On February 8, 2019, Republic of Uzbekistan President Shavkat Mirziyoyev signed the resolution “On Measures to Improve Public Administration in the Sphere of Intellectual Property.”

According to Ulugbek Abdullaev, counsel at Dentons in Tashkent, the IP environment in Uzbekistan has been steadily moving forward prior to the signing of this resolution. Trademark filings and registrations in particular had already been increasing.

“This progress is directly linked with the reforms initiated by the new administration in the country since the fall of 2016,” says Abdullaev. “IP awareness among businesses is also on the rise, but there remains a lot of work to do in terms of pushing the efficient enforceability of IP rights in the country.”

The signing of the resolution in February is part of this continuing work. According to Abdullaev, the promise of this initiative is beginning to materialize.

“We are already seeing the confirmation of some of our expectations as the ministry drives the reform of the IP sector. For example, from the IP management side, making information about trademark filings available on the internet improves transparency and allows IP owners to oppose bad faith filings on a timely basis.”

Pursuant to the resolution, the Patent Office of Uzbekistan has been transferred under the Ministry of Justice and renamed the Agency for Intellectual Property. The agency should publish trademark applications on its website within one working day.

Abdullaev approves of the move to transfer the patent body under the ministry.

“Transferring the patent office to the Ministry of Justice will enable Uzbekistan to revisit its IP laws and regulations with the help of experienced lawyers from the Ministry of Justice. It will also likely result in better integration of IP-related services with the Agency of Public Services which would expand the accessibility of services to the whole country. The Agency of Public Services has branches virtually in every district in the country, while the IP Agency is located only in the capital city, Tashkent,” he says.

Stakeholders in the country are also starting to see institutional reforms. “The IP Agency is now authorized to issue binding prescriptions to third persons to eliminate IP infringements.  Likewise, procedural reforms to the Appeal Council are bringing more legal certainty to the pre-court appeal process. Apart from the institutional framework, the criteria for recognizing trademarks as well-known have recently been clarified,” explains Abdullaev.

Other amendments include the following:

• The non-use period for trademarks has been shortened from five years to three years. Hence, full or partial termination of a trademark registration is possible per court decision involving non-use of said trademark for the last three years.
• Applications for trademark registration should now be filed electronically. This took effect on September 1, 2019.
• Development of a single database of IP objects by July 1, 2019. The database will enable online searches of IP titles including those which have expired and automatic inclusion of IP into the Customs Register as well as exclusion from it when required
• Removal of non-residents’ patent fees and individual fees to safeguard their trademarks and industrial designs. This will take effect on January 1, 2020.
• The conduct of an inventory of all registered trademarks in Uzbekistan starting on July 1, 2019, by the Ministry of Justice and the Department for Combating Economic Crimes. The objective is to spot unfair registrations of famous trademarks by third parties and take appropriate measures including cancellation of registration.

“The resolution is an excellent first step in reforming the IP environment in the country. It could pave the way for systemic and long-term reforms in the sector, and potentially solve some of the key longstanding issues affecting IP management and the investment climate,” says Abdullaev.

Espie Angelica A. de Leon.