Rebranding and your trademark in Uzbekistan: what happens to the registration

A Tashkent coffee chain ran for eight years under a combined mark — a wordmark plus a recognisable steaming-cup monogram. Growth came, they hired a studio, and the redesign landed: new typeface, a flat icon instead of the monogram, a new brand colour. The new logo went up on every storefront, the cups were reprinted, the signage was swapped overnight. The old mark stayed on the register; the renewal fee was paid like clockwork. Two years later a former manager who had left to open his own chain filed an application for a sign confusingly similar to their new logo. And technically he was clean: the new logo was registered nowhere, and the old, registered one was no longer in use. A rebrand done without a lawyer turned an eight-year-old brand into an unprotected sign in the time it took to mount new signage.

A registration protects the mark exactly as it sits in the register

This is the first thing to internalise before any redesign. The exclusive right does not attach to "your brand in general" — it attaches to a specific sign: the image and the wording filed with the application and entered in the State Register. The Intellectual Property Center protects, pixel for pixel, what you registered, not what hangs on your packaging today.

The uncomfortable but logical consequence: the moment the logo changes materially, protection stays with the old version and the new one stands bare. A competitor quick enough to file for a sign similar to your new logo gets priority — and now you are the one proving your rights, not them.

There is a counter-principle that softens the picture. The Paris Convention, to which Uzbekistan is a party, says plainly in Article 5C(2) that use of a mark in a form differing in elements that do not alter its distinctive character shall not entail invalidation of the registration. Minor cosmetics — different kerning, a light modernisation of the typeface, softened icon corners — do not sever the link between what you use and what is registered. The question is always the same: has the distinctive character changed? Everything in rebranding practice turns on that single question.

Where the line runs between "cosmetics" and a new mark

There is no rigid formula — the IP Center and the Appeals Board look at the overall visual impression. But practice has settled on fairly stable markers.

Probably still the same mark (no new application needed):

• Swapping the typeface for a close one while keeping the same word and legibility.
• A slight redrawing of a graphic element that stays recognisable.
• Rendering a mark registered in black and white in any colour — a black-and-white registration covers colour executions by default.
• Removing a purely decorative frame, shadow, or background panel that carries no distinctive weight.

Probably already a new mark (new application needed):

• Changing the wordmark — a different word, a different brand name. This is always a new mark, no exceptions.
• Replacing the dominant graphic element with another: the cup-monogram became a flat abstract icon — the distinctive character shifted.
• Moving from a combined mark to a purely verbal one, or the reverse.
• Changing a colour scheme fixed in the registration where the colour itself carried the distinctive function (the classic case being a signature shade as part of the mark).

A practical test before a redesign: show the old and new logo to someone who doesn't know your brand and ask — is this one company refreshing its look, or two different companies? If the answer is "two different ones," you are doing a new mark, not a refresh, and legally it is protected by no one right now.

What you can simply record in the register — without a new application

Part of "rebranding" never touches the image of the mark at all and is handled by an administrative entry in the register. No new application, no substantive examination, no new priority date — it is a cheap, fast amendment procedure.

Two common misreadings of this table. First: "we're just swapping one LLC for a new one" — if the rights-holding entity itself changes, that is not an amendment but a trademark assignment, a separate transaction with the contract recorded at the IP Center. Second: you cannot widen the list of classes in a live registration at all. Want to add cosmetics to your clothing mark? That is a new application for the missing classes, full stop.

What forces a new application

If the redesign crossed the distinctiveness line, there is one road: a fresh application for the updated sign. And here is where people get burned most often — a new application means a new priority date. The ten years of reputation that trailed the old logo do not transfer to the new filing date. By priority, your fresh, well-known logo is younger than any competitor's application filed yesterday.

So the new application cannot be put off "for later, when we get to it." The gap between launching the new logo into the market and filing for it is a window anyone can slip into. In practice the right moment to file is before the new logo appears on the storefront, not after.

Before filing, always run the new logo through a pre-filing clearance search. A redesign is essentially a new sign, and it may collide with someone else's mark that the old logo never met. Better to learn of a conflict before the studio has built a whole brand book on the new mark than after.

The non-use trap: the old mark you abandoned

This is the most underrated part of rebranding. Say you did everything right: filed the new application, it registered, the new logo is protected. The old mark keeps sitting in the register, the renewal is paid. It feels like insurance. That is an illusion.

A trademark in Uzbekistan is protected not by the fact of registration but by genuine use. If you have fully switched to the new logo and use the old one nowhere, after three years of continuous non-use the old registration becomes vulnerable: an interested party may seek early termination for non-use. The paid renewal fee won't save it — renewal requires no proof of use, but a non-use challenge requires from you a use file you simply don't have for an abandoned mark.

Hence the honest conclusion many skip: keeping the old registration on the register "just in case" while not using it does not preserve it. You have a choice:

• Keep minimal genuine use of the old form alive (part of the range, a heritage sub-brand, a limited series) — then the old registration stays live and continues to cover the period while the new mark matures.
• Or deliberately let the old mark go — but only after the new application has safely registered. Until that point the old registration is the only thing you can lean on in a dispute, and dropping it is premature.

