TRADEMARK PORTFOLIO STRATEGY IN UZBEKISTAN: A PRACTICAL GUIDE FOR INTERNATIONAL BUSINESSES

1. Introduction

The collection of registered trademarks constitutes an integral part of brand identity. It supports the consistent promotion of products and services, helping create strong, lasting associations in the minds of consumers. Securing trademark protection is therefore essential not only to maintain legal exclusivity, but also to preserve consumer trust and protect the brand’s market reputation.

As commercial activity continues to expand in actively developing markets such as Uzbekistan, building a strong protection for brand identity becomes a necessity for maintaining competitive market positioning. One of the ways of building such a protection is by structuring a comprehensive trademark portfolio.

In this article, we explore the key stages and practical considerations involved in developing a trademark portfolio in Uzbekistan.

2. Understanding the Trademark Portfolio

The concept of trademark portfolio extends beyond a mere collection of trademarks. It reflects a deliberate, long-term strategy for managing the legal and commercial dimensions of brand protection. This includes identifying valuable brand assets, securing registrations across relevant classes and jurisdictions, monitoring use, and enforcing rights where necessary.

Trademark registration by itself is often presumed to alone grant exclusive rights and solid protection under the law, while it only serves a basis for enforcement. A well-devised portfolio strategy allows businesses to maximize the utility of their trademarks, avoid costly disputes, and create avenues for licensing, franchising, and market expansion.

3. Trademark Registration in Uzbekistan

Uzbekistan’s trademark environment has evolved in recent years, signifying a deliberate shift towards modernization and accessibility in intellectual property services. Since 2019, all applications have been filed and published online through a Unified Portal of Interactive Public Services.[1]

Notably, the trademark registration process has been further formalized through the Administrative Regulation on the Provision of State Services for the Registration of Trademarks and Service Marks.[2]

These changes have improved procedural transparency and legal certainty for applicants, especially foreign businesses.

• Risk Identification

Before filing a trademark application in Uzbekistan, it is highly advisable to conduct a comprehensive trademark search to assess potential conflicts with existing registrations or applications. As a best practice, a full and comprehensive trademark clearance search should be conducted prior to filing by a professional trademark attorney. The search generally includes:

• Identification of visually, phonetically or semantically similar marks in the same classes;
• Review of unregistered but well-known marks (where relevant);
• Analysis of whether potential objections may arise during examination.

We recommend that businesses adopt a forward-looking filing strategy that takes into account their anticipated growth and market expansion. In this context, conducting a preliminary clearance search becomes particularly important, as its outcome directly influences the filing approach. Having a reasonable degree of confidence that a trademark is likely to proceed to registration enables more strategic and timely commercial decision-making.

• Trademark Types

Under Uzbek legislation, trademark protection is available for two primary types of marks: individual and collective.[3] An individual trademark is registered in the name of a single rightsholder, either a legal entity or individual. A collective trademark, by contrast, is intended for use by multiple entities belonging to an association or other form of union.

Uzbek law does not place strict restrictions on the form a trademark may take.[4] In accordance with legislative provisions, protection may be granted to a broad range of designations. These include word marks, figurative marks, combined marks, and three-dimensional marks, as well as non-traditional trademarks such as sound marks, motion marks, light marks, holograms, and even olfactory (scent) marks.[5]

Selecting the appropriate type of trademark is a critical step in defining the scope and strength of protection. When configuring trademark protection Applicants should weigh the scope of protection offered by each trademark form against practical considerations, including business needs, enforcement priorities, anticipated expansion and budget constraints.

• National vs International Filing Routes

Trademark registration in Uzbekistan may be secured through two primary routes: the national filing system and the international registration under the Madrid System.

