Uzbekistan Introduces Criteria for Determining Well-Known Trademarks, Transfers IPO Appeal Board to Ministry of Justice

A resolution introducing the criteria for determining whether a trademark is well known entered into force in Uzbekistan on July 2, 2019.

While the Uzbek trademark law implies that, in order to be recognized as well known, a trademark must be widely known among consumers in Uzbekistan as a result of its extensive use, until now there were no specific guidelines for establishing the well-known status.

According to the resolution, a well-known trademark must be recognized in relation to the goods/services for which it is registered by the relevant public sectors including:

• Actual and/or potential consumers in Uzbekistan; or
• Persons involved in the distribution of the goods/services bearing the trademark; or
• Business circles dealing with the type of goods/services to which the trademark applies.

Furthermore, in order to be recognized as well known:

• The relevant sectors of the public must be able to recognize a certain quality of goods or services in connection with the trademark;
• The trademark must have high inherent distinctiveness, or acquired distinctiveness resulting from its extensive use in Uzbekistan, including the use in domain names in the Uzbek country code top-level domain (ccTLD); and
• The trademark must have commercial value resulting from its continuous and extensive use.

Under the resolution, the Board of Appeal (BoA) of the Uzbek Intellectual Property Office (IPO) has been brought under the jurisdiction of the Ministry of Justice. The Minister of Justice is now the Chairman of the BoA. This measure was likely introduced to minimize the IPO’s influence on BoA’s rulings, and to ensure a more impartial review of appeals and observations.

By: Djakhangir Aripov

For more information, please contact Djakhangir Aripov at our Uzbekistan office.