Gowling WLG (International) Inc - Russia
The Eurasian trademark system is a regional system that allows a trademark to be registered in all of countries of the Eurasian Economic Union (EAEU) by submitting a single application. EAEU member states currently comprise Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia. A single customs space operates within these territories and sets down a vast regional principle of trademark exhaustion. This necessitates the registration of a trademark within all EAEU member states in order to provide effective protection of a brand owner’s rights, which can be crucial when it comes to combatting counterfeits and parallel imports.
The discussion of the need to create a regional trademark system for registering trademarks in the EAEU has been underway since 2017. In February 2020, member states signed the EAEU Treaty, which came into effect on 26 April 2021 – World IP Day. A few weeks later, the Eurasian Economic Commission approved the instruction to the EAEU Treaty, as well as a list of legally significant actions and fee rates.
Key points of the registration procedure
The instruction to the EAEU Treaty regulates the Eurasian trademark application process, trademark registration procedures, renewal processes and the disposal of trademark rights. It also contains standard forms, including the trademark application and the Eurasian trademark certificate.
Key features of the Eurasian trademark system include the following:
- Only designations that can be represented in graphical form can be registered as a Eurasian trademark. Non-traditional trademarks (eg, sound and smell marks) cannot be registered.
- Trademark applications must be filed in Russian or a language of an EAEU member state with a Russian translation attached.
- A trademark application must be submitted in electronic form. Paper trademark applications may only be filed temporarily in the event that there is a technical inability to process the trademark application electronically.
- Applicants must apply to the national trademark office of the EAEU country where they have an accredited place of business. Those from non-EAEU member states are entitled to apply to any national trademark offices in the EAEU.
- Any interested party can file an opposition against the Eurasian trademark application within three months from the publication date of the application.
- An applicant has the right to submit a response to the provisional refusal within three months from the receipt date.
- An applicant has the right to appeal the decision of a national trademark office by sending an objection against such a decision directly to that national trademark office.
- An applicant has the right to nationalise the application in the EAEU countries that may approve it, even if the entire Eurasian trademark application was rejected.
- The total time from application to registration for a Eurasian trademark is expected to be approximately eight months (in the absence of office actions or a provisional refusal), which is shorter than the registration period under the national or the Madrid systems in EAEU countries.
- A Eurasian trademark is valid for 10 years starting from the application filing date with the right of extension for an unlimited number of times.
- Any interested person can cancel a Eurasian trademark due to non-use if it has not been used within three years from the date of its registration in the territory of each EAEU country.
- A transfer of the exclusive right to a Eurasian trademark must take place in the territories of all EAEU member states at the same time and is subject to registration with the filing office.
- A licence agreement on a Eurasian trademark must be registered in the national trademark office of the EAEU member state where the right to use the trademark is granted.
- Disputes related to the violation of the exclusive right to a Eurasian trademark on the territory of an EAEU member state are resolved in accordance with the legislation of that respective state.
The Eurasian trademark system has features related to the payment of fees that distinguish it from both the national and the Madrid systems, particularly:
- the applicant must pay the filing fee, as well as the registration or renewal fee, to the office of filing; and
- the substantive examination fee is payable by the applicant to each national office separately.
The approved list of fee rates, which are in Swiss francs, suggests that it is more cost-effective to register a Eurasian trademark than it is to register trademarks in EAEU countries individually under the national or Madrid systems.
For example, the total fee for registration of the Eurasian trademark in relation to one class by a Russian applicant is Sfr1,220; while the registration fee for the international trademark under the Madrid Protocol by a Russian applicant in five EAEU countries will be about Sfr1,343 (including fees for the registration of a basic trademark). The cost of registration of national trademarks in five EAEU countries will be much more expensive due to the need to pay for the services of patent attorneys in all EAEU countries.
The Eurasian trademark system offers applicants a number of advantages, particularly:
- the submission of a single application to register a trademark in all EAEU countries;
- a shorter registration period;
- lower registration costs; and
- cancellation due to non-use only if it has not been used in all EAEU countries.
It is expected that brand owners will soon have the opportunity to use the new regional trademark system to register their marks in the EAEU. However, the strategy and best options for registration in EAEU countries should be selected in each specific case. This will depend on the selected designation, the results of clearance searches (if they were conducted before filing the trademark application), the brand owner’s business plans and other related factors.