On geographical indications (LRU-757-son)

03.03.2022

Law of the Republic of Uzbekistan

Adopted by the Legislative Chamber on December 21, 2021 Approved by the Senate on February 3, 2022

Chapter 1. General Provisions

Article 1. Purpose and scope of this Law

The purpose of this Law is to regulate relations in the field of legal protection and use of geographical indications.

This Law shall not apply to relations in the field of legal protection and use of appellations of origin.

Article 2. Legislation on geographical indications

The legislation on geographical indications consists of this Law and other legislative acts.

If an international treaty of the Republic of Uzbekistan establishes other rules than those provided for by the legislation of the Republic of Uzbekistan on geographical indications, then the rules of the international treaty shall apply.

Article 3. The concept of a geographical indication

A geographical indication is a designation that identifies a product as originating from the territory of a certain geographical area, where the quality, reputation or other characteristics of the product (hereinafter referred to as the characteristics of the product) largely depend on its geographical origin. At least one of the stages of the production of goods, which has a significant impact on the formation of the characteristics of the goods, must be carried out in the territory of the given geographical object.

Article 4. Legal protection of geographical indications

Legal protection of geographical indications is provided on the basis of its registration in accordance with the procedure established by this Law, as well as by virtue of international treaties of the Republic of Uzbekistan.

Foreign geographical indications are protected in the territory of the Republic of Uzbekistan only if the corresponding designation has been granted protection in the country of its origin.

Article 5. The right to use a geographical indication

A person who has registered a geographical indication is entitled to use it if that person produces a product whose certain quality, reputation or other characteristics largely depend on its geographical origin.

The right to use a geographical indication registered in accordance with the procedure established by this Law may also be granted to another legal or natural person located in the same geographical area and producing goods with the same characteristics.

Article 6. Authorized state body in the field of legal protection of geographical indications

The Ministry of Justice of the Republic of Uzbekistan (hereinafter referred to as the Ministry) is the authorized state body in the field of legal protection of geographical indications.

Ministry:

participates in the formation and implementation of a unified state policy in the field of legal protection and use of geographical indications;

to accept for consideration applications for the registration of geographical indications and the right to use a geographical indication, and to organize the conduct of state examination thereof;

registers geographical indications and the right to use a geographical indication;

maintains the State Register of Geographical Indications (hereinafter referred to as the Register);

issues certificates of the right to use a geographical indication;

publishes official information on the registration of the geographical indication and the granting of the right to use the geographical indication;

exercises other powers in accordance with the law.

The State Institution "Center for Intellectual Property" under the Ministry of Justice of the Republic of Uzbekistan (hereinafter referred to as the State Institution) to consider applications for the registration of geographical indications and the right to use a geographical indication, and to conduct state examination thereof.

Chapter 2. Registration of a geographical indication

Article 7. Conditions for the registration of a geographical indication

A geographical indication may be registered at the request of several legal or natural persons (in exceptional cases one person, if there are no others, or they do not express a desire to participate in the filing of the application), located in this geographical object whose name is used to designate the goods they produce.

An application for the registration of a geographical indication may also be submitted:

by a non-governmental non-profit organization established in the form of an association authorized to represent the interests of legal and (or) natural persons referred to in part one of this article (hereinafter referred to as the association);

by local executive authority in whose territory the corresponding geographical object is located.

Article 8. Filing an application for the registration of a geographical indication or the right to use a geographical indication

An application for registration of a geographical indication or the right to use a geographical indication (hereinafter referred to as the application) is submitted by a legal or natural person (hereinafter referred to as the applicant) directly or by his patent attorney or authorized person through state information systems.

The filing date of an application to be determined by the date of receipt of the application by the Ministry.

Upon the filing of an application, the Ministry to post information regarding the application on its official website within one working day from the date of receipt of the application.

Article 9. Conversion of an application for an appellation of origin and a registered appellation of origin into a geographical indication

The applicant has the right to convert an application for an appellation of origin into an application for a geographical indication before a decision is made on the results of the examination.

A registered appellation of origin may be converted into a geographical indication at the request of the holder(s) of the certificate of the right to use the appellation of origin.

Conducting cases in connection with the transformation of an appellation of origin into a geographical indication may be carried out by the holder (s) of the certificate of the right to use the appellation of origin independently, through a patent attorney or through an authorized person.

Article 10. Representation through patent attorneys

Individuals permanently residing outside the Republic of Uzbekistan and foreign legal entities to conduct affairs related to the registration of geographical indications and the issuance of a certificate for the right to use a geographical indication, as well as other legally significant actions associated therewith, through patent attorneys registered with the Ministry.

