Letter of consent for a trademark in Uzbekistan: bypassing refusal

A Tashkent coffee roaster filed a word mark in NICE class 30, cleared formal examination, then four months later got a notice from the IP Center: the examiner had cited a confusingly similar mark belonging to a Bukhara dairy that had been registered in the same class since 2019. The founder ran the options. Argue back — two months of uncertainty, ~30% chance of success. Rebrand — 18,000,000 UZS sunk in design and ads gone. File an appeal to the Appeals Board — six more months and more fees. Instead, the lawyer wrote to the owner of the cited mark, explained the situation, and three weeks later a notarised letter of consent was on file at the IP Center. The deal: 3,000,000 UZS. Forty days after filing the response, a new examination act arrived: ground removed, application moves to publication. This post is about a tool that is underused in Uzbekistan and that every founder should know how to deploy: the rights holder's letter of consent.

What a letter of consent is, and why the IP Center accepts it

A letter of consent is a document in which the owner of an earlier registered or filed mark confirms that they do not object to the registration of a similar designation in the applicant's name. The document is addressed to the IP Center, attached to the response to the provisional refusal, and works as removal of the refusal ground under Article 11 of the Law on Trademarks, Service Marks and Appellations of Origin of Goods.

The logic is simple. Relative grounds exist to protect the interests of the prior rights holder and the consumer. If the rights holder themselves says in writing "I have no objection", one of the two protected parties drops out. The consumer question — could they be confused between the two brands — remains, and here the IP Center keeps the discretion to refuse even when consent is on file, if the similarity creates a clear risk of confusion.

In practice, the IP Center accepts the letter in the overwhelming majority of cases. The three situations where consent will not save the application:

• The marks are identical (character for character) and registered in identical NICE positions. Here the examiner will reasonably say that consent legalises confusion between the parties rather than removing the risk.
• One of the marks is well-known. Consent from the owner of a well-known mark is formally possible, but the IP Center applies a stricter standard, because well-known marks are protected in the interest of public market perception, not only of the rights holder.
• The similarity touches state symbols, morality, religious sensitivities or other absolute grounds under Article 10. Private consent has no weight here — the ground does not depend on a third party's will.

In all other routine situations — and that is 80–85% of relative-grounds refusals — a letter of consent closes the matter.

When consent beats a fight, and when it beats a rebrand

Before you go looking for the rights holder, model three scenarios.

Scenario A — argued response to the IP Center. You file a reasoned reply: different phonetics, different meaning, different consumer groups, different goods within the class. Lawyer's fee: 3,000,000–6,000,000 UZS. Timeline: 60 days to the examination act, plus 30–60 days for any second round. Success rate at relative grounds with obvious similarity: 20–35%. If you lose, next stop is the Appeals Board — another four to six months and 5,000,000–8,000,000 UZS.

Scenario B — letter of consent. You negotiate with the rights holder, pay the fee, notarise the document. Consent cost: 2,000,000–15,000,000 UZS in routine cases, up to 50,000,000–100,000,000 UZS and above for premium brands. Timeline: two to six weeks to signature, 30–45 days to the IP Center's decision. Success rate with a properly drafted consent and non-identical marks: 85–95%.

Scenario C — amend the application. You narrow the list of goods and services to remove the overlap, or you change the designation itself to escape the similarity. Free in fees but expensive in brand equity — money already spent on design, packaging and marketing. Timeline: 30 days to the next examination act.

Consent beats an argued response when the similarity is obvious, the classes overlap and the argument's chances are low. The argued response beats consent when the similarity is thin — the examiner cited a mark with the same root but a different suffix in an adjacent rather than identical class. The rebrand is the last resort: it comes out when the rights holder will not engage or asks a price close to the cost of changing the name.

How to negotiate with the rights holder

Step one: find contact details. The IP Center registry entry for the rights holder usually limits itself to address and name. From there, the company's website, the Uzbek business register, industry associations and aggregators get you to a person. If the rights holder is a foreign company, the search runs through the registers of its home jurisdiction.

Step two: frame the request. A direct approach — "we'd like to buy your consent for X" — works only with sophisticated rights holders who have done this before. With ordinary companies the approach is softer: you explain that you are preparing a launch, that you noticed a formal similarity, that you have no intention to compete in their segment, and you ask them to consider issuing a consent letter. You tell them upfront what goods you plan to use the mark on, and you make clear the consent does not transfer rights — it only removes an obstacle at the IP Center.

