LEGAL AND ILLEGAL INDIVIDUALIZATION THROUGH TRADEMARKS: NATIONAL AND INTERNATIONAL CHALLENGES

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LEGAL AND ILLEGAL INDIVIDUALIZATION THROUGH TRADEMARKS:

NATIONAL AND INTERNATIONAL CHALLENGES

Djumanova Sogdiana Sherzodovna

Master's student at TSUL

https://doi.org/10.5281/zenodo.15410933

Introduction

Trademarks have become critical assets in today’s globalized and digital economy. They

serve to distinguish products and services of one enterprise from those of others, emdiving
goodwill and brand reputation. A well-known mark such as

Coca-Cola

exemplifies the immense

value and recognition a trademark can carry worldwide – the brand alone is worth billions of
dollars and is rigorously protected in every country where it is registered. This economic
importance also makes trademarks prime targets for misuse. Counterfeiting and other forms of
unauthorized trademark use have surged alongside increasing competition and consumer
demand. According to a recent OECD–EUIPO report, counterfeit goods accounted for an
estimated

USD 467 billion

in global trade in 2021, representing about 2.5% of world imports

and posing serious risks to businesses and consumers. Such illicit uses of trademarks cause
trademark owners to suffer significant losses each year and can erode consumer trust in
brands.

Legal frameworks for trademark protection have evolved nationally and internationally

to address these challenges.

Uzbekistan

, like many countries, has established laws to grant

exclusive rights to trademark owners and to combat infringement through civil, administrative,
and criminal measures. At the same time, Uzbekistan participates in international agreements
– including the

Paris Convention

and the

Madrid System

– that facilitate cross-border trademark

protection. Ensuring the effectiveness of these frameworks is an ongoing concern, especially as
new challenges emerge. The digital era has introduced novel forms of trademark use and
misuse – from

cybersquatting

on domain names to unauthorized trademark use in

non-

fungible tokens (NFTs)

and the

metaverse

– which test the adaptability of existing laws. High-

profile cases such as the

Hermès v. Rothschild

dispute over “MetaBirkin” NFTs underscore the

complexity of applying trademark law to virtual goods.

Objective:

This article provides an in-depth analysis of the legitimate versus illegitimate

use of trademarks, examining the legal framework and practical enforcement challenges.
Focusing primarily on Uzbekistan’s national approach and comparing it with international
standards, we highlight how trademark rights are defined and enforced, what constitutes
infringement, and how emerging digital issues are being addressed. Real legal cases are used to
illustrate enforcement practices, infringement scenarios, and legal consequences in both
domestic and international contexts. Ultimately, this analysis aims to inform legal professionals
about current issues in trademark law and to suggest how legal systems can continue adapting
to protect trademark rights in the face of evolving challenges.

Methods

This research employs a qualitative

legal doctrinal and comparative analysis

approach. We began by examining the

national laws of Uzbekistan

that govern trademarks,

including the Civil Code and the Law on Trademarks, Service Marks and Appellations of Origin
of Goods (No. 267-II, 2001, as amended). Key legislative provisions – such as definitions,

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registration procedures, scope of rights, and enforcement mechanisms in civil, administrative,
and criminal law – were analyzed to determine the legal framework for trademark use in
Uzbekistan. In parallel, relevant

international treaties and agreements

were reviewed,

notably the

Paris Convention (1883)

, the

Madrid Protocol (1989)

, the

Trademark Law

Treaty (1994)

, and the

TRIPS Agreement (1994)

, to understand the international standards

that influence national law. These instruments provide baseline definitions and enforcement
requirements (e.g., TRIPS mandates certain remedies for infringement) that shape Uzbekistan’s
obligations and policy directions.

Additionally, a

comparative survey

of selected other jurisdictions and international

practices was conducted. Sources included legal scholarship and reports on trademark law
developments, especially in

civil law systems similar to Uzbekistan

(for instance, Russia’s IP

law doctrine and EU trademark directives) and in major common law jurisdictions (such as the
U.S. Lanham Act and case law). This helped identify common approaches and distinct national
variations in addressing trademark infringement, such as the “first-to-file” principle prevalent
in many jurisdictions versus the “first-to-use” principle in others.

The research also incorporated analysis of

case law and enforcement examples

.

Published court decisions, where available, and case studies from legal practice were used to
illustrate how laws are applied in real scenarios. For example, an Uzbek Supreme Court case
involving a trademark dispute over mayonnaise products (discussed below) was examined to
understand civil enforcement and damages. Likewise, international cases — e.g., the

MetaBirkin NFT

case and

domain name UDRP

disputes — were reviewed to capture

emerging trends. These case examples were gathered from legal news outlets, law firm
publications, and international arbitration records.

