Free Advice

+7 495 775-16-37

info@zuykov.com

 

Features of the registration of license contracts and agreements of commercial concession in the Republic of Uzbekistan

Dec. 15, 2018

Having a varied experience of registering agreements in the former CIS countries, as well
as having the intention to register a chain of franchising agreements at the Patent Office of the
Republic of Uzbekistan, we have addressed to our partners with a request for interaction.
However, when discussing the issue, we have encountered a number of peculiarities that I would
like to draw your attention to.
Having addressed to a well-known patent firm, during the negotiations on the check and
filing the franchising agreements for registration, we felt very soon that this issue was not an
ordinary one, and additional consultations and discussion would be necessary to solve it. Among
other things, as it turned out, the contractual algorithm was also complicated by the fact that two
out of three agreements submitted had been concluded between foreign companies.
As a result, it became obvious that the registration of granting the right under a license
agreement did not raise the slightest questions, whereas granting the right under a franchising
agreement had a different registration mechanism. Also, it was unambiguously clear that it was
not possible to carry out such registration with the Agency on Intellectual Property of the
Republic of Uzbekistan.
After the request for an official consultation at the Ministry of Justice and the Ministry of
Foreign Trade of the Republic of Uzbekistan made by our partners as to whether the agreements
submitted complied with the legislation, we were reported that under the legislation of the
Republic of Uzbekistan, the General Franchise Agreement should be registered with the Ministry
of Justice, however in case, when one of the parties to the agreement was a legal entity of the
Republic of Uzbekistan. As the agreements submitted had been concluded between two foreign
companies, these agreements were not subject to registration in Uzbekistan in accordance with
Resolution of the Cabinet of Ministers No. 244 “On Approval of the Provision on the Procedure
for the State Registration of the Agreements of a Comprehensive Entrepreneurial License
(Franchising).”
According to the above said provision:
“A franchising agreement (significant changes and additions, as well as termination) is
subject to the state registration by the body that carries out the state registration of a legal entity
or an individual entrepreneur (hereinafter referred to as a registering body) acting as a licensor
under the agreement. Failure to comply with this rule shall entail the invalidity of the agreement.
If the licensor is registered as a legal entity or an individual entrepreneur in a foreign
state, the state registration of the franchising agreement (significant changes, additions or
termination) shall be carried out by the registering body of the Republic of Uzbekistan, that has
carried out the state registration of the legal entity or the individual entrepreneur, acting as a
licensor under the agreement.”
“In cases stipulated by the legislation of the Republic of Uzbekistan, the franchising
agreement that includes the exclusive rights to the subject matters of intellectual property is
subject to registration (a license agreement) at the Agency on Intellectual Property of the
Republic of Uzbekistan. In this case, the license agreement will be an integral part of the
franchising agreement. Failure to comply with this requirement, the relevant part of the
agreement (the license agreement), if other conditions of the agreement can independently
remain in effect, or the franchising agreement as a whole, shall be considered to be unconcluded
and invalid. In case the subject matter of intellectual property is not registered on the territory of
the Republic of Uzbekistan, the registration of the intellectual property right and its transfer

under the franchising agreement shall be carried out at the discretion of the parties to the
agreement. ”
According to the legislation of the Republic of Uzbekistan, in order to register non-
exclusive license agreements, it is necessary to submit to the Agency on Intellectual Property the
notarized originals of the license agreements in 3 copies (no legalization and apostilization of
the agreements are required), as well as the powers of attorney from the licensors and the
licensees.
The volume and the format of the documents required for filing for registration are
governed by the “Rules for registration of the agreements on the transfer of the right to an
invention, utility model, industrial design, selection invention, trademark, service mark and the
license agreements for their use, the agreements on a full or partial transfer of the right to an
integrated circuit topology, a full or partial cession of all property rights and the transfer of the
property rights to a programme for computing machines, a database,” which contain a number of
the provisions similar to the Russian legislation, in particular, that the license agreement with
respect to a trademark must contain a condition that the quality of the licensee’s products will
not be lower than the quality of the licensor’s products, and the licensor will monitor compliance
with this condition. However, there are a number of peculiarities, in particular, in case of
registration of a sub-license agreement, the original of the license agreement, or the properly
executed copy thereof, shall be filed for registration.
Coming back to the current situation, in which we needed to file the agreement concluded
between the foreign companies for registration – it would have been possible to exercise such
filing, if the agreements had been license ones, and, on the contrary, it was not possible to do so,
since the agreements were franchising ones.
After discussing the possible options of the way out of the situation, it was decided to
prepare 3 standard license agreements, however, in view of the fact that the potential cooperation
of the parties had been planned within the framework of the concluded franchising and the
exclusion of the significant conditions of interaction from the franchising agreement signed by
the parties was not possible, it was decided to reflect these franchising agreements as
appendixes to the standard license agreements.
Thus, the difficulty arisen in carrying out registration was overcome and as a result, the set
of documents was prepared and successfully registered, which fully complied with the legislation
of the Republic of Uzbekistan and, at the same time, it fully met the needs of our client.

Поделиться
Отправить
Линкануть

Author of article

Natalya Nazarova

Natalya Nazarova

Agreement’s Lawyer