The powers of a patent attorney shall be certified by a power of attorney.

Individuals permanently residing in the Republic of Uzbekistan, but temporarily staying outside it, can conduct the registration of geographical indications and the issuance of a certificate of the right to use a geographical indication and other legally significant actions relating thereto, without a patent attorney when indicating the address for correspondence within the Republic of Uzbekistan.

Article 11. Requirements for the application

The application must relate to one geographical indication.

The application must contain:

application for registration of a geographical indication or the right to use a geographical indication;

the applied designation or geographical indication, if registered in the register;

the name of the type of goods for which the registration of a geographical indication or the right to use a geographical indication is requested;

the indication of the place of production of the goods within the boundaries of a geographical object;

information concerning the dependence of the characteristics of the goods on the place of its production;

description of the characteristics of the goods, largely due to its geographical origin, natural conditions and (or) human factors specific to the geographical object, including the source material used for the production of the goods, physical, chemical, microbiological, organoleptic or artistic characteristics of the goods;

the names and locations (postal addresses) of the competent inspection bodies and laboratories, confirming compliance with the declared provisions and specific characteristics of the goods, if this is provided for in the administrative regulation on the provision of public services for the registration of geographical indications, approved by the Cabinet of Ministers of the Republic of Uzbekistan (hereinafter referred to as the administrative regulation).

When filing an application, a patent fee to be paid and the following to be attached to the application:

a document confirming the payment of the patent filing fee;

a power of attorney issued by the applicant, if the application is filed through a patent attorney or authorized representative;

documents confirming that the applicant is located in the designated geographical object and produces goods, the characteristics of which are substantially related to this geographical object, if the applicant is a person producing goods in the territory of the Republic of Uzbekistan;

a document confirming the right to use the declared geographical indication in the country where the geographical object is located, if the applicant is a person producing goods outside the Republic of Uzbekistan.

When applying for the registration of a geographical indication by an association, documents are attached confirming that the persons belonging to this association produce goods with the relevant characteristics.

An application for registration of the right to use a previously registered geographical indication shall be accompanied by documents confirming that the applicant produces a product that has the characteristics specified in the register.

The requirements for the documents required for the application are set out in the administrative regulations.

Article 12. Designations not to be registered as geographical indications

Following designations are not subject to registration as a geographical indication:

a geographical object within the boundaries of which the goods were originally produced or introduced into civil circulation, and entered into general use in the Republic of Uzbekistan as a designation of a particular type of goods, not associated with the place of its production;

registered as a geographical indication or an appellation of origin in respect of a product of the same type;

identical or similar to a trademark or service mark that has an earlier priority, if the use of such a geographical indication is likely to mislead the consumer about the product or its manufacturer;

representing the name of a plant variety or animal breed, if the use of such a geographical indication is likely to mislead the consumer regarding the product;

capable of misleading the consumer about the product or its manufacturer;

applied for registration as a geographical indication in respect of a product that does not meet the requirements provided for in Article 11 of this Law.

Article 13. State examination of the application

The state examination of the application to be carried out by the State Institution and to include formal examination and examination of the designation contained in the application.

During the period of the state examination of the application before taking a decision thereon, the applicant shall have the right on his own initiative, to correct, clarify or supplement the application materials with information that does not change the substance of the application.

The State Institution to be entitled to request such materials from the applicant if, in the course of the state examination, it is impossible to conduct the examination without additional materials.

Additional materials at the request of the state examination shall be submitted within three months from the date of sending the request to the applicant. At the request of the applicant, this period may be extended by no more than six months. If the applicant does not submit the requested additional materials or a request for an extension of the deadline for their submission within the specified period, the application shall be deemed withdrawn.

Time limits missed by the applicant may be restored by the State Institution upon a petition filed by the applicant not later than two months from the expiration of the said time limits.

The procedure for the state examination of an application is determined by the administrative regulations.

Article 14. Formal examination of the application

The formal examination of the application to be carried out within fifteen days from the date of filing of the application with the Ministry.

During the formal examination, the content of the application, the availability of the required documents, as well as their compliance with the established requirements are checked.

The applicant to be notified of the decision of the State Institution to accept the application for consideration or to refuse it based on the results of the formal examination.

Article 15. Examination of the applied designation

The examination of the designation contained in the application to be carried out by the State Institution within one month from the adoption of the decision to accept the application for consideration, in accordance with the said decision.