National trademark registration

The registration of trademarks at the national level is carried out by the State Institution “Intellectual Property Center” under the Ministry of Justice of the Republic of Uzbekistan.[6] The application undergoes formal and substantive examination.[7] On average, the examination of a designation takes between 7 to 9 months. Once examined and approved, the trademark is registered for a period of ten years with a possibility of renewal in ten-year increments.[8]

International trademark registration

Being a party to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, Uzbekistan offers a route of international registration. Applicants with a basic application or registration in any member state may file a single international application via the World Intellectual Property Organization (WIPO), designating Uzbekistan among other jurisdictions.[9]

It is important to note that an applicant may benefit from the priority date of the original filing when submitting an international trademark application, provided that the international application is filed within six months of the initial national or regional filing.[10]

This centralized system is especially favorable for businesses seeking protection in multiple countries. It may be cost-effective not only in terms of pricing but also by avoiding the additional expenses of engaging a patent attorney in each jurisdiction.

• Strategic Class Selection

Filing strategies must account for existing brand fields and planned developments. For example, product extensions, rebranding, and market segmentation often require advance filings to secure new variants or sub-brands under the same umbrella.

Therefore, in practice, businesses often choose to file trademark applications in classes they plan to use in the near future. In some cases, they may even register entire trademarks in advance of actual use to secure protection ahead of market entry.

While this forward-looking approach can secure protection in advance, it also carries a risk: under Uzbek law, trademarks become vulnerable to cancellation for non-use if they are not used continuously for three years following registration.[11]

Accordingly, anticipatory filings should be approached strategically. Businesses must balance the benefits of early protection against the need to maintain active use or develop clear plans for use within the applicable timeframe. Inappropriate or overly broad filings may lead not only to cancellation but also to unnecessary registration costs and administrative burdens.

4. First-to-file or first-to-use?

Generally, Uzbek legislation does not expressly codify either the first-to-file or first-to-use principle. However, it is our expert opinion based on the wording of relevant legislative provisions [12], the prevailing interpretation is that Uzbekistan operates under a first-to-file system. This means that priority is granted to the party who first files the application, regardless of prior commercial use.

Nonetheless, enforcement bodies such as the Antimonopoly Committee, have, in certain instances, taken prior use into consideration, particularly, in disputes involving unfair competition or deceptive practices.

5. Legal Implications of a Weak Trademark Portfolio

While structuring a trademark portfolio is not a mandatory legal requirement, failing to adopt a strategic approach may expose a business to significant legal and commercial vulnerabilities.

Increased risk of infringement

Failure to secure key trademarks on time increases the likelihood that competitors or unrelated third parties may register identical or confusingly similar marks. Such conflicts create serious barriers to market entry, dilute brand identity, and trigger protracted and costly legal disputes.

Loss of enforcement opportunities

A poorly maintained trademark portfolio may restrict the practical ability to exploit the commercial value of registered rights. Trademarks that are not adequately protected are significantly more exposed to infringement, counterfeiting, and unlawful appropriation by third parties.

Only the owner of a validly registered trademark is entitled to initiate legal action against infringing parties under Uzbek law.[13] Unregistered marks, or those with expired or revoked registrations, do not afford the same enforceable rights and may severely limit a brand owner’s ability to protect their assets through administrative or judicial channels.

Loss of exclusive rights

In Uzbekistan, trademark registrations become vulnerable to cancellation if the mark has not been used continuously for a period of three years.[14] An inactive trademark portfolio may lead to revocation actions initiated by competitors or interested parties. Thus, without regular monitoring and commercial use of registered marks, businesses risk losing formal protection.

6. Monitoring and Enforcement Mechanisms

Trademark protection does not end at registration. To effectively protect your trademark against unfair competitors, we would advise conducting continuous monitoring and enforcement to maintain the integrity and exclusivity of the brand.

Watch Services and Opposition

By monitoring the official Uzbek trademark bulletin, rights holders can identify newly published applications that are identical or confusingly similar to their registered marks. If such an application is detected, a formal opposition may be filed during the publication stage. Timely opposition prevents the registration of infringing marks before they enter the market, saving time, cost, and legal complexity associated with post-registration disputes.

