Trademark assignment in Uzbekistan: contract, IP Center recordal, traps

A Tashkent holding company decided in 2024 to "tidy up" and consolidate every trademark in the group onto the parent company. Thirteen assignment agreements were signed between subsidiaries and the parent, nominal amounts were paid, the entries went into the books, an internal order was issued. None of it was filed with the IP Center — "it's all inside the group, we don't need to." A year later, the production subsidiary lost an infringement dispute against a competitor who had started selling a similar product under the same mark: the court looked at the State Register of Trademarks, saw that the proprietor was still the subsidiary itself rather than the parent, and told the subsidiary to file the suit on its own. The subsidiary could not — it no longer had an IP lawyer, a budget, or any motivation; all IP work had moved to the parent. The claim was withdrawn. The mark kept earning, but at the moment it needed defending nobody had standing. This piece is about how not to sign an assignment that never reaches the register.

Assignment and licence are not the same thing

The distinction sounds trivial, but it is exactly what gets confused in half of all intra-group deals. A licence is permission to use the mark within defined limits; the proprietor stays in charge. An assignment is the full transfer of the exclusive right, permanently: the former proprietor loses all connection to the mark, and the new one takes it as a fully owned asset.

Three practical consequences follow immediately.

Standing to sue. After an assignment, only the new proprietor can bring infringement actions, demand seizures, or instruct the customs registry. The former proprietor is nobody. If the assignment has not been recorded and a competitor launches tomorrow, the suit is formally filed by a party that no longer has the product or any interest in defending the mark.

Use of the mark for preserving protection. If a mark is not used for three consecutive years, it can be cancelled through the non-use revocation procedure. Use only counts in favour of the recorded proprietor — or of a recorded licensee. An assignment that has not reached the register cuts both sides off: the former proprietor no longer uses (they sold it), the new proprietor uses but is not in the register.

Downstream deals with the asset. A trademark, as an intangible asset, can be pledged, contributed to share capital, or sold on. Every subsequent deal builds on what the register shows. If the first assignment is not recorded, the second is worth exactly as much as the first — that is, nothing against third parties.

Assignment is governed by the same chapter of civil legislation as licensing and requires the same formalities: written form and mandatory recordal at the Intellectual Property Center at the Ministry of Justice (the IP Center). Without recordal, the right has not transferred. The mechanics of licensing are in our licence-agreement guide; here we focus on what makes assignment different in practice.

The "consumer confusion" trap

This is the rule that breaks otherwise sensible deals. Under the Law of the Republic of Uzbekistan «On trademarks, service marks and appellations of origin of goods», an assignment is not permitted if it would mislead consumers about the goods or their producer. That sounds abstract; in practice it crystallises into three concrete prohibitions.

Prohibition 1: assignment of part of the classes that risks "splitting" the mark. If a company holds the mark "Aist" in NICE classes 29 (dairy) and 30 (bakery) and wants to sell only class 30, that is formally available. But if the buyer will use class 30 in a way that consumers cannot distinguish between which "Aist" is milk and which is bread — and the products sit next to each other in the same supermarkets — the IP Center may refuse to record the assignment. The test is the realistic likelihood of confusion in the mind of the average consumer.

Prohibition 2: assignment of a mark that points to a specific producer. If the mark contains a reference to a place or to a person — a trade name, a founder's surname, a geographical name — and is being sold to a company with no connection to that place or person, the assignment can be blocked as misleading. Example: a "Chust Knife" mark registered to a blacksmith in Chust cannot be assigned to a producer in Andijan that does no physical work in Chust. The same goes for personal names — you cannot assign "Sidorov & Sons" to a company that has no Sidorov among its founders.

Prohibition 3: assignment of a mark separately from the underlying business, where the mark has come to identify a specific producer. This is especially painful for mature brands: the better-known the mark, the harder it is to detach it from its carrier. The regulator looks at whether the consumer recognises a specific legal entity or a specific physical operation behind the mark. If they do, an assignment without transfer of the business as a going concern — production facilities, know-how, key staff — is exposed to challenge.

In practice: intra-group consolidation — pulling marks onto a parent company — passes recordal almost every time, provided the parent continues to control the operating subsidiary economically. Assignment to an unrelated buyer in a different region for a different product line calls for care and is often structured as an assignment with a licence back to the seller, with a quality-control covenant.

