Non-use cancellation of trademarks in Uzbekistan: defending and attacking

A Tashkent confectionery registered a word mark in NICE class 30 back in 2018, ran two production batches, fell out with their investor, froze the line, and pivoted to a ready-meal delivery service under a fresh mark in class 43. The class-30 registration sat in the register; the renewal fee was paid "just in case". In 2024 a large Russian confectionery wanting to enter Uzbekistan under the same word filed a non-use cancellation petition, attached Yandex Market screenshots and public reporting showing five years of zero sales, and eleven months later received a decision cancelling the Uzbek registration. The Tashkent confectionery learned about it from a call by their own marketing agency: "the mark is no longer yours." This article is about preventing that situation — if the mark is yours — and about exploiting it — if the blocking mark belongs to someone else.

What non-use cancellation is and why it exists

A trademark in Uzbekistan is protected not by the act of registration alone but by genuine commercial use. The Law of the Republic of Uzbekistan "On trademarks, service marks and appellations of origin of goods" works from the same logic as every mature IP system: the monopoly on a mark is granted in exchange for the mark's presence in the market. If the rights holder fails to use a registered mark for three consecutive years, any interested party can demand that protection be terminated. The mechanism is called non-use cancellation and it is the main instrument against what amounts to defensive squatting — companies that register dozens of classes "for the future", block whole markets, and use none of them.

The institute works both ways. If your own mark sits idle, it is vulnerable. If a third-party mark blocks the class you need and you can see the owner is not using it, you have a legal lever.

The key feature: the IP Center does not monitor non-use automatically. A registration remains in the register until someone specific files a petition. That means tens of thousands of dead registrations sit on the register, and most of them will die only when someone needs that class.

Three years — the starting bar

The period of continuous non-use that creates the right to demand cancellation is three years. The clock runs from the date of registration (not from the filing date) or from any later date on which the rights holder last demonstrably used the mark. If you placed a product bearing the mark on the market in March 2023 and did nothing afterwards, the earliest a non-use petition can be filed is March 2026.

A few nuances people miss:

• A single instance of use resets the clock. If even a short period of real use occurred within the three years, the count starts again from the last such use. This creates room for the "reactivation by token sale" tactic — discussed below.
• Use by any co-owner counts for the rights holder as a whole. If a mark sits jointly on two legal entities and only one uses it, the mark is treated as used.
• Use by a licensee counts only if the licence agreement is registered with the IP Center. An unregistered licence does not work in a non-use dispute — this is the first trap in practice. For licence agreement mechanics, see trademark licensing rules in Uzbekistan.
• A Madrid international registration designating Uzbekistan is governed by the same rule — three years of non-use in Uzbekistan creates grounds for cancellation of the Uzbek extension, even if the mark is active elsewhere.

What counts as use — and what does not

The law describes use broadly, but the IP Center's Appeal Board and the courts read the wording strictly. The following count:

• Placing goods bearing the mark on the Uzbek market — manufacture, import, sale.
• Applying the mark to packaging, labels, advertising, signage, or commercial documentation — invoices, delivery notes, contracts.
• Use in domain names and online stores addressed to the Uzbek audience.
• Use on goods marked for export, provided the mark is physically applied within Uzbekistan.

The following do not count:

• Storage of an unsold batch in a warehouse. Production for production's sake, without entering the market, is not use.
• Internal use by the company's own staff.
• A single token transaction just before the cancellation petition. "Token use" — shipping one box to a friendly sole proprietor the day before the petition is filed — is generally classed by the Appeal Board as bad-faith conduct and disregarded. The line runs through the test "real commercial activity or staged performance".
• Use of the mark in a form materially different from the registered one. If your registration shows a combined mark with specific graphics but you have spent three years using only the word element in a different font and without the graphic, the mark may be deemed unused in its registered form.

Who can file the petition and where

A non-use cancellation petition is filed by an interested party. The interest standard in Uzbek practice is the existence of the applicant's own application or registration for a similar mark in the same or homogeneous classes. Without that, the Appeal Board returns the petition for lack of legal interest.

