Gowling WLG (International) Inc - Russia
In February 2020 the member states of the Eurasian Economic Union (EAEU) – Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia – signed the EAEU Treaty on Trademarks, Service Marks and Appellations of Origin. In October, the Russian State Duma signed the treaty, which will come into force as soon as all member states bring their registration procedures and official fees in line with the treaty and complete the ratification process.
President Putin signed Russia’s ratification on 9 November 2020. Other countries are expected to compete this in the first half of 2021.
The treaty introduces new processes for registering and managing trademarks and appellations of origin in the EAEU. Instead of separately registering a trademark or an appellation of origin in each EAEU country, the treaty allows rights holders to secure protection in all member states by submitting one application to any of the national IP offices. Applicants must file their application in Russian or an officially recognised language with a Russian translation to any of the national offices. In the event of a discrepancy in translations, the Russian version will prevail. Detailed, EAEU-approved requirements for applications will be specified in the instructions to the agreement.
After the relevant IP office has processed the application and verified formalities, the application will go to the other national departments for substantive examination. Once the mark is registered, it will be entered into the Unified Register of Trademarks of the Union and a single registration certificate will be issued to the trademark owner by the relevant IP office.
Designations must meet the registrability criteria in all EAEU member states in order to be registrable as an EAEU trademark. This mark is valid for 10 years, starting from the application filing date and is renewable for an unlimited number of successive 10-year periods. An EAEU appellation of origin is also valid for 10 years, starting from the application filing date, and is renewable every 10 years, provided that the conditions for its protection are maintained.
The treaty also allows national trademark applications to be converted into EAEU trademark applications and vice versa. There is also a provision for converting national trademark registrations that have already been granted in an EAEU member state into EAEU marks.
There is a requirement to use an EAEU trademark and they may become vulnerable for cancellation due to non-use after three consecutive years from the registration date. In order to keep the mark on the register, the rights holder must prove genuine use of the mark in at least one EAEU member country.
The regional trademark registration system is expected to become a convenient and cost-effective alternative to the national registration procedures in EAEU countries. According to the head of the Russia Patent and Trademark Office (Rospatent) Grigory Ivliev, this is a significant move towards integrating Eurasian countries and establishing a single territory for the legal protection of trademarks and appellations of origin that will stimulate economic activity in the region.
The treaty aims to reduce trade barriers associated with the territorial nature of exclusive rights and should also provide a useful mechanism for right holders in securing their rights, enhancing their brand protection activities and combatting counterfeits and parallel imports, among other types of unfair competition.
The treaty aims to facilitate the functioning of the EAEU Unified Customs Register with regard to the procedures of recording IP rights with the register, enforcing the register and combatting the traffic of illegal goods in EAEU countries.