Throughout the research,

academic commentary

and

IP expert analyses

(via articles,

treatises, and WIPO publications) were consulted for doctrinal interpretations. The
methodology thus triangulates

legislative analysis

,

case study

, and

comparative review

to

ensure a comprehensive understanding of both the legal framework and its practical
implementation. All sources have been cited in APA style, and the reference list includes Uzbek
legal materials, international treaties, and scholarly sources that informed this study.

Results

Uzbekistan’s trademark law provides a robust foundation for the protection of

trademarks, largely aligned with global norms. A

trademark

is defined broadly as any sign

capable of distinguishing one entity’s goods or services from another’s, consistent with the
definition used by WIPO and TRIPS. Unlike copyrights that arise automatically, trademark
rights in Uzbekistan are secured

only upon registration

: an exclusive right is established once

a mark is entered into the State Register and a certificate is issued by Ministry of Justice. The
law specifies that the trademark owner then holds the

exclusive right

to use the mark and to

prevent others from using identical or confusingly similar marks for similar goods or services.
Uzbekistan participates in key international agreements – it is party to the

Paris Convention

(ensuring national treatment and protection of well-known marks) and the

Madrid System

(allowing international registration of trademarks through WIPO). Amendments in 2021
further harmonized local practice with global standards, introducing measures like expedited
examination of applications and a formal opposition (observation) procedure by which third
parties can contest pending applications. The exclusive right to a trademark applies to the

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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 is posted on the
official website of the Ministry on the same day. These updates reflect Uzbekistan’s efforts to
modernize its IP regime in line with the

TRIPS Agreement

and its ongoing aspirations to join

the World Trade Organization.

Under the law, the

legitimate use

of a trademark is essentially use by the rights holder

or with the rights holder’s consent. The trademark owner may use the mark in commerce (e.g.,
affixing it to products, packaging, advertising, etc.) and license or assign it to others. Such
authorized uses are protected and form part of the trademark’s value (indeed, trademarks have
an

investment function

, often being monetized through licensing or franchising agreements).

Legitimate use also includes certain

good-faith uses

by others that the law permits. For instance,

many legal systems (including Uzbekistan’s by virtue of TRIPS and general principles)
recognize that one can use another’s trademark for descriptive purposes or comparative
advertising, provided it’s not misleading. Moreover, trademark rights are subject to an
obligation of use – if a trademark is not used for a continuous period (commonly three to five
years in many jurisdictions), it may become vulnerable to cancellation for non-use (this
principle is reflected in international practice and has been adopted in various national laws to
prevent owners from hoarding marks). In essence,

legitimate use

respects the origin-

indicating function of the mark, either by the owner or under the owner’s control, whereas any
use that confuses consumers as to origin or sponsorship, or that otherwise violates the owner’s
exclusive rights, is

illegitimate

.

The study identified and categorized several major forms of trademark infringement and

misuse:

The classic infringement scenario involves an unauthorized party using a mark that is

identical or substantially similar to a registered trademark on the same or related
goods/services, in a way likely to cause consumer confusion. For example, if an unrelated entity
uses the mark “Uztelekom” (a known Uzbek telecom brand) for telecom services, consumers
could be misled about the service provider. Laws uniformly prohibit such uses. The legal test
applied is the

likelihood of confusion

: if the average consumer might believe the infringer’s

goods are associated with the trademark owner, infringement is established. This includes

counterfeiting

— the direct copying of a mark on identical goods (like putting the

Apple

logo

on unauthorized electronics) — which is a particularly egregious form of infringement.

Even where confusion is not likely (for instance, use on dissimilar goods), using a famous

mark without authorization can constitute dilution in some jurisdictions. While Uzbekistan’s
law focuses on confusion-based infringement, internationally the concept of

trademark

dilution

protects well-known marks against uses that tarnish their reputation or blur their

distinctiveness (e.g., using

Cadbury’s

signature purple color on unrelated products might be

seen as taking unfair advantage of a famous mark’s reputation). The

Paris Convention

obliges

members to refuse or cancel trademarks that are reproductions of well-known marks, even for
dissimilar goods, if use would indicate a connection and likely damage the owner’s interests
(Art. 6bis).