During the examination of the declared designation, the compliance of the declared designation with the provisions of Articles 4 , 5 , 7 and 11 of this Law is checked.

A decision of the State Institution to register the geographical indication or the right to use a geographical indication, or to refuse the registration thereof, to be adopted based on the results of the examination of the designation contained in the application, and the applicant to be notified thereof.

Article 16. Appeal against the results of the state examination

The applicant has the right to appeal the results of the state examination to the Appeal Board of the Ministry of Justice of the Republic of Uzbekistan (hereinafter referred to as the Appeal Board) within three months from the date of the decision.

The procedure for filing an appeal with the Appeal Board against the results of the state examination to be determined by the Ministry.

The applicant has the right to appeal the decision of the Board of Appeal to the court within six months from the date of the decision.

Article 17. Assignment or withdrawal of an application

An application at any stage of its consideration may be assigned or withdrawn by the applicant, but no later than the date of registration of the geographical indication or the right to use the geographical indication.

Article 18. Registration of a geographical indication or the right to use a geographical indication

The Ministry to automatically carry out the registration of the geographical indication or the right to use a geographical indication in the register based on the results of the state examination, upon payment of the patent fee.

The composition of the information entered in the register is established by the administrative regulations.

Article 19. Publication of information on the registration of a geographical indication or the right to use a geographical indication

Information concerning the registration of a geographical indication or the right to use a geographical indication, including information on the characteristics of the goods, to be published in the official bulletin of the Ministry, which is also posted on its official website. The composition of the information to be published to be determined by the Ministry.

Article 20. Certificate of the right to use a geographical indication

The certificate of the right to use a geographical indication (hereinafter referred to as the certificate) certifies the right of the holder of the certificate to use it in relation to the type of goods indicated in the certificate.

The certificate to be issued automatically by the Ministry in electronic form, bearing a unique QR-code (matrix barcode), upon the registration of the right to use a geographical indication in the register. The form of the certificate and the composition of the information to be specified therein to be determined by the Ministry.

Article 21. Duration of protection of a geographical indication and validity of a certificate

A geographical indication shall be protected for as long as it is possible to produce a product that meets the requirements of this Law.

The certificate is valid for ten years from the date of application.

Article 22. Renewal of the certificate

The period of validity of the certificate may be extended at the request of the holder, filed during the last year of its validity, each time for ten years.

When filing the application referred to in the first part of this Article, a patent fee to be paid and the following to be attached to the application:

a document confirming the payment of the patent fee;

a power of attorney issued by the applicant, if the application is submitted through a patent attorney or trusted person;

a document confirming that the person holding the right to use the geographical indication is located in this geographical area and produces goods with the characteristics specified in the register.

A record on the renewal of the certificate is made in the register within three days from the date of filing the application.

The deadline for filing an application specified in paragraph 1 of this article shall be extended at the request of the holder of the certificate, filed within six months after the expiration of the certificate.

Article 23. Amendment of the certificate

The holder of the certificate to notify the Ministry of a change in its name, surname, first name, or patronymic, as well as of other changes relating to the geographical indication.

A record of these changes to be entered in the certificate and the register by the Ministry.

Article 24. Recognition of the certificate as invalid

The certificate may be declared invalid during the entire period of its validity, if it was issued in violation of the requirements established by this Law.

The certificate shall be declared invalid on the basis of the decision of the Board of Appeal or the court.

Article 25. Cancellation of the registration of a geographical indication, termination of the certificate

The registration of a geographical indication is canceled on the basis of a decision of the Board of Appeal in connection with:

with the impossibility of producing goods with the characteristics specified in the register;

with the loss by foreign legal or natural persons of the right to this geographical indication in the country of origin of the goods.

The validity of the certificate is terminated due to the expiration of its validity.

The validity of the certificate is terminated early on the basis of:

an application submitted by the holder of the certificate to the Ministry;

decisions of the Board of Appeal in connection with the loss by the owner of the right to use a geographical indication;

court decisions.

Article 26. Use of a geographical indication

The holder of the certificate has the right to use the geographical indication in any manner not contrary to the law, including:

on goods, labels, packaging of goods that are produced, offered for sale, sold, demonstrated at exhibitions and fairs or otherwise introduced into civil circulation on the territory of the Republic of Uzbekistan, or stored or transported for this purpose, or imported into the territory of the Republic of Uzbekistan;

on letterheads, invoices, other documentation and printed publications related to the introduction of goods into civil circulation;

in offers for the sale of goods, as well as in advertisements, on signs and in advertising.

