眾律國際法律事務所

Introduction:

Language: Tajik.

Capital: Dushanbe

Area: 143,100 km2

Population: 8,610,000 (2015)

Currency: Somoni (TJS)

Religion: Muslim (98%), other (2%) : Russian Orthodoxy, Protestantism, Zoroastrianism and Buddhism.

Geographical situation: Tajikistan is landlocked, and is the smallest nation in Central Asia by area.

It is bordered by Afghanistan to the south, Uzbekistan to the west, Kyrgyzstan to the north, and China to the east. Pakistan lies to the south, separated by the narrow Wakhan Corridor.

International treaty membership:

Singapore Treaty on the Law of Trademarks

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

Convention Establishing the World Intellectual Property Organization

Madrid Agreement Concerning the International Registration of Marks

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks

Paris Convention for the Protection of Industrial Property

WIPO Patent Cooperation Treaty

Legislation:

Law of the Republic of Tajikistan No. 234 of March 5, 2007, on Trademarks and Service Marks (as amended by Law No. 858 of July 3, 2012)

Government Institutions :

National Center for Patents and Information (NCPI)

Ministry of Economic Development and Trade of the Republic of Tajikistan

Type of trademark :

Any design, symbols, 3D shapes, colors, combinations. Well know marks, collectives trademarks.

Ground for refusal :

-Trademark protected by priority rights.

-Trademark that mislead the consumer.

-No registration shall be allowed for trademarks consisting only of designations that are devoid of distinctive ability or indicate the nature and quality of the goods.

-No registration shall be allowed for marks already protected or recognized as well known in Republic of Tajikistan or by virtue of an international treaty.

-Any designations that use names or symbols related to states or institution. Such element can be incorporated as non protected elements under authorization.

-Symbols and name which are contrary to public interests, principles of humanity and morals.

-Family or given name, or any element attached to a person.

-A title of a work of science, literature or art, known in the country at the date of filing of the application.

Application content:

An application for registration of a trademark shall be filed with the Patent Office by a legal entity or a natural person.

A simply signed Power of Attorney should be provided to the Tajikistani Patent Office within 1 month from the filing date.

Multiple-class trademark applications are possible in Tajikistan.

The application must content:

- A request for trademark registration with an indication of applicant's details;

- An image of the trademark;

- A list of goods/services for which the registration is requested.

An application shall be filed in the official language or in Russian.

The date of filing of an application with the Patent Office shall be the date of receipt of the documents; if the documents were not filed simultaneously the filing date will be the date of receipt of the last document.

Application process:

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.

A formal examination of an application shall be carried out within one month from the date of its filing with the Patent Office.

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.

In the course of examination, the claimed designation shall be checked for its compliance with the requirements to register a trademark and the priority of the trademark shall be established.

In the event of disagreement of the applicant with the examiner's decision, he shall have the right, within two months of the date of receipt of the decision, to file with the Patent Office a request for re-examination. Re-examination shall be conducted within two months of the date of receipt of the applicant's request.

On the basis of the decision to register the trademark the Patent Office shall, within one month after the date of receipt of a document about the payment of an established obligatory charge, enter the trademark in the State Register of Trademarks of the Republic of Tajikistan.

A trademark certificate shall be issued by the Patent Office within one month from the date of the registration of the trademark in the Register.

Refusal:

The applicant shall be entitled to lodge, within three months from the date of receipt of an appropriate decision, an appeal with the Appeal Board for:

- the decision, taken on the results of the formal examination of the application, to refuse to accept it for consideration;

- the decision passed on the results of examination of the claimed designation;

- the decision to recognize the application as having been withdrawn.

Rights of exploitation and related delay :

The registration of a trademark shall remain valid for ten years as from the date of filing of the application with the Patent Office. The term of validity of a trademark registration may be extended at the request of the right holder to be filed during the last year of such validity term, each time for a period of ten years.

Upon the request of the right holder for extension of the period of validity of the registration of the trademark he may be granted a grace period of six months after expiration of the registration, provided that an additional obligatory charge has been paid.

Use of a trademark shall be understood to mean its use on the goods in respect of which it has been registered and (or) on packaging thereof by the right holder or a person to whom such right has been conferred under a contract.

The right holder can also allow other person to use the mark by licensing or transfer agreements.

Right holder can also demand to stop exploitation of similar trademarks, trade names to previously registered trademarks, trade names, and compansation for occured damages.

Transfer and conditions:

An exclusive right in a trademark may be assigned by the right holder to a natural person or a legal entity under a contract of transfer of an exclusive right in a trademark.

A contract of the transfer of an exclusive right in a trademark (contract on assignment of a trademark) shall be registered with the Patent Office.

Certification:

The registration of a trademark shall be entered in the state register of trademark, therefore, it must contains some elements:

-information about its right holder,

-the priority date of the trademark

-the date of its registration

-the list of goods in respect of which the trademark is registered

-other information relating to the registration of the trademark, as well as any subsequent changes in such information

The certificate will be issued by the Patent Office within one month from the date of the registration of the trademark in the Register.

Withdrawal and cancellation:

The protection of a trademark can be withdrawn or invalidated if:

- The applicant withdraw is application and he is allowed to do it at any stage of examination, but not later than the date of registration of the trademark.

-The trademark owner cannot demonstrate the use of the mark for any continuous period of three years after its registration.

-The application didn’t fit to the requirement for the registration of the mark.

-The registration of the trademark has been recognized as an act of unfair competition.

-Another person can justify of the priority right on this trademark.

-The right holder abandons it

-The liquidation of the legal entity.

Customs:

In case of revealing of counterfeit goods containing objects of intellectual property registered in the customs register, the customs authorities shall suspend release of such goods for a period of 10 working days. The specified term may be extended for not more than 10 additional working days upon the written substantiated request of the applicant accompanied by the evidence confirming that he/she applied to court or other agencies authorized by law for the purpose of protecting his/her rights.

Customs authority of the Republic of Tajikistan shall inform the declarant and a right holder about suspension of release of goods not later than the following working day after a day when such a decision on suspension has been made.

If upon expiration of a 10 days period or a period of extension of suspension of release of goods the customs authority was not informed by a right holder about instigating court proceedings, decision of a court or of the authorized bodies on seizure of goods, their sequestration or confiscation, such goods shall be released provided that all other conditions for importation have been fulfilled.

Counterfeit goods found to infringe copyright and related rights by a court decision may be transferred to the right holder upon his/her request, or shall be subject to destruction.

Sources:

- WIPO.Int : Law of the Republic of Tajikistan No. 234 of March 5, 2007, on Trademarks and Service Marks (as amended by Law No. 858 of July 3, 2012)

- WTO.org: PROVISIONS on the Procedure of the Customs Control Applicable to Goods

Containing Objects of Intellectual Property (https://www.wto.org/english/thewto_e/acc_e/tjk_e/WTACCTJK21A1_LEG_10.pdf)

- IP-Coster.com.

Vincent Lagier