The digital proliferation of trademarks has led to

cybersquatting

, where individuals

register domain names identical or confusingly similar to trademarks in bad faith, aiming to sell

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them or misdirect consumers. For example, registering <cocacola.uz> or other variants to
exploit the brand. Uzbekistan’s domain regulations work in conjunction with trademark law to
address this, and at the international level the

Uniform Domain Name Dispute Resolution

Policy (UDRP)

provides an administrative process through WIPO to recover infringing domain

names. Brand owners worldwide are actively using this mechanism –

in 2023 alone, a record

6,192 cybersquatting cases

were filed with WIPO by trademark owners, continuing a trend of

growth in domain disputes. Since the UDRP’s inception, over

67,000 cases

have been decided,

reflecting the ubiquity of the problem. These figures underscore that cybersquatting remains a
significant illegitimate use of trademarks in the digital age.

Emerging technologies have opened new frontiers for trademark use – and misuse.

Non-

fungible tokens (NFTs)

, which often represent digital art or collectibles on blockchain, have

sparked disputes when the content of the NFT or its marketing uses another’s trademark
without permission. A notable example is

Hermès International v. Rothschild

, where an artist

sold “MetaBirkin” NFTs depicting digital fur-covered Birkin bags. In 2023, a U.S. jury found that
the use of the

Birkin

trademark in this NFT project infringed Hermès’ rights and was not

protected free expression. The court permanently banned sales of the infringing NFTs,
recognizing that such use was likely to confuse consumers into thinking Hermès was involved.
Similarly, in the

metaverse

(virtual reality platforms), unauthorized use of real-world brands

– for example, a virtual store in a platform using

Nike

’s trademarks without permission – raises

infringement issues. While jurisdictions are still developing legal responses, early cases
indicate that existing trademark laws do extend to digital goods and services. The European
Union has begun considering NFTs within its legal directives (e.g., references in EU Directive
2019/790 address aspects of digital content and could encompass NFTs), and courts are
applying traditional principles to these novel contexts.

Trademark laws also guard against other unfair uses such as false association and

trademark disparagement. For instance, using someone else’s trademark in a way that

discredits or tarnishes

the brand (e.g., spreading false statements about a competitor’s

trademark or product) can be actionable – Uzbekistan’s laws on unfair competition and
advertising regulation complement trademark law in this regard. Another example is continued
use of a trademark after authorization has been terminated (as in the case of a former licensee
discussed below), which clearly becomes illegal once consent is withdrawn.

Enforcement of trademark rights in Uzbekistan and internationally operates on

three

main levels

– civil, administrative, and criminal – each illustrated by real cases:

Trademark owners typically enforce their rights through civil litigation. Courts can

award damages, issue injunctions

to stop infringement, and order destruction of infringing

goods. A recent Uzbek case highlights both the possibilities and challenges of civil enforcement.
In 2019, a major Russian food company terminated a license agreement with an Uzbek firm that
had been producing mayonnaise under the Russian company’s trademark “Oliv’ez”. The Uzbek
company, however, continued to manufacture and sell the products bearing the

Oliv’ez

mark

without permission. The trademark owner sued in Uzbekistan for infringement and

lost

profits

. The first-instance court ruled that the former licensee was indeed infringing and

ordered the

destruction of all remaining infringing products

, but it initially denied the claim

for $200,000 in lost profits, partly because the defendant refused to disclose sales data. On
appeal, the

Supreme Court of Uzbekistan

reversed that part, recognizing the bad-faith tactic

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of concealing evidence, and ordered the infringer to pay the full $200,000 in lost profit damages.
This case illustrates that Uzbek courts can and do enforce trademark rights robustly, though
gathering evidence (especially on illicit profits) can be an obstacle. Internationally, similar civil
actions are commonplace – for example, U.S. courts in recent years have awarded statutory
damages in counterfeiting cases and UK courts grant comprehensive injunctions, even
extending to website blocking orders to prevent ongoing online infringement.

Administrative bodies also play a role, particularly in preventing the importation and sale

of counterfeit goods. In Uzbekistan, customs authorities have the power to

detain shipments

suspected of trademark-infringing goods at the border, reflecting provisions akin to Articles
51–60 of TRIPS which mandate border measures. Trademark owners can register their marks
with customs (a Customs Register of IP) to facilitate this process, a method commonly used
worldwide to intercept counterfeits. Additionally, Uzbekistan recently introduced

direct

monetary fines

for IP infringement via amendments to its law. As of May 2022, legal entities

in Uzbekistan can be fined between approximately €2,200 and €4,400 for trademark or
industrial design infringement. Such administrative fines create a deterrent and provide a
quicker remedy in clear-cut cases (without needing a full court process). In the European Union,
administrative enforcement is also significant: customs across EU member states reportedly
seize millions of counterfeit items annually under a unified EU regulation on border measures.
Administrative agencies (like patent/trademark offices or competition authorities) may also
handle certain unfair competition aspects; for example, prior to 2023 in Uzbekistan, trademark
infringement could be deemed an act of unfair competition, actionable by the antimonopoly
authority, though recent reforms have refined this approach.

