The State Duma is to approve a treaty on trademarks, service marks and appellations of origin of EAEU goods

Pepeliaev Group advises that the Russian Government is preparing to submit to the State Duma for ratification a Treaty aimed at establishing a regional system for registering trademarks, service marks and appellations of origin. When an application is filed with a national patent office within the scope of the system, it will help to obtain protection in each of the member states of the Treaty once an expert examination is complete.

The Agreement "On the common principles of regulation in the area of protecting and safeguarding IP rights" dated 9 December 2010 provides for the development of a separate treaty aimed at setting up a regional system for protecting trademarks in the post-Soviet area, to be followed by the protection of appellations of origin of goods. In 2014, the Agreement on the Eurasian Economic Union referred to the establishment of a regional registration system for the main areas of cooperation in the sphere of intellectual property. The Treaty itself was signed on 3 February 2020 by five states, including the Russian Federation, the Republic of Kazakhstan, the Republic of Armenia, the Republic of Belarus and the Kyrgyz Republic.

The procedure and grounds for obtaining protection

The Treaty sets such definitions as:

• a Union trademark means a designation which serves to individualise goods, work and/or services that is protected simultaneously in all member states;
• an appellation of origin of Union goods means a designation which represents or contains a modern or a geographical, official or unofficial, full or abbreviated name of a country, metropolitan or rural settlement, area or other geographic location, or a designation derived from such name which became known as a result of it being used with respect to goods whose specific features are solely or mainly determined by natural conditions and/or the human factor and that are protected simultaneously in all member states.

The definition of a trademark and appellation of origin set forth in the Treaty are in essence identical to the definitions contained in Russian legislation, except for the territory of their protection. These means of identification are protected simultaneously in all member states, rather than in a particular state.[1]

By contrast with Russian law, a Treaty refers to an individual as an applicant alongside the legal entity (i.e. it is not required to have the status of an individual entrepreneur).

To obtain legal protection under the Treaty, an applicant has to file an application with any national office of the member state of the Treaty. Such office will be deemed the office where the application has been filed. No preliminary application is required with the patent office of its state (place of location or place of residence) or registration of the trademark in it, as opposed to, for instance, the provisions of the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement.

The application should be documented in compliance with the requirements listed in the Treaty. The requirements virtually coincide with the requirements of Russian legislation. Moreover, the requirements will be detailed in the Guidelines to the Treaty approved by the Council of the Eurasian Economic Commission. The Guidelines will come into effect three months after the Treaty comes into force.

Please note that an application is to be filed with the office in the Russian language. If it is filed in another language, a translation into Russian must be provided. To conduct correspondence with the office, an applicant must indicate a correspondence address in the state with whose office the application has been filed. A national patent attorney's address can be indicated as such an address. At the same time, since existing bilateral agreements between member states allow for applications to be filed without national patent attorneys being intermediaries, the address of another representative can be indicated as the correspondence address.

The Treaty establishes a possibility of transforming national applications to a trademark into applications for a trademark of the Union and vice versa.

The conditions that the designations in applications must meet are based on the provisions of a number of international treaties the parties to which are member states of the Union. These conditions are traditional for a Russian applicant, but will apply having regard to their being complied with in all member states of the Treaty. In other words, the protection of a similar or confusingly similar trademark in at least one member state which is registered with respect to homogeneous goods and services will be sufficient to refuse registration of this trademark of the Union with respect to all member states. Protection of similar trademarks for homogeneous goods and services in several states prompts the need for obtaining consent letters from right holders of all such trademarks.

The Treaty provides for the publication of applications following which the office with which the application was filed forwards requests to all national offices for the amount of state duties payable for expert examination. Once such information is obtained, the applicant is informed that he has to pay all duties (in the total amount). An expert examination of the application filed with the office must be conducted at all offices of EAEU states once the information is received that state duties have been paid. The offices will interact electronically using the EAEU Integrated Information System.

If an application is filed with any, but only one, national patent office of an EAEU member state, an expert examination must be conducted in all EAEU patent offices. It is presumed that state duties connected with registration actions will be less than if one applies national registration procedures separately.

The office where the application is filed adopts a resolution on whether to register an EAEU trademark or to refuse such registration based on the resolutions of all national offices. If any of the national offices refuses registration, this will suffice for registration of a trademark to be refused with respect to all member states.

The Treaty stipulates the possibility of challenging a resolution of a patent office. Until one exhausts all national forums for challenging the resolution of a patent office, the office with which the application was filed may not adopt a final resolution.

The Treaty provides that it is possible to substitute a single trademark of the Union for several national trademarks. In this case, a relevant petition can be filed with any national office.

An exclusive right to a trademark of the Union shall be confirmed by the Certificate and shall remain in effect for 10 years with the possibility to renew it an indefinite number of times. It can be the subject matter of a transfer (assignment or disposal) of the right, or of the grant of the right of use (under a licence (sub-licence) agreement, franchise agreement (sub-franchise agreement), pledge or any other disposal using the methods set forth in national legislation.

The assignment of an exclusive right to a trademark of the Union must be registered at the office with which the application was filed; the grant of a right of use must be registered with the office of the state in which it is allowed to use the trademark of the Union.

The Treaty also governs relationships regarding the early termination of the trademark of the Union for non-use. The period of such non-use is set as three years. When a relevant dispute is resolved, the use of the trademark in at least one member state will be taken into account.

Disputes over the infringement of an exclusive right to a trademark of the Union in a member state will be resolved in accordance with the legislation of such state. Liability will be the same as for infringing an exclusive right to a national trademark.

What to think about and what to do

It follows from a Road Map of how the business climate should be transformed in the sphere of intellectual property (as approved by Directive No. 2027-p of the Russian Government dated 3 August 2020) that the draft law ratifying the Treaty will be submitted to the State Duma in Q3 of this year.

Companies that produce goods/provide services on and target the markets of goods and services in member states of the Treaty should register their trademarks (service marks) in advance with respect to all member states. Having a Russian application by the effective date of the Treaty will enable the company to transform it into an application for the registration of a trademark of the Union and, if all the established requirements are met, obtain protection in all member states.

If a company is planning today to supply its goods and provide its services in the above states, it seems expedient, in order to avoid future conflicts, to file applications with national offices of such states under national or international procedures, without waiting for the Treaty to come into force.

Help from your adviser

Pepeliaev Group’s lawyers have extensive experience in registering trademarks within the scope of national and international procedures and protecting intellectual rights before administrative and court bodies.

We have an extensive track record of cooperating and reliable links with patent attorneys from the EAEU states and are ready to provide legal support on all matters relating to the registration, challenging and protection of intellectual property not only in Russia, but also abroad.