- CHAPTER 1 GENERAL PROVISIONS
- CHAPTER 2. LEGAL PROTECTION OF TRADEMARK
- CHAPTER 3. PROTECTABILITY OF A TRADEMARK
- CHAPTER 4. PRIORITY OF A TRADEMARK
- CHAPTER 5. REGISTRATION OF A TRADEMARK
- Article 11. Application for trademark registration
- Article 12. Examination of the application for a trademark
- Article 13. Formal Examination
- Article 14. Examination of the claimed designation
- Article 15. Appeal against the decision on the application and restoration of the missed time periods
- Article 16. Registration of a trademark
- Article 17. Issuance of a trademark certificate
- Article 18. Duration Of Registration
- Article 19. Recordal of changes in the registration
- Article 20. Publication of information concerning registration
- Article 21. Registration of a trademark in foreign countries
- Article 22. Conditions for re-registration
- CHAPTER 6. WELL-KNOWN TRADEMARK AND ITS LEGAL PROTECTION
- CHAPTER 7. COLLECTIVE TRADEMARK
- CHAPTER 8. USE OF A TRADEMARK
- CHAPTER 9. TRANSFER OF AN EXCLUSIVE RIGHT IN A TRADEMARK
- CHAPTER 10. TERMINATION OF LEGAL PROTECTION OF A TRADEMARK
- CHAPTER 11. PROTECTION OF THE RIGHTS OF THE RIGHT HOLDER OF A TRADEMARK
- CHAPTER 12. CONCLUDING PROVISIONS
- Article 36. Decisions of the Appeal Board
- Article 37. Obligatory charges and procedural payment
- Article 38. Rights of foreign individuals and legal entities
- Article 39. International legal acts
- Article 40. Liability for Breaches of This Law
- Article 41. On recognition of voidance of the Law of the Republic of Tajikistan “On trademarks and service marks”
- Article 42. Procedure for entry into force of this Law
LAW
OF THE REPUBLIC OF TAJIKISTAN ON TRADEMARKS AND SERVICE MARKS
This Law shall govern relations arising in connection with the legal protection and use of trademarks and service marks.
CHAPTER 1
GENERAL PROVISIONS
Article 1. Basic terms
The basic terms used in this Law are as follows:
- Paris Convention - The Paris Convention for the Protection of Industrial Property of March 20, 1883 with subsequent amendments;
- International Classification of Goods and Services (hereinafter “Nice Classification”) shall mean the classification established by the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, signed at Nice on June 15, 1957, as revised and amended.
- application for trademark registration shall mean a set of documents filed by the applicant or a person empowered to act for the applicant and containing a request for the grant of a title of protection.
- priority of a trademark shall mean the fact that the right in a trademark arosed in the first place.
- patent attorney shall mean a national of the Republic of Tajikistan who, in accordance with the legislation of the Republic of Tajikistan, is granted the right to represent natural persons and legal entities before the competent authority.
- trademark and service mark (hereinafter "trademark") shall be designations capable of individualizing goods, jobs being performed or services (hereinafter "goods") of natural persons or legal entities engaged in entrepreneurial activity.
Article 2. Legislation of the Republic of Tajikistan on Trademarks and Service Marks
The legislation of the Republic of Tajikistan on trademarks and service marks shall be based on the Constitution of the Republic of Tajikistan and shall consist of the Civil Code of the Republic of Tajikistan, this Law and other legislative acts of the Republic of Tajikistan, as well as international legal acts recognized by the Republic of Tajikistan.
Article 3. Authorized State body
Implementation of the state policy and functions in the field of the legal protection of trademarks stipulated by this Law shall be entrusted to the Authorized State Body (hereinafter “Patent Office”) which is authorized by the Government of the Republic of Tajikistan.
In cases stipulated by this Law, the Patent Office, in accordance with its competence, shall issue regulatory legal acts on the application of this Law.
An Appeal Board shall be set up, attached to the Patent Office, and shall consider the issues attributed to its competence by this Law. The Appeal Board shall carry out its authorized functions on the basis of the legislation of the Republic of Tajikistan, the “Appeal Board Statute” approved by the organ of the Patent Office.
CHAPTER 2.
