safely from a legal perspective.
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Additionally, these guidelines should detail situations where such use might result in
sanctions. Such a preventive approach would enhance legal awareness and prevent
violations.
Thirdly, a comprehensive approach is necessary to strengthen trademark
protection mechanisms, including refining regulations through targeted amendments,
enhancing penalties for infringements (such as imposing substantial fines for
deliberately false or misleading advertising involving unauthorized trademark usage),
and fostering a culture of honest advertising through market participant education.
Economic sanctions should outweigh any benefits derived from unfair practices to
dissuade potential violators from misusing trademarks.
Implementing these measures will ensure effective brand protection in advertising
that aligns with the best global standards without obstructing healthy competition. It is
unacceptable for exclusive trademark rights to be undermined by unfair advertising
practices, adversely affecting both trademark holders (in terms of reputation and profit)
and consumers (due to misinformation). Conversely, fair advertising, even comparative
advertising, complying with established requirements, benefits the market. Thus, clearly
distinguishing these scenarios is a critical responsibility for law enforcement agencies. By
following international practices and implementing the above recommendations,
Uzbekistan can significantly enhance trademark protection in advertising while
maintaining consumer awareness and market competition.
REFERENCES:
1.
Directive 2006/114/EC. (2006). Directive of the European Parliament and of
the Council of 12 December 2006 concerning misleading and comparative advertising.
Official Journal of the EU, L 376, 21
–
27.
2.
Grigoriadis, L. G. (2014). Comparing the Trademark Protections in
Comparative and Keyword Advertising in the United States and European Union.
California Western International Law Journal, 44(2), 149
–
205.
3.
Law of the Republic of Uzbekistan on Advertising.
(2019). Закон
Республики Узбекистан «О рекламе» (№
ZRU-
560 от 26.12.2019).
[Law of Uzbekistan
on Advertising, in Russian].
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Law of the Republic of Uzbekistan on Trademarks, Service Marks and
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(2001). Закон Республики Узбекистан «О товарных
знаках, знаках обслуживания и наименованиях мест происхождения товаров» (№
352-II
от 30.08.2001, с изм. 2021).
[Law of Uzbekistan on Trademarks, in Russian].
5.
Lott, L. J. (2018). Intellectual Property Issues in Comparative Advertising.
White Paper, Lott & Fischer, P.L. (Miami).
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McCarthy, J. T. (2017). McCarthy on Trademarks and Unfair Competition
(5th ed.). Thomson Reuters.
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Paris Convention. (1883). Paris Convention for the Protection of Industrial
Property (20 March 1883, as revised at Stockholm on 14 July 1967).
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WTO. (1994). Agreement on Trade-Related Aspects of Intellectual Property
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