New proposed Eurasian trademark system
On March 28 2017 Gowling WLG, together with the American Chamber of Commerce in Russia, convened a roundtable on parallel imports and IP rights as part of the International Trade Association pre-annual meeting events around the globe. One of the panel members, Deputy Head of the Eurasian Economic Commission (EEC) Sergei Shurygin, confirmed that the Eurasian Economic Union (EAEU) intends to move forward with plans to introduce a new Eurasian regional trademark.
Much like the European Union, the EAEU is a political and economic union of five member states: Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia. It was established on January 1 2015. The EEC is the permanent regulating body of the EAEU.
On February 2 2017 Russia announced that it would seek to ratify the draft Agreement on Trademarks, Service Marks and Appellations of Origin that had been proposed by the EAEU. The agreement introduces the concept of the Common Economic Space (CES) trademark. Much like the European trademark, the proposed CES trademark is a regional Eurasian trademark that covers the territories of all EAEU member states.
The CES Trademark Register will co-exist alongside national registers, which will continue as before. Brand owners will have the option of applying to register a CES trademark, a national trademark, or both.
Filing and pre-grant opposition
Under the CES trademark regime, a brand owner may file an application in the national trademark office of any member country where it has an accredited place of business. After receiving an application, the office of filing performs an examination for formalities and notifies the national trademark offices of each member state. The application is then published on the CES website and there is a three-month window to file a pre-grant opposition. If there is no opposition, the application proceeds to substantive examination in each national office. Each national office, including the office of filing, delivers an examination opinion to the office of filing. If the mark is accepted, the applicant is informed and can pay the final fee. Each registration is valid for 10 years.
If a national trademark office rejects the mark, the applicant can appeal directly to that national office. If it does not appeal or the appeal is rejected, the office of filing will reject the whole CES application. In such case, the applicant has two options:
- If the negative opinion can be overcome by narrowing the list of goods to which the mark applies, the CES application can proceed to allowance.
- The applicant can choose to nationalise the CES application in the countries that approved it – in such case, the applicant files a notice of conversion and the application continues in those regional offices as a national application.
The agreement also envisages other options for conversion. For example, a person who has filed a national application in Russia can elect to convert the pending application into a CES application by giving notice and paying the requisite fees (Article 4(5)). Further, Article 14 of the agreement allows the owner of a national registration to request a CES trademark certificate provided that certain circumstances are met and the mark, the named owner and the list of goods and services are unchanged.
The details as to how the process is to be administered will be set out in official guidelines to be released.
If the mark is deemed to be registrable on absolute and relative grounds, the applicant is informed and can pay the final fee. Each registration is valid for 10 years, and this term can be renewed.
A CES trademark registration can be enforced or invalidated in each member state under the local laws of that country.
The creation of the CES trademark system will ultimately be advantageous for brand owners and is consistent with the creation of the EAEU free trade zone and unified customs register. All member states are expected to ratify the draft agreement by the end of 2017. Shurygin said that he expected that implementation of the new CES trademark regime would be as early as 2018.
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