LEGAL PROTECTION OF TRADEMARK
Article 4. Legal protection of a trademark
Legal protection of a trademark in the Republic of Tajikistan shall be accorded either on the basis of its state registration (hereinafter “registration”) pursuant to the procedure established by this Law or by virtue of the international legal acts recognized by Tajikistan.
The right in a trademark shall be protected by law.
An exclusive right in a trademark may be registered in the name of (right holder) a natural person or a legal entity engaged in entrepreneurial activity.
Article 5. A trademark certificate
A certificate shall be granted for a registered trademark.
A certificate shall attest the priority of the trademark, the exclusive right in the trademark in respect of the goods listed in the certificate.
Article 6. Exclusive right in a trademark
The right holder shall have the right to use the trademark and to forbid use of the trademark by other persons.
No natural person or legal entity may use a trademark protected in the Republic of Tajikistan without the authorization of the right holder.
Any unauthorized commercial use of a trademark (or a confusingly similar designation) in the territory of the Republic of Tajikistan in respect of the goods for individualization of which the trademark has been registered (or of similar goods), shall be recognized as an infringement of the rights of the right holder (illegal use of a trademark). A trademark or a confusingly similar designation shall be considered to have been used, in particular:
- on the goods, labels, packages of these goods, which are manufactured, offered for sale, sold, displayed at exhibitions and fairs or used commercially in the territory of the Republic of Tajikistan, or stored and (or) transported with this purpose, or imported into the territory of the Republic of Tajikistan;
- on performing jobs, providing services;
- on documents related to commercial introduction of the goods;
- in offering goods for sale;
- on the Internet, particularly in domain names and in other forms of addressing.
The goods, labels, packages of these goods on which the trademark or a confusingly similar sign are used shall be regarded as counterfeits.
CHAPTER 3.
PROTECTABILITY OF A TRADEMARK
Article 7. Types of trademarks
Verbal, figurative, three-dimensional and other designations or their combinations may be registered as trademarks.
A trademark may be registered in any colour or combination of colours.
Article 8. Absolute grounds for denial of registration
No registration shall be allowed for trademarks consisting only of designations that are devoid of distinctive ability or consist only of the elements:
- that have come into common use as designations of goods of a certain type;
- that are generally accepted symbols and terms;
- that characterize goods including pointing to the kind, quality, quantity, property, intended purpose, value, as well as the time and place of their manufacture or sale.
- that represent the shape of goods which is determined exclusively or predominantly by the property or designated purpose of such goods.
The elements indicated in Paragraphs 1-4 of Part 1 of this Article may be incorporated in the trademark as non-protected elements, provided they do not hold a dominant position therein.
The provisions of Parts 1 and 2 of this Article shall not apply to designations which have acquired a distinctive character as a result of their use.
By virtue of the international legal acts recognized by the Republic of Tajikistan, registration as trademarks shall not be allowed for designations, that consist only of the elements representing official names of states, State armorial bearings, flags and other State emblems, abbreviated or full names of international intergovernmental organizations, their armorial bearings, flags and other emblems, official signs and hall-marks of control and warranty, seals, awards and other marks of distinction or designations confusingly similar to the above. Such elements may be incorporated in a trademark as non-protected elements, subject to the consent of a relevant competent authority.
No registration as trademarks shall be allowed for the designations or their elements:
- that are deceitful or capable of misleading the consumer as to the good or its manufacturer;
- that are contrary to public interests, principles of humanity and morals.
By virtue of the international legal acts recognized by the Republic of Tajikistan, no registration as trademarks in the territory of the Republic of Tajikistan shall be allowed for the designations that represent or incorporate the elements that are protected in one of the States-parties to that international legal act in the capacity of the designations, identifying wines or alcoholic beverages as originating from its territory (produced within the geographic boundaries of that State), and possessing individual quality, reputation or other properties that are mainly determined by their origin, if the trademark shall be used for identifying wines or alcoholic beverages not originating from the territory of the given geographic object.
Article 9. Other grounds for denial of registration
The following designations shall not be registered as trademarks if they are identical with or confusingly similar to:
- trademarks of other persons, applied for registration (provided applications for them have not been withdrawn) or protected in the Republic of Tajikistan by virtue of an international treaty recognized by the Republic of Tajikistan, in respect of similar goods and with an earlier priority;
- trademarks of other persons, recognized, in accordance with the procedure prescribed by this Law, as well-known in the Republic of Tajikistan in respect of similar goods.
