LEGAL PROTECTION AND ENFORCEMENT OF IP IN UZBEKISTAN

 I. Intellectual property is an internationally inclusive area

Intellectual property is regulated by the same procedures, methods and forms all over the world on the basis of international treaty norms. In particular, the procedures for registering intellectual property objects and issuing protection certificates are the same in the US, EU countries and Uzbekistan.

The rules established in the domestic law of all countries concerning the legal protection of intellectual property objects are deemed to be consistent with the requirements of international treaties in the field of intellectual property.

Under international treaties, inventions, utility models, industrial designs, plant varieties and animal breeds, trademarks (service marks), geographical indications, appellations of origin, computer programs and databases are protected by national intellectual property offices, i.e. they are registered by the State and appropriate protection certificates are issued.

(In all countries, including Uzbekistan, objects of copyright and related rights are not subject to State registration and are protected by law and are enforced by the State from the moment of their creation.)

Under Uzbek law, a certificate of patent protection is issued for the state registration of an invention, utility model, industrial design or plant varieties and animal breeds.

Trademarks (service marks), geographical indications, appellations of origin of goods, programmes and databases are registered by the state and a protection certificate is issued.

 II. State management in the field of intellectual property

All over the world, legal protection of intellectual property objects is carried out by a single state body, while enforcement of registered intellectual property objects is carried out by several authorised bodies.

Legal protection of intellectual property objects in Uzbekistan until 2019 was carried out by the Intellectual Property Agency of the Republic of Uzbekistan (which is directly accountable to the Cabinet of Ministers).

(In accordance with Presidential Decree No. PD-1536 of 24 May 2011 “On the establishment of the Intellectual Property Agency of the Republic of Uzbekistan”, the Intellectual Property Agency of the Republic of Uzbekistan was created on the basis of the State Patent Office and the Republican Copyright Agency of Uzbekistan)

Pursuant to Presidential Decree No. PD-4168 of 2 February 2019 “On measures to improve state administration in the field of intellectual property”, the Intellectual Property Agency of Uzbekistan was transferred to the Ministry of Justice and reorganised as the Intellectual Property Agency under the Ministry of Justice (hereinafter, the Agency).

While the Intellectual Property Agency of the Republic of Uzbekistan was only responsible for state registration of intellectual property, the newly established Agency was entrusted with state registration of intellectual property as well as ensuring its legal enforcement. Accordingly, the Agency was granted the right to apply legal enforcement measures (filing a official requirements and precautionary letters, drawing up a protocols on administrative offences) to persons who have committed infringements in the field of intellectual property.

As the Agency has effectively carried out the new tasks assigned to it, the mandate and capacity of the Agency to provide legal protection of intellectual property objects has been expanded.

Notably, following Presidential Decree No. PD-4965 of 28 January 2021 “On measures to improve the intellectual property protection system” Intellectual Property Protection Department together with Intellectual Property Protection Centres were established within the Agency in the Republic of Karakalpakstan, regions and the city of Tashkent.

(The main task of the new department and regional centres is to protect intellectual property rights, combat counterfeit products, assist individuals and legal entities in state registration of intellectual property, and improve legal literacy in this area)

Under Presidential Resolution No. PR-89 of 17 March 2022, the Intellectual Property Agency and its regional centres were merged with the Ministry of Justice, with a transfer of their tasks, functions and mandate.

Intellectual Property Office within the Ministry of Justice was established and was authorized with the mandate to register IP objects as well as to enforce thereof.

Apart from that “Intellectual Property Centre” State Institution was founded under the Ministry of Justice to carry out examination of applications for registration purposes, and to serve a centralized storage of relevant data.

III. Achievements in the field of intellectual property

A number of positive results have been achieved in the field of intellectual property as a result of systematic reforms aimed at improving state management and directly developing the field.

In particular:

– Uzbekistan became a member of 4 international agreements on the protection of copyright and related rights;

Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms (Geneva, October 29, 1971), The WIPO Performances and Phonograms Treaty (Geneva, December 20, 1996), The WIPO Copyright Treaty (Geneva, December 20, 1996) and Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled (Marrakesh, June 27, 2013) is one of them.