For the most serious cases of trademark infringement – especially

willful trademark

counterfeiting on a commercial scale

– criminal law is invoked. The TRIPS Agreement

explicitly requires WTO members to provide criminal procedures and penalties at least in cases
of willful trademark counterfeiting. Uzbekistan’s Criminal Code contains several provisions
that, while not dedicated solely to trademarks, are applicable to counterfeiting and related
misconduct. For instance,

Article 189

of the Uzbek Criminal Code (violating trade or service

rules) can apply to selling counterfeit goods above a certain threshold, and provides for
penalties including fines and imprisonment for large-scale offenses. Other articles, such as
those on customs violations (Art. 182) and illegal use of a competitor’s marks or misinformation
(Art. 192 on discrediting a competitor), may also be used to prosecute trademark offenders.
Although public data on criminal prosecutions in Uzbekistan is limited, the legal framework
allows authorities to pursue counterfeiters criminally – for example, in scenarios involving
organized production or sale of fake goods (e.g., counterfeit pharmaceuticals or luxury goods,
which pose consumer health risks). Internationally, many countries report criminal
enforcement as a key component of anti-counterfeiting strategy. Under U.S. law, trafficking in
counterfeit trademark goods is a federal crime (punishable by fines and imprisonment), and
the EU member states similarly criminalize commercial counterfeiting in compliance with EU
directives and TRIPS. However, criminal enforcement typically requires a high burden of proof
(willfulness and commercial intent) and significant resource allocation, so it is generally
reserved for egregious cases.

A notable result of this study is the recognition that enforcement mechanisms are evolving

to meet digital challenges. Traditional enforcement (seizing physical goods, raiding factories)

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is not directly effective against online infringement. Thus, new strategies are being employed:
in some jurisdictions courts have issued

web-site blocking orders

requiring Internet Service

Providers to block access to websites selling counterfeit goods. Likewise,

platform

cooperation

has become crucial – major e-commerce and social media platforms now have

notice-and-takedown procedures for counterfeit listings or pages infringing trademarks.
Uzbekistan is in earlier stages of confronting these issues, but given global interconnectedness,
its authorities are likely to adopt similar measures (e.g., blocking offending websites under civil
court orders or through administrative action) to curb online infringement.

In summary, the results of this research show that Uzbekistan’s approach to trademarks

is firmly grounded in international best practices: it defines protectable trademarks broadly,
establishes clear rules for acquisition and scope of rights, and provides multiple avenues to
combat illegitimate use. At the same time, practical challenges persist in enforcement, both in
Uzbekistan and abroad, especially as infringers adopt new tactics and technologies. The
comparative perspective reveals that while the legal frameworks across jurisdictions are
largely harmonized (thanks to treaties like Paris and TRIPS), enforcement effectiveness can
vary based on resources, procedural rules, and the extent to which new issues (NFTs, domains,
etc.) have been addressed. These findings set the stage for a deeper discussion on how legal
frameworks and practitioners are responding to the dynamic landscape of trademark use.

Discussion

Trademarks perform several well-established functions in both law and commerce – they

identify the source of goods/services, guarantee consistent quality, serve as marketing tools,
and confer legal exclusivity to brand owners. Uzbekistan’s legal definition of a trademark
mirrors the international norm:

any sign or combination of signs capable of distinguishing the

goods or services of one entity from those of others

. Practically, this encompasses traditional

trademarks like

words

(brand names),

logos and images

,

combinations of word/image

(composite marks), and

three-dimensional shapes

(product designs or packaging). Modern

laws (including TRIPS Article 15) do not strictly limit the forms a trademark can take. As a
result, non-traditional marks –

colors

(e.g., Cadbury’s purple),

sounds

(e.g., the Nokia

ringtone), even

smells

or

holograms

– are theoretically protectable if they can be graphically

represented and distinguish source. Uzbekistan’s legislation, influenced by the Singapore
Treaty on Trademark Law (2006), is open to such marks, though in practice most registrations
are of the traditional type.

A fundamental doctrinal aspect is that trademarks in Uzbekistan (as in most jurisdictions)

require

registration

for protection. The country follows the

first-to-file

principle: the first

applicant to meet the criteria and register the mark obtains the rights (except for well-known
marks which can be protected without registration under international principles). The
registration process in Uzbekistan is administered by the IP Office under the Ministry of Justice.
Applicants file the required documents (application, representation of the mark, list of
goods/services per the Nice Classification, etc.), and the application is examined for compliance
and distinctiveness. Grounds for refusal include lack of distinctiveness, descriptiveness, conflict
with earlier marks, or use of prohibited elements (generic terms, deceptive indications, state
symbols, etc.). The introduction of

third-party observations

in 2021 now allows interested

parties to submit arguments against a pending application (similar to oppositions), enhancing
the vetting process. Once registered, a trademark in Uzbekistan is valid for 10 years and

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indefinitely renewable in 10-year increments (standard under TRIPS and most laws).