The registration of a designation as a trademark in respect of similar goods, confusingly similar to a trademark, specified in Paragraph 1 or 2 of this Part shall be allowed only with the consent of the right holder.
Designations, identical with or confusingly similar to the appellations of origin of goods, protected in the territory of the Republic of Tajikistan, shall not be registered as trademarks in respect of any goods, except for cases where these designations are incorporated as non-protected elements into trademarks, registered in the name of persons eligible to use such appellations.
The following designations shall not be registered as trademarks if they are identical with:
- a trade name (or its part) protected in the Republic of Tajikistan in respect of similar goods, an industrial design, the rights in which arose to other persons in the Republic of Tajikistan, prior to the priority date of the trademark being registered;
- a title of a work of science, literature or art, known in the Republic of Tajikistan at the date of filing of the application, characters or quotations therefrom, a work of art or its fragment without the consent of a copyright owner or his successor in title, provided the rights in those works had arisen prior to the priority date of the trademark being registered;
- a family name, a given name, a pseudonym or their derivatives, a portrait and facsimile of the person known at the filing date of the application, without the consent of that person or his successor.
CHAPTER 4.
PRIORITY OF A TRADEMARK
Article 10. Priority of a trademark
Priority of a trademark shall be established by the date of filing the application with the Patent Office.
Priority of a trademark may be established by the filing date of the first application in a foreign country party to the Paris Convention (convention priority), provided the application was filed with the Patent Office within six months from the said date.
Priority of a trademark placed on exhibits at official or officially recognized international exhibitions organized in the territory of one of the countries-members of the Paris Convention may be established by the date of commencement of the public showing of the exhibit at the exhibition (exhibition priority), if the application was filed with the Patent Office within six months from the said date.
An applicant wishing to exercise the right of convention or exhibition priority shall be obliged to state so while filing the application for a trademark or within two months following receipt of the application by the Patent Office, and attach the necessary documents confirming the lawfulness of such claim and (or) furnish these documents within three months from the date of receipt of the application by the Patent Office.
Priority of a trademark filed by an applicant in compliance with Part 9 of Article 12 of this Law (hereinafter "divisional application") on the basis of another application of that applicant for the same designation (hereinafter "original application") shall be established by the date of filing of the original application with the Patent Office, where the right to establish an earlier priority by the original application exists, - by the priority date, provided that as of the date of filing the divisional application, the original application is not withdrawn nor deemed to be withdrawn, and that the divisional application is filed prior to a decision being made with respect to the original application.
Where different applicants filed applications for identical trademarks with the same priority date in respect of fully or partially coinciding lists of goods, registration of the trademark with respect
to the goods for which the above-mentioned lists coincide, may be effected in the name of one of them on the basis of the agreement reached between the applicants.
Where identical trademarks with the same priority date, in respect of fully or partially coinciding lists of goods, have been applied for registration by one and the same applicant, then the registration of the trademark in respect of such goods may be effected under one of the applications selected by the applicant.
Within six months of the date of receipt of the corresponding notification, the applicants (applicant) shall inform of the agreement reached by them (his choice) in respect of which particular application the registration of the trademark is sought.
If, within the prescribed time period, no such information is communicated to the Patent Office and no request is submitted for the extension of the prescribed time period, the applications shall be deemed withdrawn.
Priority of a trademark may be established by the date of its international registration in accordance with the international legal acts recognized by Tajikistan.
CHAPTER 5.
REGISTRATION OF A TRADEMARK
Article 11. Application for trademark registration
An application for registration of a trademark (hereinafter "application") shall be filed with the Patent Office by a legal entity or a natural person engaged in entrepreneurial activity (hereinafter "applicant").
Dealings with the Patent Office may be conducted by an applicant, a right holder or any other person concerned either independently or through a patent attorney registered with the Patent Office.
Natural persons permanently residing outside the Republic of Tajikistan, or foreign legal entities or their representatives shall deal with the Patent Office through patent attorneys authorized by a power of attorney and who obtained the right to perform as patent attorneys according to the legislation of the Republic of Tajikistan.