– for the first time, more than 200 regional justice bodies have been involved in the process of enforcing intellectual property rights. With the support of these bodies, enforcement of intellectual property has literally been initiated for the first time in the regions;

– the process of filing applications for registration of intellectual property objects has been switched to electronic form to ensure the principle of openness and transparency;

Specifically, while there were 6884 applications in 2016, there were 8059 in 2017, 8617 in 2018, 10142 in 2019, 8707 in 2020 and 14287 in 2021.

– after filing applications for registration of a trademark, service mark and appellation of origin, the Ministry of Justice has laid down a procedure whereby information on those applications is posted on its official website within one working day.

(There is an opportunity to submit written objections to the Ministry regarding applications for registration that have not been submitted in good faith)

– it is now possible to obtain protection documents of registered intellectual property objects electronically on a 24/7 basis;

– significantly improved the work of the institute of patent attorneys, which provides professional legal assistance in the field of intellectual property;

(the requirements for patent representation have been drastically reduced, removing the requirements related to 3 years of experience and activity in a particular field)

– administrative responsibility for illegal use of intellectual property objects has been strengthened. New norms have been introduced into the legislation regarding infringement of copyright and related rights and infringement of rights to invention, utility model and industrial designs;

With increased responsibility for the illegal use of intellectual property, intellectual property lawsuits have risen sharply since 2019.

(In 2016 – 60, in 2017 – 85, in 2018 – 89, in 2019 - 60, in 2020 - 400 more than court proceedings took place)

 IV. Law-making activities in the field of intellectual property

The Ministry of Justice is improving its law-making activities in the field.

As a result of law-making activities, the following changes were made in the field:

– april 26, 2022 for the first time in the history of Uzbekistan, Strategy for the Development of the Intellectual Property Sphere in the Republic of Uzbekistan for 2022-2026 was adopted.

The Strategy aims to take comprehensive measures to improve the country's IP sphere, including a simplified system for considering applications for IP, including industrial property, and to strengthen inter-agency cooperation and measures to enforce industrial property based on international experience.

– the copyright term was extended from 50 to 70 years;

– the system of incentives for persons directly involved in the creation of intellectual property objects was created;

(monetary rewards of 30, 25, 20 times of the basic calculation unit for the winners of the “Best IP competition” were brought in.)

–  the state (patent) fee concession for the registration of certain types of intellectual property objects was granted;

– a procedure for compensating copyright and related right owners for their violated rights in the amount of 20 to 1,000 basic calculation units (from 550 to 27,300 USD) has been introduced;

– Law of the Republic of Uzbekistan “On Geographical Indications” was adopted.

– introduced corporate liability for legal entities in the form of a fine of 100 to 200 basic calculation units (from 2,750 to 5,500 USD) for infringement of industrial property rights.

 VI. Legal enforcement of intellectual property objects

The Ministry of Justice works systematically to enforce intellectual property rights.

In accordance with the Presidential Decree № PD-4965 of 28 January 2021 “On measures to improve the system of protection of intellectual property” “Counterfeit-free month” campaign was held from 15 February to 15 March with a view to prevent the sale of counterfeit goods and enhance legal awareness and legal culture of copyright holders.

The following results were achieved during this month:

– more than 2,000 counterfeit products have been detected being sold in markets, shopping complexes and mobile vending branches across the country.

– “Catalogue of Counterfeit Products” was created and distributed to all business entities, merchants engaged in trade activities;

– “IP-Protection” information portal, which provides information about counterfeit products sold in the republic was launched;

– information about counterfeit products that can pose a serious threat to human health and life was widely disseminated in mass media and Internet sites;

– more than 500 local businesses producing and trading counterfeit products received assistance in creating their own brands (trademarks);

– enforcement measures were taken against persons who infringed the intellectual property rights of others through the production and sale of counterfeit goods.

(86 official requirements and 455 precautionary letters were submitted, protocols on administrative violation against 50 individuals were formalized and referenced to relevant courts)

In 2020-2022 about 3080 offences were detected as a result of monitoring and observation conducted by the Ministry of Justice as well as on the basis of applications from individuals and legal entities.

Based on the identified infringements, 354 official requirements and 1,367 precautionary letters were issued to individuals and legal entities, and protocols on administrative offense were drawn up and referenced to courts in 253 cases.

The courts imposed fines totalling 26,000 USD on 196 persons found guilty of offences.