The standard procedure:

1. The petition is filed with the Appeal Board at the IP Center with payment of the official fee (approximately 2,000,000 UZS at the time of writing — Uzbek fees revise annually, check the current schedule on the IP Center website).
2. The IP Center notifies the rights holder of the attacked mark and sets a deadline (typically 3 months) for evidence of use.
3. The rights holder assembles the use file and submits it to the Appeal Board. The burden of proving use sits entirely with them — the applicant only proves legal interest and the existence of the attacked registration.
4. A hearing before the Appeal Board — the parties submit documents and provide oral submissions. The hearing usually runs 1-2 hours.
5. The decision issues 1-2 months after the hearing. Full or partial cancellation triggers updates to the State Register.
6. Appeal to the Tashkent Commercial Court — within 3 months of the decision. Court timelines: 4-12 months.

A full cycle from petition to final court decision runs 8 months (if the rights holder does not resist) to 2 years (with two rounds of appeals).

The use file: what the rights holder collects

If your mark is under attack you have 3 months to assemble evidence. That is generous if the documents are already organised; critically short if they are not. The structure of a file that passes without questions:

What strengthens a file: distribution over time (not a single week of sales across three years but steady presence), each document tied to a specific class from the registration, notarial inspection of websites and social-media accounts with date capture.

What weakens it: documents only from the weeks immediately before the petition (the Appeal Board reads this as "panicked catch-up"), use of the mark in altered form, use confined to one class while defending all the registered classes.

Partial cancellation: you can lose only some classes

This is the institute's key feature. If your mark is registered in 5 classes and you can prove use in only 2, protection is terminated in the 3 unused classes. The mark stays on the register, but with a shortened list. In practice, a competent attacker targets not the whole mark but the specific classes they need for their own registration.

The strategic takeaway for rights holders: renewal is the trigger to prune the portfolio. Once a decade, when paying the renewal fee, it pays to drop classes where the mark does not actually work and will not in the foreseeable future. That reduces the risk of partial cancellation initiated by someone else and shrinks the renewal bill. The same pattern is detailed in our step-by-step guide to trademark renewal.

Attack strategy: clearing a blocking mark

The typical situation: you want to register a new mark in class 25 (clothing), the IP Center issues a provisional refusal citing a third-party registration with 2017 priority. You check the market — no clothing under that mark is being sold in Uzbekistan. It looks like a sleeping registration. What to do.

Step 1: pre-filing reconnaissance. At least a month before filing, assemble evidence of non-use.

• The rights holder's website in the Wayback Machine over the past 3 years.
• Marketplace searches (Uzum, Yandex Market, OLX, GLOBAL.uz) for the exact mark name.
• Social-media searches (Instagram, Telegram, Facebook) with check on the dates of recent posts.
• A Chamber of Commerce filing on the actual business activity of the rights holder.
• Customs statistics (if the mark is foreign) — for any imports under the mark.
• Field search for offline retail points — via an investigator or a friendly team.

These materials become Exhibit A to your petition. The denser your file at the start, the less chance the rights holder can "reactivate" the mark with a token transaction the moment they receive the notification.

Step 2: file in parallel with your own application. It is often effective to file your own application for the similar mark simultaneously, without waiting for the cancellation procedure to finish. Your application takes its place in the queue and receives a priority date, so that when the blocking mark is cancelled the examination can register your mark automatically. The alternative — waiting for the block to lift and only then applying — is dangerous, because the freed niche can be taken in the meantime by another applicant.

Step 3: financial discipline. A full attack cycle — petition to the Appeal Board, hearing, possible appeal to court by the rights holder, second round — usually costs 12,000,000-25,000,000 UZS in attorney fees plus official fees. It pays off when the blocking mark gates access to a commercially significant market. For a niche product it is sometimes cheaper to file in an adjacent class.

Step 4: be ready to negotiate. In half of all cases the rights holder, on receiving the cancellation notification, opens settlement talks: sells the mark, grants a licence, proposes a class split. That is a healthy negotiating posture — if the end goal is not "kill the third-party mark" but "secure the right to operate in the needed class", settlement can save a year of procedure.

Defence strategy: how the rights holder fights back

If the notification has landed and the use file is hard to assemble, consider these defence lines.

Justified non-use. The law recognises causes outside the rights holder's control as grounds not to cancel. They include: import restrictions, state regulatory bans, force majeure (war, pandemic), prolonged regulatory certification (for example, for pharmaceuticals or food supplements). Many rights holders invoked the 2020 pandemic as justified non-use, and the practice accepts that at least for one calendar year. "We did not get around to launching production" is not justified non-use.

Evidence of preparation to use. If nothing has been sold in three years but serious preparation occurred (production contracts signed, packaging ordered, Uzstandart certification obtained), the Appeal Board sometimes accepts the materials as intention to use. A heavy argument, requires meticulous documentation.