Upon registration, the trademark owner gains the

exclusive right

to use the mark in

commerce and to enforce it against infringers. This exclusivity, however, comes with
boundaries. One important limitation is the concept of

actual use

: trademark law generally

aims to protect marks that are in use (or at least intended for use) in the marketplace.
Uzbekistan’s law (like others) provides that a trademark may be cancelled if not used for a
period (though the specifics of non-use period and procedure are defined by regulation). This
prevents entities from squatting on trademarks without using them (ensuring that marks fulfill
their source-distinguishing function in the market).

Moreover, trademark rights do not allow the owner to

completely

control language or all

references to the mark.

Fair use

doctrines permit others to use a trademark in a descriptive

manner, so long as it’s not as a source identifier. For example, using a term that is a trademark
to describe the product (“

Victorian

style furniture” where Victorian might be a mark but also

a descriptive term) or to compare products (“alternative to

Adobe© Photoshop

”) is often

allowed if done truthfully. In many jurisdictions, nominative fair use (using the mark to refer to
the trademarked good itself, e.g., reselling genuine trademarked products or
commentary/reviews) is recognized. While Uzbekistan’s statute does not explicitly enumerate
such exceptions, general principles of civil law and influence of European law mean that similar
outcomes can be achieved (and Article 17 of TRIPS allows limited exceptions to trademark
rights, which countries can implement). Additionally, exhaustion of rights (the

first sale

doctrine

) is a key principle: once a trademark owner has released goods into commerce (for

instance, sold genuine goods domestically or abroad), they cannot prevent further resale of
those goods under the trademark. Uzbekistan likely follows a national or regional exhaustion
regime – meaning parallel imports (genuine goods imported without permission) may or may
not be considered infringement depending on local law. Recent trends show a movement
toward allowing parallel imports in Eurasian countries to lower prices, but this is a policy
choice outside the scope of this article’s core analysis.

The essence of trademark infringement is the

unauthorized use of a mark in

commerce

in a way that infringes the proprietor’s exclusive rights or confuses the public. In

Uzbekistan’s framework, as in many others, infringement can occur in several ways, which we
unpack further:



Direct Confusion:

If someone uses an

identical trademark on identical goods

,

infringement is usually automatic (a “double identity” scenario). For example, putting the mark

“Samsung”

on phones not made by Samsung is a straightforward infringement. If either the

mark or the goods are only similar (not identical), courts assess similarity and likelihood of
confusion. This involves comparing the marks’ appearance, sound, meaning, and the
relatedness of the goods/services and consumer care levels. In assessing a case, Uzbek courts
would likely take into account factors akin to those elsewhere (drawn from international
practice): the strength of the original mark, the degree of similarity, evidence of actual
confusion, etc.. It is worth noting that even if a junior user didn’t intend to confuse, liability can
still arise if confusion is probable; intent mainly affects damages (willful infringers may pay
greater damages).



Expanded Protection for Famous Marks:

Famous or well-known trademarks (think

Nike

,

Coca-Cola

,

Apple

) often receive protection beyond the ordinary scope. Under Article 6bis of

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the Paris Convention and Article 16(3) of TRIPS, member countries (Uzbekistan included) must
protect well-known marks against unauthorized use on dissimilar goods if that use could
indicate a connection and harm the owner’s interests. For example, using

“Kodak”

for

restaurants would likely be stopped in many countries even though film and food are unrelated,
because Kodak is a coined famous mark and such use could dilute its distinctiveness.
Uzbekistan’s law empowers the trademark authority or courts to refuse registration of a mark
that is a copy of a well-known mark for unrelated goods, and to prohibit its use. The criteria for
determining “well-known” status (such as degree of recognition, duration and extent of use,
advertising, value) follow WIPO’s Joint Recommendation on Well-Known Marks, to which
Uzbek practice adheres.