What the assignment contract must contain

An assignment contract is short, but every line earns its place. Minimum kit:

• Full details of the parties. Not just "Alpha LLC" — full taxpayer ID, registration number, registered address, signatory and the basis of their authority. The IP Center returns contracts with incomplete party details without examination.
• Identification of the mark. Uzbekistan registration certificate number (for a national mark) or the international registration number with Uzbekistan as a designated state (for a Madrid mark). Not "the mark 'Alpha'" but "certificate No. MGU XXXXX of date Y".
• Scope of the assignment. All classes or specific classes. If part of the classes, list them precisely: "NICE classes 29, 30 in full". If part of the goods inside a class, list those goods using the exact wording from the certificate.
• Consideration. An assignment may be gratuitous, but a gratuitous transaction between unrelated parties draws tax-authority suspicion of hidden gift or hidden income. Between related parties, it triggers transfer-pricing exposure. Set a market price and back it with a valuer's report, especially if the amount is non-trivial.
• Moment of transfer. The right transfers on the date of recordal at the IP Center, not on the date of signing. Spell this out; otherwise the parties get confused about who can sue, invoice, or police quality from which moment.
• Seller's warranties. That the mark is valid, not challenged, not pledged, and not burdened with licences to third parties (and if it is, those licences are listed). That there are no cancellation actions, IP Center disputes, or unpaid renewal fees.
• Treatment of existing licences. If the mark is licensed to third parties, those licences survive the assignment. The new proprietor steps in as licensor automatically. The contract should list every active licence and attach copies.
• Allocation of the recordal fee. Who pays the state fee to the IP Center, who pays the trademark attorney. The post-Soviet default is split fifty-fifty, but fix it in the contract.
• Governing law. Uzbek law by default. For cross-border deals (e.g., a foreign buyer) the parties can choose foreign law for the contract itself, but recordal of the assignment is always governed by Uzbek rules.

What does not belong in the contract: a covenant that the former proprietor "will renew the mark" (after assignment they have no authority to), or a buy-back clause "if anything goes wrong" (that is an option, with its own formalities, not an assignment).

Timing and fees

Once signed, the contract is filed with the IP Center together with an application for recordal and a power of attorney for the trademark attorney (recordal practically always goes through an attorney — an Uzbek applicant can file in person, but a foreign buyer can only file through an accredited attorney).

Standard examination time: 1–2 months from a complete filing. In practice, around 30–45 working days for a clean deal. If the IP Center sees a confusion risk, an office notification goes out asking for an explanation, and the clock extends.

State fee — set by Cabinet of Ministers resolution and revised roughly annually. As of the date of writing, the indicative range is around 1,500,000 UZS for the recordal of one mark, plus an add-on per additional class for a partial assignment. Check the current IP Center fee schedule before filing: the rates round upward yearly.

Additional documents the IP Center will ask for, besides the contract itself:

• The original registration certificate of the mark (it will be reissued in the new owner's name).
• Spousal consent if the mark is registered to an individual and was acquired while married. A formality that gets forgotten and that later unwinds the recordal.
• Documents evidencing the signatories' authority on both sides.
• For an international registration, a separate notification of change of proprietor goes to WIPO; the IP Center records the assignment only for the designated state Uzbekistan, and the global change requires Form MM5 at WIPO.

Tax: VAT, profit tax, transfer pricing

Assignment of the exclusive right to a trademark is the supply of a property right and carries tax consequences. In short:

• VAT. Assignment of the exclusive right to a trademark is subject to VAT at the standard rate if the seller is VAT-registered. The taxable base is the contract price. Between related parties, the tax authority can re-assess if the price is clearly below market.
• Profit tax / personal income tax. The proceeds enter the seller's taxable base. For the buyer, the acquisition cost becomes the initial value of an intangible asset and is amortised over the remaining term of registration (taking into account expected renewals).
• Transfer pricing. Transactions between related parties must be at arm's length. The tax authority looks at trademark assignments between parent and subsidiary especially carefully, because they are a classical profit-shifting instrument. You need either a valuer's report or a "cost-plus / royalty-rate" justification under the transfer-pricing methodology recognised by the Tax Code.
• Foreign buyer. If the seller is Uzbek and the buyer is foreign, withholding tax may apply — it depends on the double-tax treaty with the buyer's country. Without a tax-residency certificate from the buyer, the full rate (not the treaty-reduced one) can bite.

This is the part of the deal where the IP lawyer and the tax adviser must work as a pair. The IP lawyer drafts the contract and runs the recordal; the tax adviser does the maths so the economics of the deal do not get burned on fees and reassessments.