In the case of registration of a geographical indication by an association, the right to use such geographical indication is granted to each person who is a member of this association, provided that such geographical indication is used in relation to a product that has the characteristics indicated in the register.

Alienation, transactions on the assignment of the right to use a geographical indication and the granting of the right to use a geographical indication on the basis of a license agreement are not allowed.

The following is recognized as illegal use of a geographical indication:

the use of a registered geographical indication by unauthorised persons, even if the true place of production of the goods is indicated or the geographical indication is used in translation or in combination with such words as “kind”, “type”, “imitation” and the like;

the use of a registered geographical indication by persons entitled to use it in respect of a product that does not have the characteristics specified in the register, or is produced outside the boundaries of a geographical object;

the use of a designation similar to a registered geographical indication for any goods that is likely to mislead consumers about the place of production of the goods or the characteristics of the goods.

Goods, labels, packaging of goods on which a geographical indication or confusingly similar designations are illegally used are counterfeit.

Article 27. Warning marking

The holder of the certificate may affix a warning marking in the form of the Latin letters “GI” in a circle next to the geographical indication, indicating that the designation used on the product or packaging is a geographical indication registered in the Republic of Uzbekistan.

Article 28. Patent fees

Patent fees are charged for the legally significant actions related to the registration of geographical indications or the right to use a geographical indication.

The amount and terms of payment of patent fees, the grounds for exemption from their payment, reduction or refund of patent fees, as well as the procedure for using patent fees shall be established by law.

Article 29. Ensuring compliance of goods with established requirements

Holders of the certificate must ensure that the goods comply with the characteristics specified in the register.

The Ministry of Justice of the Republic of Uzbekistan and (or) the relevant ministry, agency, or other organization to exercise control over the preservation of the characteristics of the goods in respect of which a geographical indication is registered, including to issue a conclusion on the disappearance of conditions characteristic of the said geographical object and on the impossibility of producing goods possessing the characteristics specified in the register, in respect of which the geographical indication is registered.

Associations shall be entitled to exercise control over the observance of the characteristics of goods marked with a geographical indication and produced by persons belonging to this association. The state may support such associations in the manner prescribed by law.

Certification of goods marked with a geographical indication is carried out in the manner prescribed by law.

Article 30. Registration of a geographical indication in other states

Legal or natural persons of the Republic of Uzbekistan have the right to register a geographical indication in other states in accordance with the established procedure.

Article 31. Rights of foreign legal or natural persons

Foreign legal or natural persons enjoy the rights provided for by this Law, on an equal basis with legal or natural persons of the Republic of Uzbekistan or on the basis of the principle of reciprocity.

Chapter 3. Final Provisions

Article 32. Settlement of disputes

Disputes related to the legal protection and use of geographical indications are resolved according to the procedure established by law.

Article 33. Liability for violation of the legislation on geographical indications

Persons responsible for violating the legislation on geographical indications shall be held liable in accordance with the established procedure.

Article 34. Introduction of amendments and additions to some legislative acts of the Republic of Uzbekistan

1. Include in the Law of the Republic of Uzbekistan dated August 30, 2001 No. 267-II “On trademarks, service marks and names of place of origin of goods” (Bulletin of the Oliy Majlis of the Republic of Uzbekistan, 2001, No. 9-10, art. 178; 2002, No. 9, Art. 165; Bulletin of the Chambers of Oliy Majlis of the Republic of Uzbekistan, 2007, No. 9, art. 418; 2011, No. 12/2, art. 364; 2012, No. 12, Art. 336; 2017, No. 4, art. 137, no. 9, art. 510; 2020, No. 1, Art. 1, no. 10, art. 593, 2021, annex to No. 4, No. 8, Art. 801) the following amendments and additions:

1) Paragraph four of clause 13 of part one of Article 10 shall be stated as follows:

“with geographical indications and appellations of origin protected by law, except when they are included as an unprotected element in a trademark registered in the name of a person entitled to use such an indication or appellation in relation to any goods”;

2) Article 11 shall be supplemented with the fifth paragraph of the following content:

“registered as an appellation of origin or geographical indication in respect of a product of the same kind”.

2. Paragraph twelve of part one of Article 21 of the Law of the Republic of Uzbekistan dated December 3, 2004 No. 712-II “On the Chamber of Commerce and Industry of the Republic of Uzbekistan” (as amended by the Law of the Republic of Uzbekistan dated July 9, 2018 No. LRU-483) (Bulletin of the Chambers of Oliy Majlis of the Republic of Uzbekistan, 2018, No. 7, art. 428; 2019, No. 11, art. 791, no. 12, art. 891; 2020, No. 1, Art. one; 2021, Appendix to No. 4) after the words “service marks” add the words “geographical indications”.