Step three: negotiate the price. Benchmarks from our Uzbekistan practice:

• Unrelated company, no competition, consent as a formality: 2,000,000–5,000,000 UZS.
• Indirectly related industry, minimal cannibalisation risk: 5,000,000–15,000,000 UZS.
• Directly adjacent industry, rights holder sees consent as an asset: 15,000,000–50,000,000 UZS.
• High-value international brands with centralised IP management: from 100,000,000 UZS, often a flat refusal regardless of price.

Step four: structure the deal. A simple consent is typically a single document and a single payment. If the rights holder is worried about dilution of their mark, negotiations move toward a full coexistence agreement — a two-sided contract with obligations on both parties.

What a letter of consent must contain

The legal value of the document sits in clearly drafted clauses. The skeleton of a consent letter for filing at the IP Center:

• Rights holder's details. Full legal name (or individual's full name), address, tax ID, registration data; for foreign entities, an extract from the commercial register.
• Identification of the cited mark. IP Center certificate number, priority date, NICE classes, specimen of the mark.
• Identification of the application the consent is given for. IP Center application number, filing date, classes, specimen.
• Scope of consent. List of goods and services the consent applies to. It may be narrower than the applicant's list — then the applicant must narrow accordingly. It may be equal or broader.
• Irrevocability. The letter must be irrevocable; otherwise, after the new mark is registered, the rights holder could formally try to withdraw consent and force a cancellation through the Appeals Board.
• Authorised signature. For a legal entity, the director or a representative under power of attorney. The power of attorney is attached.
• Certification. A consent issued in Uzbekistan is notarised. A consent issued abroad needs an apostille or consular legalisation depending on the country.

Without any of these elements the IP Center returns the document as improperly executed, and the response window keeps running in parallel.

Letter of consent vs coexistence agreement

These are two different tools that are often confused.

A letter of consent is a one-sided declaration by the rights holder that they do not object to registration of a similar mark. It is addressed to the IP Center, issued "as is", and usually does not contain any obligations on the applicant. It is an instrument for clearing one specific examination.

A coexistence agreement is a bilateral contract between two rights holders that regulates the parallel existence of two similar marks on the market. It typically contains:

• Territorial division (if each party works in its own region).
• Goods-and-services boundary (one party uses the mark only on footwear, the other only on bags, even though both are in NICE class 25).
• Agreed style of use (colour palette, fonts, logos) so consumers do not confuse the brands.
• A no-filing clause in third countries without notifying the other side.
• A dispute-resolution procedure — usually mediation before arbitration.

A coexistence agreement is the right tool when both brands are mature, both rights holders want protection from each other's expansion, and the consent fee is high. The agreement gives both sides control over how the other uses its mark in exchange for clearing the registry obstacle.

For the typical situation of a startup vs an established brand, a simple consent letter is enough. Coexistence agreements come in when the rights holder fears dilution and wants contractual guarantees.

How the IP Center processes a response with a letter of consent

After receiving your response with the attached consent, the examiner:

• Verifies the document is properly drafted: details, certification, irrevocability, scope.
• Checks whether the scope of consent matches the goods-and-services list in the application. If consent is given for items 1–10 in class 30 and your application lists 1–30, the examiner will note that the consent does not cover the full claimed list.
• Assesses residual risk of consumer confusion. Here the examiner has discretion: even with a formally valid consent on file, the examiner can insist on refusal if the marks are identical and the classes are identical.

Decision timeline: 30–45 days from the date you file the response. If the examiner accepts the consent, the Article 11 ground falls away and the application moves to publication. If the examiner refuses despite the consent, you have the same routes available as for any refusal: the Appeals Board at the IP Center, then the Economic Court. Odds of overturning a refusal at the Appeals Board with consent on file are materially better than without — the Board traditionally weighs the rights holder's expressed will.