Illegitimate trademark use often overlaps with

unfair competition law

. Even if a violator

somehow escapes liability under trademark infringement (say, because the mark wasn’t
registered in Uzbekistan or is used in a tricky way), unfair competition provisions can apply.
For instance, passing off one’s goods as those of another (palming off) is actionable even
without a registered mark, as it deceives consumers and competitors – this is recognized under
general tort principles and the law “On Competition.” Until recently, Uzbek law explicitly listed
IP infringement as an unfair competition act, enabling the antimonopoly committee to sanction
such acts. However, a 2023 revision of the competition law reportedly removed IP infringement
from the unfair competition category (to avoid overlap and double liability). Instead, IP
infringements are dealt with under IP-specific laws and remedies, while competition law
addresses separate issues like misleading business indications or company names. Still, the
notion of

“dishonest business practices”

ensures that trademark misuses intended to exploit

another’s reputation or confuse consumers remain unlawful via one route or another.



Domain Name Issues:

Discussing cybersquatting further – many cases in Uzbekistan

involving .uz domains have been resolved by reference to trademark rights. If an individual
registers, say, <brand.uz> without having a legitimate interest or right, the brand owner can file
a complaint with UZ domain authorities or potentially in court to claim the domain.
Uzbekistan’s ccTLD (.uz) domain dispute policy is less developed publicly, so often companies
resort to UDRP if the domain in question is generic (like .com or .org). The

WIPO Arbitration

and Mediation Center

has handled cases involving Uzbek parties or trademarks,

demonstrating the cross-border nature of the problem. Given the statistics that

WIPO

cybersquatting cases have topped 6,000 per year globally

, the legal community in

Uzbekistan is aware of the need to police online abuses, and capacity-building is underway to
better integrate domain enforcement with trademark protection.



Digital Assets and NFTs:

The Hermès

MetaBirkin

case mentioned earlier is a bellwether for

how courts might approach NFTs. In that case, the jury verdict (upheld by the judge) made clear
that creating digital collectibles that trade off another’s trademark can infringe and dilute the
mark. The defense argued for artistic expression, but the court found it was a pretext for
commercial exploitation of the

Birkin

trademark. This outcome suggests that, at least in

jurisdictions like the U.S., trademark law has sufficient reach to cover virtual goods if consumers
are likely to be misled. In the Uzbek context, while no known NFT-related trademark cases have
arisen yet, the principles in existing law (confusion, use in commerce, etc.) would similarly
apply: if someone in Uzbekistan created an NFT using, for example, the

Uzbektelekom

logo

without permission and sold it, the trademark owner could claim infringement on grounds that

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buyers might be misled into thinking the NFT is associated with or authorized by the owner.
Enforcement might involve a civil lawsuit and injunctive relief, though practical enforcement
(identifying the infringer, jurisdiction issues if global, etc.) remains a challenge. International
cooperation and perhaps new legislative guidance may be needed to tackle these cutting-edge
issues effectively.

Civil litigation remains the primary tool for most trademark owners. One advantage is the

availability of

monetary remedies

– damages or an account of profits – which can compensate

losses and deter infringers. The

Oliv’ez

case in Uzbekistan set a precedent by awarding

substantial

lost profit damages (US $200,000)

to the foreign trademark owner. This is

notable because quantifying damages in IP cases is often difficult; Uzbek courts showed
willingness to infer profits and penalize non-cooperation by defendants. In many cases,
however, brand owners may choose remedies like

statutory damages

(available in some

jurisdictions for counterfeiting) or may settle for injunction plus destruction to quickly stop the
infringement, especially if the infringer’s profits are hard to collect. Courts also routinely issue

permanent injunctions

once infringement is proven, as seen in Hermès’ case where a

permanent injunction was granted to stop NFT sales. In Uzbekistan, injunctions are available
under civil procedure – a trademark owner can request a preliminary injunction to halt
infringing acts during the trial (though the plaintiff must show strong evidence and potentially
post a bond).

Administrative enforcement (customs seizures and fines) is increasingly significant. The

Uzbek Customs Code

provides procedures for suspending clearance of suspected counterfeit

goods at the border, and customs works from a list of protected marks recorded in their
database. Cooperation between IP owners and customs is vital: rights holders often need to
provide training and information to customs officers on how to identify fakes. The 2022
introduction of direct fines for IP infringement in Uzbekistan means that, for less complex cases
(like a store caught selling counterfeit apparel), authorities can impose penalties without
requiring the trademark owner to initiate a court case. This is efficient and can serve as a
deterrent at the local market level, complementing the civil suits against manufacturers or
major distributors.