Use in an adjacent form. If a combined mark is registered but only the word element is used in the same form, the argument that the word element is identical usually carries. If the graphic was materially altered, it does not.

Challenge the applicant's interest. If the applicant has no similar application or registration of their own, contest their legal interest. A petition by a party without a legitimate interest must be dismissed.

Partial surrender. If it is obvious that one class will never be used, the rational move is to file a voluntary class reduction before the Appeal Board ruling. That preserves the registration in active classes and pulls the rug from under the attack.

The real economics: both sides of the ledger

A typical case: a mark in 3 classes, dispute over non-use in 2 of them, Appeal Board ruling plus one appeal to the Tashkent Commercial Court.

Note that the costs are comparable. This is not "the attacker pays a lot to fight a free defence" — the institute is balanced. Which is why in half of cases the parties settle: a mark sold for 30-80 million UZS is often a better deal than a two-year war across the Appeal Board and the court.

TL;DR

• Three years of continuous non-use = risk of trademark cancellation.
• The clock runs from the registration date or from the last demonstrable use. Any real use resets it.
• The petition is filed by an interested party — typically a competitor whose own application is blocked.
• The burden of proving use sits with the rights holder of the attacked mark.
• Full cycle: 8 months to 2 years. Costs each side: 13-24 million UZS.
• The most common rights-holder mistake: not maintaining a use file from day one. The most common applicant mistake: underestimating "justified non-use".
• Sound defensive strategy: prune the portfolio at every renewal, voluntarily drop dead classes.
• Sound attack strategy: file your own application in parallel with the cancellation petition, so the freed class does not slip away.

FAQ

When does the three-year clock start? From the date the trademark was registered (not the application date) or from the last demonstrable use. If a mark was registered in March 2021 and never used, the earliest cancellation petition date is March 2024. A single use in July 2023 restarts the clock from that date.

Is one symbolic sale enough to "reset" the three years? By the letter of the law, yes — any real use resets the count. In Appeal Board practice, a single transaction immediately before the cancellation petition is treated as bad faith and disregarded. To carry weight, a sale has to be part of genuine commercial activity rather than a "for the record" operation.

Who has to prove non-use — the applicant or the rights holder? The applicant proves legal interest (own application or registration in a similar class) and the existence of the attacked mark. The burden of proving use sits entirely with the rights holder. If they fail to submit a use file within the 3-month window, the Appeal Board cancels protection without further investigation.

Can a petition be filed without a registration of one's own? A simultaneous filing — your own application plus a cancellation petition for the blocking mark — works. On the hearing date you already have a pending application, which establishes legal interest. Filing the petition with no application at all in that class is pointless; the Appeal Board will return it for lack of interest.

What happens to a Madrid international registration? Uzbekistan is a Madrid Protocol contracting state. Cancellation in Uzbekistan does not cancel the international registration — only the Uzbek extension. WIPO records the change in the International Register; the mark continues to operate in other countries. For Madrid mechanics on the Uzbek side, see our Madrid Protocol guide for Uzbek applicants.

How do you prove the date of a website screenshot? The most reliable method is a notarial inspection of the website, fixing the current content, date and time. Alternative: the Wayback Machine (web.archive.org). The Appeal Board accepts Wayback captures as indirect evidence, especially when multiple snapshots over time show consistent content. Plain screenshots without notarial certification or archive backing carry little weight — they can too easily be fabricated after the fact.

Can protection be restored after cancellation? No. The decision becomes final once appeals are exhausted. The only route is a new application for the same mark, but you lose your priority date and start a fresh term of protection. During the new registration window (standard 7-8 months, accelerated 1 month) somebody else may register the same mark. For application support, see our trademark services page.

If the rights holder is a foreign company, how do they learn about the petition? The IP Center sends notice to the address on file in the registration. If the mark is handled through an Uzbek patent attorney, the notice goes to the attorney, who must forward it to the client. If the address has gone stale or the attorney is no longer active, the rights holder may find out about the attack too late — a classic loss scenario for dormant foreign registrations.

Non-use cancellation is neither a disaster nor a lottery — it is the IP system's housekeeping mechanism. A mark that has not reached a shelf in three years deserves either a call to the marketing agency or a call to the IP attorney by year three. If your mark is still breathing, build the use file today, not on the day the notice lands. If a third-party mark is sitting on the class you need, look at the market, check the archives, model the economics of an attack. Half of Uzbekistan's trademark register is sleeping registrations, and each one is a potential class for whoever actually needs it.