Customs Recordal

To reinforce protection against counterfeit imports, trademark owners may record their registered marks in the Customs Register maintained by the State Customs Committee of Uzbekistan.

Under Uzbek law, customs authorities possess “ex officio” powers, allowing them to independently suspend the release of goods that exhibit signs of trademark or other IP infringement. When a trademark is recorded and a suspected infringement arises, the customs authority is obliged to notify the rights holder within one business day, enabling the proprietor to take prompt legal action if necessary.[15] In the absence of any response, the authorities may act accordingly even without a prior request from the rights holder.[16]

Customs enforcement is particularly effective in industries that are highly susceptible to counterfeiting, such as apparel, electronics, pharmaceuticals, cosmetics, and consumer goods.

Renewals and Portfolio Maintenance

Trademark registrations in Uzbekistan remain valid for 10 years and may be renewed for subsequent 10-year periods. To maintain effective protection, businesses are suggested to implement a structured renewal and maintenance process, which includes:

• Monitoring upcoming expiration dates and ensuring timely extensions;
• Keeping records of actual use to comply with the three-year non-use rule to avoid vulnerability to cancellation;
• Updating key information, such as ownership details, registered addresses, and licensing arrangements, across the portfolio;
• Periodically reviewing the trademark portfolio to identify obsolete registrations or potential gaps that may require strategic action.

7. Conclusion

For international businesses in Uzbekistan, a thoughtfully constructed trademark portfolio operates not only as a shield against legal risk, but also strengthens market position, supports brand development, and enhances commercial opportunities. By integrating early-stage filing strategies with vigilant enforcement and long-term maintenance, companies can transform their trademark portfolios into resilient legal assets that support reputation, generate value, and underpin sustained market presence.

[1] Law of the Republic of Uzbekistan “On Trademarks, Service Marks and Appellations of Origin” No. 267-II of 30 August 2001, Art. 8 (1).

[2] Administrative Regulation on the Provision of State Services for the Registration of Trademarks and Service Marks, approved by Resolution No. 480 of the Cabinet of Ministers of the Republic of Uzbekistan, 19 September 2023.

[3] Law of the Republic of Uzbekistan “On Trademarks, Service Marks and Appellations of Origin” No. 267-II of 30 August 2001, Art. 3 (3) (4).

[4] Ibid, Art. 3 (5).

[5] Administrative Regulation on the Provision of State Services for the Registration of Trademarks and Service Marks, approved by Resolution No. 480 of the Cabinet of Ministers of the Republic of Uzbekistan, 19 September 2023, para. 6.

[6] Law of the Republic of Uzbekistan “On Trademarks, Service Marks and Appellations of Origin” No. 267-II of 30 August 2001, Art. 7 (3).

[7] Ibid, Art. 13 (1).

[8] Ibid, Art. 21, 22 (1).

[9] Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (as amended on November 12, 2007), Art. 2.

[10] Ibid, Art. 4 (2).

[11] Law of the Republic of Uzbekistan “On Trademarks, Service Marks and Appellations of Origin” No. 267-II of 30 August 2001, Art. 25 (1)(4).

[12] Civil Code of the Republic of Uzbekistan, Part Two, adopted on 1 March 1997, Art. 1032 (1), 1002 (1).

[13] Law of the Republic of Uzbekistan “On Trademarks, Service Marks and Appellations of Origin” No. 267-II of 30 August 2001, Art. 26.

[14] Ibid, Art. 25 (1)(4).

[15] Law of the Republic of Uzbekistan “On Amendments and Additions to the Customs Code of the Republic of Uzbekistan Aimed at Further Improvement of Customs Procedures” No. ЗРУ-913 of 27 February 2024, Art. 382¹ (1).

[16] Ibid, Art. 382² (1).

Authors:

– Jamshid Agzamkhadjaev (Managing Partner, Settle Law Firm)

– Saida Junaydullaeva (Paralegal, Settle Law Firm)