Criminal enforcement is typically handled by law enforcement agencies (police and

prosecutors) and is reserved for clear-cut counterfeit operations. For example, if a warehouse
in Tashkent is found mass-producing fake

Nike

shoes, criminal charges could be brought under

laws analogous to “production of goods with illegal use of a trademark.” TRIPS Article 61,
quoted earlier, sets the baseline that imprisonment or fines should be available for willful
counterfeiting. Uzbekistan’s compliance with this is evidenced by the existence of provisions
like Article 189 of the Criminal Code, which can lead to criminal liability for those dealing in
counterfeit goods above certain scales. The

deterrent effect

of criminal sanctions is significant:

the prospect of prison or heavy fines can dissuade potential counterfeiters more strongly than
civil judgments. However, criminal cases require significant evidence gathering and proof
beyond a reasonable doubt. In many countries, including Uzbekistan, brand owners often file a
complaint that triggers a police investigation; successful raids then yield evidence for
prosecution. Internationally, joint enforcement operations (e.g., coordinated by Interpol or
with neighboring countries’ customs) are increasingly common, acknowledging that
counterfeit networks are transnational.

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A comparison of Uzbekistan’s approach with international frameworks reveals more

commonalities than differences, thanks to treaty harmonization. Uzbekistan’s membership in
the

Paris Convention

since 1991 means it adheres to principles of national treatment for

foreign IP owners and priority rights for applications (the six-month convention priority for
trademarks). It also protects

service marks

and collective marks similarly to goods

trademarks, reflecting modern practice. Through the

Madrid Protocol

, Uzbekistan enables

trademark owners to secure protection in multiple countries via a single international
application – a boon for local businesses looking abroad and for foreign investors entering
Uzbekistan. The

Trademark Law Treaty (TLT)

and the more recent

Singapore Treaty

influence its administrative procedures – simplifying formalities and accepting newer forms of
marks. Though not yet a WTO member, Uzbekistan has been updating its IP laws to align with

TRIPS standards

. As noted, the 2021 amendments were explicitly a step toward TRIPS

compliance (e.g., clarifying rights from registration, which corresponds to TRIPS Art. 15’s
concept of acquisition of rights). Enforcement-wise, TRIPS Part III (Articles 41–61) serves as a
template for Uzbekistan: the availability of civil remedies (injunctions, damages), evidentiary
control measures, border measures, and criminal penalties are increasingly mirrored in
national law.

One area of divergence in national approaches can be

administrative vs judicial

enforcement emphasis

. Some countries, like China or Russia, historically relied more on

administrative IP enforcement (e.g., raids and seizures by administrative agencies), whereas
others like the U.S. lean on private civil suits. Uzbekistan’s system is somewhat hybrid – it has
active agencies (customs, the Competition Authority, etc.) but is also strengthening judicial
avenues. As of 2023, Uzbekistan’s government has even empowered the Ministry of Justice with
more autonomous authority to enforce IP rights, aiming for quicker responses to infringement
cases. This suggests a proactive stance, aligning with global trends of dedicating more resources
to IP enforcement.

As trademarks enter the metaverse and commerce moves online, even international

treaties are starting to grapple with these issues. There is currently no specific multinational
treaty on trademarks in digital environments, but existing norms are being interpreted
dynamically. For example, the concept of “use in commerce” – typically a sale or distribution of
goods under the mark – is being expanded to cover online display and offering for sale.
Jurisdictions are debating whether mere

tokenization

of a trademark (as in an NFT) counts as

trademark use. The

MetaBirkin

case set one precedent that it does, at least where the token is

tied to a digital image of a trademarked product. We can expect more guidelines to emerge,
possibly through soft law or new WIPO recommendations, on handling such scenarios.

Cybersquatting

, in contrast, has been addressed via the UDRP since 1999; while effective, it is

a policy rather than a treaty obligation, but one widely accepted.

Another digital challenge is

platform liability

: holding e-commerce platforms

accountable for counterfeit goods sold by third parties. The EU’s E-commerce Directive and
Digital Services Act, for instance, are creating frameworks that push platforms to be more
diligent. Though this goes slightly beyond trademark law into intermediary liability, it’s
relevant because platforms are often the most efficient point of enforcement. Uzbekistan may
also need to consider legislation or regulations that incentivize local online marketplaces to
police trademark infringements in listings.

28

Finally,

public awareness and cooperation

are practical facets of the challenge.

Trademark owners, consumers, and enforcement agencies all have roles. In Uzbekistan, efforts
to educate businesses (e.g., not to inadvertently stock counterfeits) and consumers (to spot and
avoid fakes) contribute to reducing illegitimate use. International cooperation – through
INTERPOL, WIPO, and WTO forums – supports national efforts by sharing intelligence and best
practices.