Assignment in M&A: what to check when you buy the business

If you are buying a business with trademarks on its balance sheet, do not rely on the "group marks" schedule attached to the SPA. The minimum due-diligence pack:

1. Reconcile the declared list of marks against the State Register. Pull an IP Center extract for each mark. Does the registered proprietor match the seller? If not, who is the real proprietor and why are they not a party to the deal?
2. Check the renewal date for every mark. Has the grace period been missed? Full breakdown in our renewal guide.
3. Existing licences and pledges. Every recorded encumbrance passes to the buyer. If the mark is pledged under a loan, after the assignment the buyer carries the encumbrance.
4. Disputes. Are there pending oppositions, invalidation actions, or filings before the IP Center's Board of Appeals?
5. Use. Is the seller actually using each mark? If not, the mark is exposed to non-use revocation, which destroys the asset's value the day after closing.
6. International leg. Are there Madrid registrations? Which states are designated? Is the mark inside the dependency period — meaning the seller's basic national application can collapse the whole international structure?

The SPA usually carries a dedicated "IP assets" schedule and a closing condition: "assignment recorded at the IP Center". Without that last item the deal does not close — otherwise a year on you find yourself in the position of the holding company in the opening story: the formal owners, but not according to the register.

If you need help structuring an assignment, doing IP due diligence, or recording a transfer at the IP Center, our trademark practice handles all of it end-to-end — from contract draft to the reissued certificate.

In short

• Assignment is the sale of the mark in full; licence is permission to use. Do not confuse them: the tax and legal consequences differ.
• An assignment contract must be recorded at the IP Center. Without recordal, the right has not transferred against third parties — even with money paid and signatures in place.
• The no-consumer-confusion rule blocks part of all deals: assignments of partial classes with confusion risk, of marks with geographical or personal elements, and of marks economically tied to a specific operating business.
• State fee — indicatively from 1,500,000 UZS; recordal — 1 to 2 months.
• VAT, profit tax, transfer pricing — a separate layer to compute before signing, not after.
• When buying a business, check the marks against the IP Center register yourself; contractual warranties are no substitute for a register extract.

Frequently asked questions

Can I assign only some of the goods inside a single class? Yes. An assignment can cover all classes, specific classes, or specific goods inside a single class. The contract has to quote the exact wording from the certificate — a single-word divergence gives the IP Center grounds to return the file for correction.

What happens to existing licences after the assignment? The licences survive. The new proprietor automatically becomes licensor under every recorded licence. So when buying a mark, always demand the list of active licences and copies of the agreements — otherwise you are buying a mark whose right to use is already taken by third parties.

From what moment can the buyer file infringement suits? From the date the assignment is recorded at the IP Center. Not the contract date, not the payment date. If a competitor starts infringing during that gap, the suit is formally filed by the former proprietor — and that is where disputes arise if the parties have not agreed in advance how to allocate such claims.

Do we have to notify the tax authority of the deal? The assignment itself does not require a separate notification, but the transaction goes into both parties' ordinary reporting. For larger transactions (above transfer-pricing thresholds), the tax authority can request a market-pricing justification. Between related parties the risk is always higher, regardless of size.

Can an assignment be "rolled back" if the parties change their minds? Technically — yes, by mutual termination and a reverse assignment, which is also recorded at the IP Center. That is two recordals, two fees, and months of time. The practical answer: do not sign an assignment the parties are not sure about. Use a purchase option or a conditional assignment with a deferred trigger that is recorded only after the condition fires.

Can the mark be assigned to a private individual? Yes, if that individual holds the status of an individual entrepreneur. A private individual without IE status — no: the mark protects a sign under which a commercial business is conducted, and a non-entrepreneur individual is not formally conducting one.

What if the IP Center refuses recordal on consumer-confusion grounds? Two routes. First, restructure as an assignment plus a licence back: the new proprietor assigns the mark to themselves and the former owner stays on as a recorded licensee with a quality-control covenant. That often defuses the confusion argument because the actual producer does not change. Second, appeal the refusal to the IP Center's Board of Appeals with an expert opinion confirming there is no consumer-confusion risk.

A trademark assignment looks like a simple transaction — a short contract, a single register entry. But behind that simplicity sit recordal refusals, disputes over the moment of transfer, and VAT reassessments that change the deal economics by tens of percent. A contract that never reaches the register is not an assignment. It is paper.