March 25, 2024
Legal protection of intellectual property. Part 2.
Contents:
- Judicial practice
- Law enforcement practice
1. Judicial practice
Currently, the problem of infringement of intellectual property rights is becoming increasingly relevant both in the world as a whole and in Uzbekistan, due to the socio-economic consequences of this phenomenon. Therefore, judicial resolution of disputes related to intellectual property objects is the most important and relevant in this area. In the Republic of Uzbekistan intellectual property is subject to protection, although in comparison with other countries, the number of disputes considered in Uzbekistan is much less. Exclusive rights to the results of intellectual activity and means of individualization are protected either administratively or judicially, depending on the nature of the dispute.
In accordance with Article 1040 of the Civil Code of the Republic of Uzbekistan, exclusive rights to intellectual property objects shall be protected by the methods provided for in Article 11 of the Code. In addition to the methods of protection specified in this article, the protection of exclusive rights may also be carried out:
- seizure of the material objects through which the exclusive rights were infringed and the material objects created as a result of such infringement;
- mandatory publication of the infringement, including information on who owns the infringed right;
- by other means provided for by law.
And in case of breach of a contract on creation and use of results of intellectual activity and means of individualization, the general rules on liability for breach of obligations shall apply.
The statistics of judicial practice in the field of intellectual property in the Republic of Uzbekistan makes us realize that every year the number of cases considered in our country is increasing and they are more and more diverse. As a consequence, we will consider the court disputes that have taken place during the last 3 years in the Republic of Uzbekistan, namely 2021, 2022 and 2023.
In 2021, the Civil Courts handled 7 cases, with the largest number of cases related to copyright infringement. In this area, of the 4 cases, only 3 were granted and one was left pending. In the area of patent rights, there was only one case that was successfully resolved in favor of the applicant. In the area of trademarks, there was only one case, but it was upheld. The last case was simply dismissed.
For example, the Prosecutor’s Office of Tashkent city filed a lawsuit in court to protect the personal non-property and property rights of Plaintiff, demanding from the publishing house, demanding from the publishing house, which is an enterprise owned by the Defendant to recognize as invalid paragraph 4.2 of the author’s contract No. 63-2019 dated 02.04.2019 and to pay the fee. The Civil Court of Shaykhontakhur district of Tashkent city made a decision based on Articles 356 and 128 of the Civil Code of the Republic of Uzbekistan and obliged the Defendant to pay the fee according to the contract dated 02.04.2019 in favor of the Plaintiff.
As for 2022, 15 cases have already been considered. Of these, 3 were left unchanged, 4 were partially satisfied, 1 was sent to another court, 2 were finalized, 1 was not satisfied, 1 was not considered, 1 was rejected and only 2 were satisfied. As an example, we can mention a case when the Plaintiff learned about the infringement of his copyright by the Defendant. As indicated, a poem written by the Plaintiff in 1993-1994 was performed by the Defendant publicly on television in 2021. Thereby, the Defendant requests restoration of its infringed copyright, payment of compensation and compensation for moral damages. The Defendant was found guilty under Article 1771 of the Civil Code by the Andijan Inter-District Civil Court. It is noteworthy that while in 2018 this article was not used at all, in 2019 8 persons were brought under it, in turn in 2020 it was not used either.
In 2023, a total of 36 cases were heard by the civil courts. According to the statistics, the most cases were considered on the protection of copyright and related rights, namely 25 cases. Of these, 4 were not satisfied, 6 were left without consideration, 4 were left unchanged, 5 were partially satisfied, 1 was rejected, 1 was terminated and only 4 were satisfied. As for trademarks, only 4 cases were considered. 2 of which were satisfied, 1 was amended and 1 was left pending. At the same time, in the area of trademarks, there was 1 case that was left pending. In the area of software, there were 4 cases, 1 reversed, 1 not granted, 1 partially granted and another 1 left unchanged. Finally, there were 2 cases concerning claims for damages arising from intellectual rights, 2 of which were dismissed.