For lawyers and legal experts, the evolving landscape means staying current on both

substantive law

(new definitions, case law on NFTs, etc.) and

procedural tactics

(like using

customs recordation, UDRP filings, or seeking cross-border injunctions). Practitioners in
Uzbekistan must be versed in national statutes and also able to leverage international
mechanisms (for example, advising a client to secure a Madrid international registration, or to
use foreign court judgments when local defendants have overseas connections). The interplay
of civil, administrative, and criminal options requires strategic decision-making: e.g., when to
push for criminal charges (to pressure a counterfeiter) versus when a civil suit for damages is
sufficient, or how to coordinate both in parallel. The

Oliv’ez

case serves as a precedent

domestically that civil litigation can yield concrete results, but it also teaches that careful
evidence collection and perhaps pursuing multiple angles (civil and criminal) may be necessary
for full relief.

Conclusion

Trademarks sit at the intersection of law and commerce, balancing the

rights of owners

to reap the rewards of their brand’s reputation against the

interests of the public

in fair

competition and truthful information. The examination of legitimate and illegitimate uses of
trademarks in Uzbekistan, contrasted with international frameworks, confirms that a strong
legal foundation is in place. Uzbekistan’s laws – reinforced by international treaties – define
trademarks broadly, grant exclusive rights upon registration, and provide tools to combat
misuse through various enforcement channels. The country’s recent legal reforms demonstrate
a commitment to aligning with global standards and adapting to new challenges, which is
crucial as the nature of trademark infringement evolves.

Yet, the

practical challenges

cannot be underestimated. Illegitimate uses like

counterfeiting and cybersquatting continue to grow in scale despite the legal prohibitions,
largely due to economic incentives and the borderless nature of modern trade. The digital era
has blurred the lines of what constitutes “use” of a trademark, requiring courts and legislators
to continuously interpret laws in context – from domain names to NFTs and beyond. Legal
professionals must therefore approach trademark protection holistically: securing
registrations in relevant jurisdictions, monitoring for infringements both offline and online, and
employing the full range of remedies available.

International cooperation emerges as a key theme: trademarks are territorial, but

infringement is often transnational. Participation in systems like the Madrid Protocol simplifies
the protection of marks abroad, while enforcement cooperation (through information-sharing
and aligned legal standards via TRIPS and other agreements) enhances the capability to tackle
illegitimate use. Uzbekistan’s focus on joining the WTO and adhering to TRIPS will further
integrate it into the global IP enforcement network, benefiting domestic rightsholders and
foreign investors alike.

In conclusion, the line between legitimate and illegitimate trademark use is clearly drawn

29

in law –

authorization and non-confusion are the touchstones

– but ensuring that this line

is respected in practice requires vigilance and adaptability. By strengthening legal frameworks,
learning from comparative experiences, and embracing new enforcement strategies,
jurisdictions like Uzbekistan can better protect trademarks as engines of innovation and trust
in the marketplace. The ongoing dialogue between national practices and international norms
will shape the future of trademark law, ensuring it remains effective in safeguarding the
integrity of brands amid the incessant changes of the modern world.

References:

Используемая литература:

Foydalanilgan adabiyotlar:

1.

Aripov, D., & Ergasheva, Z. (2022, March 8).

Uzbekistan introduces monetary fines for IP

rights infringement

.

World Trademark Review

.

2.

Hermès International v. Rothschild, No. 22-cv-00384 (S.D.N.Y. 2023). (Reported in

Brittain, B. (2023, June 23).

Hermes wins permanent ban on 'MetaBirkin' NFT sales in US lawsuit

.

Reuters).
3.

Law of the Republic of Uzbekistan No. 267-II of August 30, 2001,

On Trademarks, Service

Marks and Appellations of Origin of Goods

(as amended up to Law No. LRU-908 of Feb. 15, 2024).

4.

OECD/EUIPO. (2025).

Mapping Global Trade in Fakes 2025: Global Trends and

Enforcement Challenges

–

Press Release

(7 May 2025).

5.

Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, last revised at

Stockholm, July 14, 1967, 21 UST 1583.
6.

Solijonova, U. (2021, Nov 5).

Uzbekistan Amends Trademark and Copyright Laws

.

PETOŠEVIĆ

via Lexology.

7.

TRIPS Agreement, Marrakesh Agreement Establishing the World Trade Organization,

Annex 1C, Apr. 15, 1994, Articles 15 & 61.
8.

WIPO Arbitration and Mediation Center

. (2024, Feb).

Record Number of Domain Name

Cases filed with WIPO in 2023

(WIPO Press Release).

9.

WIPO

. (n.d.).

What is Intellectual Property?

(Trademarks section). Retrieved from WIPO

website.
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YUS Patent & Law Firm. (2021, Sept).

Protection of trademark owner’s interests in a right

infringement case in Uzbekistan and lost profit recovery in the amount of 200,000 USD

.

YUS Legal

News

.