What you definitely cannot do is abandon the old mark before the new one registers and sit in the gap with no live protection at all.

The right transition: run both marks overlapping

Put it all together and you get a clean sequence that closes each risk in turn.

1. Before announcing the redesign — run the new logo through the register for conflicts.
2. In parallel — file the new application for the updated sign. Do it before the new logo reaches the market: priority counts from the filing date.
3. Leave the old registration alone for now. It holds your protection while substantive examination of the new mark runs its course (typically up to 12 months, noticeably faster under the accelerated track).
4. If the details change too (entity name, address, form) — record the amendments as a separate entry so the register matches the company's current documents. The discrepancy will surface in any future dispute.
5. Once the new mark is registered, decide on the old one: keep using and renewing it, or let it go — knowing that an abandoned form becomes vulnerable after three years.

This "overlap" is not over-caution; it is the norm. Decade-old brands survive two or three redesigns, and each time a careful rights holder runs the old and new registrations in parallel for exactly as long as it takes to leave no gap between them.

Cost and timing

Amending the register (name, address, narrowing classes) is the cheapest procedure: a state fee in base calculation units plus a little attorney work, processed quickly. A new application for the redesign is a full registration with its own examination: the state fee is reckoned per class in base units (the IP Center tariff is revised roughly once a year — check the current figure before paying), plus budget on the order of 4,000,000–8,000,000 UZS in attorney fees depending on the number of classes and the complexity of the sign. Timing runs 12–18 months from filing to certificate on the standard track; if the redesign is already in the market and every month of bare protection is costly, the accelerated examination is worth it.

Compare that with the cost of the mistake from the opening story: recovering a hijacked brand through a dispute runs into tens of millions of soums and a year or more — no comparison with one timely application.

The 30-second decision

• Only the details changed (name/address/form of the same entity)? → Amend the register. No new application.
• Logo cosmetically refreshed, same word and recognisability? → Probably within Article 5C(2). Document what changed, in case of a dispute.
• Changed the word, the dominant graphic, or the colour identity? → New mark. New application, filed before market launch.
• Adding goods/classes? → New application only; you can't widen the old registration.
• Fully off the old logo? → Remember the three-year non-use clock on the abandoned form.

In short

• A mark is protected exactly as entered in the register — not "the brand in general."
• Non-material changes (Paris Convention Article 5C(2)) don't break protection; a material redesign does.
• A new word, dominant graphic, or colour identity = a new mark = a new application.
• A new application gets a new priority date; the old reputation doesn't carry over. File before the logo hits the market.
• Details and narrowed classes are register amendments, not new applications. You can't widen the class list.
• An abandoned old logo is vulnerable to early termination after three years, even with the renewal paid.
• The right transition: clearance → new application → run the old one overlapping → decide on the old after the new registers.

FAQ

We changed the font in our logo slightly. Do we need a new registration? If the word and overall recognisability survived and only the typeface shifted to a close one, you most likely stay within Article 5C(2) of the Paris Convention and protection holds. The line is distinctive character: if the overall visual impression changes, you need a new application; if it doesn't, recording the update for your own files is enough.

Our old mark is registered in black and white. We added a brand colour — is that a new mark? No. A black-and-white registration covers the mark in any colour by default. The reverse is the dangerous case: if the mark is registered in a specific colour scheme and the colour was part of its distinctiveness, switching the palette can take you outside the protection.

Can we "update" the image right inside the live registration without filing anew? You cannot change the essence of the mark in a live registration. You may enter only non-material corrections that don't touch distinctive character, plus administrative data (rights holder, address, narrowing of the class list). Any substantive redesign is a new application.

The company changed its name. What about the trademark? If the rights holder is the same legal entity, just renamed, this is an amendment to the register: the mark stays yours, no need to re-file it as new. If the mark passes to a different person, that is an assignment with the contract recorded at the IP Center — a separate procedure.

We launched a new logo six months ago and are only now thinking about registration. What's the risk? For those six months the new logo was unprotected. If anyone filed for a similar sign in that time, their priority is earlier than yours, and clearing the conflict falls on you. File immediately and check the register for any blocking sign that appeared in the meantime.

Do we need to renew the old mark if we've already moved to the new one? It depends on strategy. If the old form is still used in some way, or you want to hold it as a barrier, renew it and keep the use alive. If you've decided to let it go, do so only after the new mark is registered, or you'll sit in the gap unprotected. More on deadlines and the grace period in the renewal guide.

How long does the old mark keep protecting us after a rebrand? As long as it is in force by term (10 years from the filing date, with renewal) and as long as you genuinely use it. If use of the old form has stopped, the three-year clock toward non-use vulnerability runs regardless of whether the renewal is paid.

A rebrand is not a design-studio job with a legal tail — it's a legal procedure with a design part. A logo is changed in a week; priority lost on a new sign is recovered over years. Before you mount the new signage, answer one question: what exactly do you hold an exclusive right to right now — what's on the wall, or what's in the register? If those are different pictures, the application should have been filed yesterday. For preparation and handling — PACT's trademark services.