There are currently two problems in Uzbekistan’s judicial practice. The first is that judges do not have sufficient experience to consider cases, and the second is the lack of understanding on the part of persons applying to the courts of their rights and inability to provide evidence. In general, the judicial practice of such foreign countries as Canada, Spain, Italy, France, Sweden, Belgium, Denmark, Finland, Norway, etc. shows that in these countries cases related to intellectual property were considered by specialized courts established for this purpose. For example, in Japan the Supreme Intellectual Property Court was established, in Mexico a regional court, and in Great Britain even the Copyright Tribunal and the Patent Court. According to statistics and studies, in these countries, thanks to the creation of specialized courts, the number of infringements of intellectual property rights has significantly decreased. The reason was that previously the courts, as in other countries, had only a narrow specialty in this area due to the complexity and professional peculiarity of cases. When specialized courts were established, all areas of intellectual property began to be covered, as judges were professionally trained and focused only on the subject of consideration of this area. Having studied the experience of foreign countries, it can be concluded that the establishment of specialized courts to consider intellectual property disputes will allow to resolve such disputes efficiently and quickly, preventing unnecessary red tape and ensuring the issuance of fair and lawful decisions. As a consequence, it is proposed to add relevant chapters to the Code of Civil Procedure, the Code of Economic Procedure and the Code of Administrative Responsibility of the Republic of Uzbekistan, establishing the procedure for judicial resolution of disputes related to intellectual property rights.
2. Law enforcement practice
In terms of enforcement, there are also a number of challenges in the area of intellectual property. In April 2018, the Office of the United States Trade Representative (USTR) issued a special report (2018 Special 301 Report) focused on intellectual property issues. The USTR document listed trading partners that fail to provide adequate and effective intellectual property protection and published a “watch list” of 24 states, including Uzbekistan. Article 11 of the Civil Code of the Republic of Uzbekistan defines the means of protecting civil rights, which may be through recognition of the right, restoration of the situation that existed prior to the violation of the right and suppression of actions that violate the right or threaten to violate it, compensation for losses, recovery of penalties and compensation for moral damage, etc. In addition, article 1040 of the Civil Code specifies how exclusive rights to intellectual property objects may be protected. Article 65 of the Copyright and Related Rights Act also specifies the protection of copyright and related rights. It should be noted that article 149 of the Criminal Code establishes criminal liability for infringement of copyright or inventive rights. Analysis of the state of the national legal system allows us to assert that Uzbekistan has created an effective legislative framework for copyright protection and enforcement that meets international standards in this area. However, at the same time, there is a need for further improvement of legal regulation and practice of application of legislation in this area.
According to research, the most pressing problem is the protection of copyright in the field of the Internet, as the means of copyright protection on the Internet in the Republic of Uzbekistan is difficult to implement in practice. Unfortunately, the legal framework and law enforcement practice do not keep up with the rapid development of the Internet and leads to the emergence of offenses that require their resolution and settlement. The author, whose rights are violated, can apply to the court, but sometimes it is impossible to identify the offender. In addition, judicial protection of copyrights in Uzbekistan is a complicated and expensive process, so that such disputes are not actually resolved. This may be due to the low level and sometimes complete lack of understanding of copyright by courts and judges. Another problem is that the necessary financial and time costs discourage authors from going to court. Separately, it should be noted that the main unresolved issue is the lack of widespread practice of right holders to bring civil claims to the courts compared to the volume of infringements in the field of intellectual property. The norms of other branches of law, including criminal and administrative law, protecting the rights to intellectual property objects, are also rarely applied in practice. Also, the legislation of the Republic of Uzbekistan on intellectual property should be supplemented with special norms that would ensure proper protection of the rights of underage authors, as well as authors recognized in accordance with the established procedure as incapable or with limited legal capacity.
Related rights. In the Republic of Uzbekistan, as in many other countries, there are a number of problems in law enforcement practice in the area of related rights. One of the problems is that according to Article 43 of the Law of the Republic of Uzbekistan “On Copyright and Related Rights” it is enshrined that the rights of the performer are recognized in accordance with this Law, provided that the performer and (or) the phonogram producer is a citizen of the Republic of Uzbekistan. In addition, the performance first took place on the territory of the Republic of Uzbekistan, regardless of the nationality of the performer. Consequently, in law enforcement practice there are many cases when foreign citizens who are performers and (or) producers of phonograms face the fact of copying the lyrics or motives of their music and publishing them on music venues in the territory of our country. This Act also recognizes the related rights of foreign legal entities and individuals protected in Uzbekistan in accordance with the international treaties to which Uzbekistan is a party. Despite the fact that the Republic of Uzbekistan is a member of the Convention for the Protection of Producers of Phonograms against Illegal Reproduction of their Phonograms, it is also necessary to protect personal non-property and property rights of foreign citizens at a new level by making additions to this Law.