What to do if the rights holder will not give consent

Not every approach ends in consent. Alternatives when the rights holder refuses or names an unworkable price:

• Narrow the application to goods where similarity goes away. If the marks diverge inside class 30 (you sell coffee, the cited mark covers ice cream), narrowing the list to coffee and adjacent items removes the ground.
• Change the designation. Adding a distinctive element (a house word, distinctive graphics), changing the typography, switching from a word mark to a composite mark with your own logo often removes the similarity.
• File an argued response. If the similarity in your specific case is thin — different sound, different semantic associations, different consumer groups — the argument may win. But building the plan on the argument alone, without checking IP Center practice, is risky.
• File through the Madrid system designating Uzbekistan. If you have a base registration in another country, the international priority sometimes provides leverage in negotiations.
• Try to cancel the cited mark. If it has been unused for three years or longer, you can file for non-use cancellation at the Appeals Board. In six to twelve months the obstacle is removed without the rights holder's consent.

What this costs in reality

Full cost breakdown of a routine letter-of-consent case:

• Finding and reaching the rights holder: 1,500,000–3,000,000 UZS (lawyer's work).
• Negotiating and agreeing the text of the letter: 2,000,000–4,000,000 UZS (lawyer's work).
• Fee to the rights holder: 3,000,000–15,000,000 UZS (typical range).
• Notarisation in Uzbekistan: 200,000–500,000 UZS. Apostille or legalisation for a foreign letter: 1,000,000–3,000,000 UZS.
• Preparing and filing the response with the IP Center, consent attached: 1,500,000–2,500,000 UZS (trademark attorney's work).

Total in a routine case: 8,000,000–28,000,000 UZS. Timeline: six to ten weeks from receipt of the provisional refusal to the examination act removing the ground.

For comparison: court proceedings to cancel a third party's mark or defend your rights after registration of a similar mark — 25,000,000–40,000,000 UZS and 12–18 months. Consent is almost always cheaper and faster than any alternative if the rights holder is willing to talk.

Frequently asked questions

Can consent be oral or by email?

No. The IP Center accepts only a notarised written document. Emails confirming an agreement have no examination weight. They are useful only as evidence of good faith if a dispute later arises.

Does the consent still apply if we later change the mark?

The consent is issued for a specific designation in a specific application. If you file an amended designation as a new application, you need a fresh consent. Changes within one application (graphic edits, colour adjustments) may need an addendum to the consent — negotiate this with the rights holder upfront.

What if the rights holder later sells their mark — does the old consent survive?

Yes, provided the letter is drafted as irrevocable and not tied to the personality of the issuer. The new rights holder takes the mark with its existing encumbrances, including any previously issued consent. This clause is critical — without an irrevocability formulation, the new owner can challenge your registration after buying the cited mark.

Can the same consent be reused for another application on the same mark?

No. Consent is given in relation to a specific application with its number, classes and specimen. If you later want to extend protection to new classes or new goods, a separate consent for the new application is required.

What if two marks from different rights holders have been cited?

You need consents from both. The IP Center will remove the ground only for marks where consent is on file. If consent cannot be obtained from one of the two owners, the ground stays and the application is refused in part or in full.

How much does consent from a major international brand cost?

In our practice — from 100,000,000 UZS upward, more often a flat refusal. The IP departments at Coca-Cola, Nestle and Unilever issue consent rarely and only if your brand operates in a geographically or product-wise isolated niche with no confusion risk. Renaming is faster and cheaper in this scenario.

Can consent be obtained retroactively, after a refusal?

Once a final refusal is issued, the application is rejected. A consent obtained later cannot be applied to that file. You have to file a fresh application with the consent attached from the start — losing the state fee, priority date and time.

Does the consent protect from later disputes between the parties?

Consent to registration does not license use. If your actual use of the mark causes real damage to the rights holder's brand — for example, consumers begin to confuse them on a mass scale — they can formally bring an unfair-competition claim. In practice such claims are rare because the rights holder voluntarily signed up to coexistence. But the legal risk exists, and for large deals it makes sense to structure a full coexistence agreement rather than a one-sided consent.

A provisional refusal citing similarity to a third-party mark is not the end of the application. In most cases the owner of the cited mark is willing to talk, and a letter of consent closes the ground faster and cheaper than any judicial alternative. The trick is not to spend two silent months and not to leap straight into a fight: the first phone call should go not to the IP Center but to the rights holder. The decision is made in a week, the document is drafted in a month, and the saving is half a year and tens of millions of soum.