3. Paragraph five of the second part of Article 4 of the Law of the Republic of Uzbekistan dated September 18, 2006 No. LRU-51 “On company names” (Bulletin of the Chambers of Oliy Majlis of the Republic of Uzbekistan, 2006, No. 9, art. 493; 2021, Appendix to No. 4) shall be amended as follows:

“with geographical indications and appellations of origins protected by law in accordance with the established procedure, except for cases of registration in the name of a person entitled to use such an indication or appellation”;

4. Include into the Law of the Republic of Uzbekistan dated January 6, 2020 No. LRU-600 “On the State Duty” (Bulletin of the Chambers of Oliy Majlis of the Republic of Uzbekistan, 2020, No. 1, art. 1, no. 3, art. 201, no. 5, art. 298, no. 10, art. 593, no. 12, art. 691; 2021, No. 1, Art. 13, annex to No. 4, No. 7, art. 661, No. 8, art . 800, 803, no. 10, art. 968) the following additions and changes:

1) Paragraph three of part two of Article 3 after the words “service marks” shall be supplemented with the words “geographical indications”;

2) Clause 9 of Article 5 after the words “service marks” shall be supplemented with the words “geographical indications”;

3) in Article 23 :

the first part after the words “service marks” shall be supplemented with the words “geographical indications”;

part seven after the words “service marks” shall be supplemented with the words “geographical indications”;

4) in the appendix :

a) in paragraph 12:

the name after the words “service marks” shall be supplemented with the words “geographical indications”;

the fifteenth paragraph of subparagraph “a” shall be stated as follows:

“filing an application for registration of a geographical indication and an appellation of origin, granting the right to use them, an application for granting the right to use an already registered geographical indication and an appellation of origin of goods and conducting a state examination”;

in subparagraph “b”:

Paragraph two shall be amended as follows:

“registration of a trademark, geographical indication and appellation of origin of goods, granting the right to use a geographical indication and appellation of origin of goods, entering a trademark in the List of well-known trademarks in the Republic of Uzbekistan”;

in the fifth paragraph, the words “appellations of origin” shall be replaced by the words “geographical indications and appellations of origins”;

in the sixteenth paragraph of subparagraph “c” the words “name of the place of origin of goods” shall be replaced by the words “geographical indication and name of the place of origin of goods”;

in subparagraph “e”:

in the second paragraph, the words “appellation of origin of goods” shall be replaced by the words “geographical indication and appellations of origin”;

the fifth paragraph after the words “on the right to use” shall be supplemented with the words “geographical indication and”;

in subparagraph “e”:

in the second paragraph, the words “appellations of origins” shall be replaced by the words “geographical indications and appellations of origin”;

in the fifth paragraph, the words “appellations of origin” shall be replaced by the words “geographical indications and appellations of origin”;

in the sixth paragraph, the words “appellations of origin” shall be replaced by the words “geographical indications and appellations of origin”;

in paragraph nine, the words “appellations of origin” shall be replaced by the words “geographical indications and appellations of origin”;

b) in paragraph 14:

in subparagraph “c”:

in the fifth paragraph, the words “name of the place of origin of goods” shall be replaced by the words “geographical indication and name of the place of origin of goods”;

in paragraph eight, the words “appellation of origin” shall be replaced by the words “geographical indication and appellation of origin”;

in the first paragraph of subparagraph “d” the words “appellation of origin” shall be replaced by the words “geographical indication and appellation of origin of goods”.

Article 35. Enforcement, communication, explanation of the essence and meaning of this Law

The Ministry of Justice of the Republic of Uzbekistan and organizations concerned shall ensure the implementation, communication to the executors and explanation among the population of the essence and significance of this Law.

The Ministry of Justice of the Republic of Uzbekistan and organizations concerned ensure the execution, the delivery to the executors and explanation among the population of the essence and significance of this Law.

Article 36. Harmonisation of the legislation with this Law

Cabinet of Ministers of the Republic of Uzbekistan shall:

bring government decisions in line with this Law;

ensure the revision and cancellation by the public administration authorities of their normative legal acts that contradict this Law.

Article 37. Entry into force of this Law

This Law shall enter into force on the day of its official publication.

President of the Republic of Uzbekistan Sh. Mirziyoyev

Tashkent,

March 3, 2022

No. LRU-757