Patent Law. Legal protection of intellectual property objects is realized through patenting, obtaining a certificate and depositing these objects. In accordance with the Law of the Republic of Uzbekistan “On Inventions, Utility Models and Industrial Designs”, a patent is granted for an invention, utility model and industrial design. The main problem in monitoring the law enforcement practice can be noted that bona fide users (business entities) of certain intellectual property objects have difficulties in protecting intellectual property objects, which they own and use in good faith. The process of filing a patent application and its registration takes a long time. Formal examination takes place only after two months from the date of filing of the application for the grant of a patent. Then, publication of the particulars of the invention application is made in the official gazette after eighteen months from the date of filing of the application accepted for examination. At the request of the applicant, the time limits may be shortened, but due to the fact that in most cases there is no increased awareness in this field, it is suggested to shorten the time limits. In addition, it is important to correctly identify those technical solutions that may be subject to patent law. A patent is granted either for a single invention or for a group of inventions united by a single inventive, creative idea. For example, a device and a method of its use, a process and a device realizing this process, a substance and a method of its production. Competent and correct choice of the object of patent protection will help to save both time and money, which will be required to obtain a patent. Hypothetically, everyone can independently execute and file an application. But a patent attorney will help to accurately and competently determine the scope and formalize patent claims.
Right to means of individualization. As for the protection of trademark rights, this institution is an important factor of success in business, especially for large national and international companies. Large national and international companies wishing to enter the Uzbek market try to obtain guarantees of protection of their intangible assets, such as patents, trademarks, industrial designs, copyrights and others. According to information from the Ministry of Justice of Uzbekistan, a number of world-renowned brands have encountered difficulties in entering the local market because their trademarks were previously registered to Uzbek entrepreneurs. There have also been cases of copying or imitation of products of these brands. The main problem in the Uzbek market is the issue of counterfeit products and the fact that in our country there is no specific type of punishment for such violations. The fine stipulated in the Code of Administrative Responsibility of the Republic of Uzbekistan (CAR) for issuing a counterfeit for individuals is a maximum of 5 basic calculated values (BCV), and for officials – from 10 to 20 BCV. At the same time, a maximum of 30 BCV is payable for repeat offenses. The same offenses committed repeatedly within a year after the application of an administrative penalty shall entail a fine of thirty to fifty basic calculation units with confiscation of the objects of the offense. Due to the fact that such price is acceptable for entrepreneurs and there is no specialized body dealing with confiscation of counterfeit goods, their production continues. In order to prosecute offenders and confiscate counterfeit products, right holders apply to the Committee for the Development of Competition and Consumer Protection of the Republic of Uzbekistan (Antimonopoly Authority) with a request to initiate a case of unfair competition. Over the past 5 years, the number of complaints about unfair competition in the field of intellectual property, according to the Antimonopoly Authority, has increased more than 7 times. However, due to the fact that there is no criminal liability, offenders continue to produce counterfeit products. As a consequence, it is proposed to create an authorized body that would deal with the elimination of offenses and seizure of counterfeit products, as well as to tighten the norms so that the production and importation of counterfeit products would not only be subject to a fine, but also to criminal liability measures.
Right to trade secrets (Know-How). Any latest technology, information or development may be considered a trade secret. The right to protect undisclosed information from unlawful use arises regardless of the fulfillment of any formalities with respect to this information (its registration, obtaining certificates, etc.). Under labor legislation, in the event of disclosure of a trade secret, the employee is liable for material liability in the full amount of the damage caused. Under civil legislation, an infringer of the exclusive right to a trade secret, including a person who unlawfully obtained information constituting a trade secret and disclosed or used that information, as well as a person obliged to maintain the confidentiality of a trade secret, is obliged to compensate for losses caused by the infringement of the exclusive right to a trade secret, unless other liability is provided for by law or a contract with that person. Administrative liability is also provided for. The Criminal Code deals with the punishment for unauthorized access to classified information. And the amount of punishment depends on the purpose of the violator (e.g., self-interest), the fact of collusion of several people, and the degree of harm caused by the violation. It is important to keep in mind that protecting trade secret rights requires proof of the existence of the secret itself and the fact of its unlawful disclosure or use. It is therefore important to provide adequate documentation and evidence to prove the infringement of trade secret rights. Reportedly, those whose rights are infringed cannot prove the infringement itself.
Thus, despite some shortcomings and challenges in the justice system, positive changes and reforms aimed at improving the quality of law enforcement can be noted. It is important to continue working on improving the legislation, enhancing the professionalism of judges and lawyers, and making legal aid accessible to all segments of the population. All this will strengthen fidelity to the law and justice in Uzbekistan.