An application shall pertain to a single trademark.
An application shall contain:
- a request for registration of a designation as a trademark with an indication of the applicant, as well as of his location or place of residence;
- the claimed designation;
- a list of goods in respect of which the registration of the trademark is requested, grouped by classes of the Nice Classification;
- a description of the claimed designation;
An application shall be filed in the official language or in Russian.
The application shall be signed by the applicant or, where such application is filed through a patent attorney, by the applicant or the patent attorney.
The following must be attached to the application:
- a document confirming payment of the obligatory charge for filing in the prescribed amount;
- a Charter of a collective mark if the application is filed in respect of a collective mark;
- a document confirming the rights and competence of a patent attorney if the application is filed through a patent attorney
The documents attached to an application shall be filed in the official or another language. Where such documents are filed in another language, their translation into the official language shall be enclosed. The translation into the official language may be submitted by the applicant not later than two months after the date of notification by the Patent Office of the need to comply with this requirement.
The date of filing of an application with the Patent Office shall be the date of receipt of the documents provided by Paragraphs 1-3, Part 5 of this Article, or, where the said documents were not filed simultaneously, by the date of receipt of the last of the documents submitted.
After the application was filed with the Patent Office, any person shall be entitled to inspect the documents of the application originally attached thereto at the filing date. The procedure for inspecting the materials of the application shall be laid down by the Patent Office.
The requirements for the documents of the application shall be determined by the Patent Office
Article 12. Examination of the application for a trademark
The examination of an application shall be conducted by the Patent Office and shall comprise a formal examination and an examination of the claimed designation.
During the examination of an application while a decision in respect thereof is pending, the applicant shall be entitled to supplement, update or amend the material of the application.
If the supplementary materials include a list of the goods not indicated in the application as of the date of its filing or substantially alter the claimed designation, such materials shall not be accepted for consideration and may be submitted by the applicant as a separate application.
A change of the applicant at the conceding the right to the application or as a result of changing the name of the applicant, as well as the correction of obvious or technical errors in the documents of the application shall be made prior to the registration date of a trademark.
During the examination the Patent Office shall be entitled to request from the applicant supplementary materials the absence of which would make the examination impossible.
The supplementary materials which include a list of goods not indicated in the application as of the date of its filing or substantially alter the claimed designation shall follow the procedure laid down by Part 3 of this Article.
The supplementary materials, requested by the examiners, shall be submitted within two months from the date of receipt of such request by the applicant or copies of the materials referred to in the request of examination, provided that these copies were requested by an applicant within one month after receiving the request of examination. If, within such time period, the applicant fails to submit the requested materials or a request for the extension of the said time period, the application shall be deemed withdrawn. At the request of the applicant, the Patent Office may extend this period by not more than six months. Provided that the reason given for having missed such time periods is confirmed to be valid, the Patent Office can extend it by more than six months.
An application may be withdrawn at the request of the applicant at any stage of examination, but not later than the date of registration of the trademark.
During a formal examination of the application and before a decision is taken, the applicant shall have the right to file a divisional application, which incorporates the list of goods, indicated in the original application as of the date of its filing with the Patent Office, and dissimilar to the goods the list of which remains in the original application.
Article 13. Formal Examination
A formal examination of an application shall be carried out within one month from the date of its filing with the Patent Office.
In the course of the formal examination, the presence of the necessary documents and their conformity with the established requirements shall be checked. Based on the results of the examination, a decision shall be made either to accept it for further examination or to deny its acceptance, of which the applicant shall be informed.
Simultaneously with notification of the positive outcome of the formal examination, the applicant shall be informed of the filing date established pursuant to Part 10 of Article 11 of this Law.
Article 14. Examination of the claimed designation
The examination of the claimed designation shall be conducted upon completion of the formal examination.
In the course of examination, the claimed designation shall be checked for its compliance with the requirements set out in Article 8 and in Parts 1 and 3 of Article 9 of this Law, and the priority of the trademark shall be established.
Based on the results of the examination, a decision shall be made either to register the trademark or to deny its registration.
Copies of materials opposed to the claimed designation may be requested within one month of the date of receipt of the decision on the application.