If you are planning on expanding the geographical scope of your services to the Eurasian area or if you are already operating there, the upcoming Unified Eurasian IP system may be an interesting addition to your international IP protection strategies for trademarks and designs.
Background on the Eurasian Economic Union
The Eurasian Economic Union (“EAEU”) currently includes five member states: Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia. The Treaty on the Eurasian Economic Union was signed on 29 May 2014 by the three founding nations, and it entered into force on 1 January 2015. The purpose of the EAEU is to support free movement of goods and services within the region. Numerous other treaties have also been signed which regulate, for example, customs control and trade between the EAEU member states and other countries. The legal framework for the functioning of the EAEU is provided by the Treaty on the Eurasian Economic Commission and other international agreements.
Now a unified IP protection system is being prepared to enable easier and more cost-effective protection of IP rights in the entire Eurasian territory.
Eurasian Trademarks in the Eurasian Economic Union
A Eurasian trademark registration will provide protection in all five EAEU member states with a single application. The trademark will be valid for ten years measured from the date of registration. In addition to entirely new applications, the system also will benefit trademark owners who have identical registrations in all member states covering the same goods or services, as these earlier registrations may be converted into a Eurasian trademark. The system is expected to enter into force later this year once all member states have ratified the Treaty on Trademarks, Service Marks and Appellations of Origin of Goods of the Eurasian Economic Union (the “EAEU Treaty on Trademarks”).
The application, the procedural language of which is Russian, may be filed with any of the national offices, but for the mark to be successfully registered, the application must be accepted in all five member states. The receiving office will first perform a formal examination of the application. After the formal check third parties may file objections against the application based on earlier rights in any of the member states, although the process may be somewhat different from typical opposition proceedings that many of us are more familiar with from experience with EUIPO proceedings.
If the applicant is able to overcome the objections which have been raised, the application will proceed to substantive examination separately in all five national offices. The general requirement for registration is that the sign needs to be capable of being graphically represented. This differs from the requirements of the EU trademark regulation (EU) 2017/1001, according to which a sign must be represented in a manner which enables determination of the clear and precise scope of protection for the mark in question. If one (or more) of the offices refuses the application, it may be converted into national registrations in the remaining countries. The system promises relatively fast and simple prosecution as the registration process should take approximately one year from start to finish.
Enforcement of trademark rights is not covered by the EAEU Treaty on Trademarks but depends on national legislation of each member state. Thus, actions in infringement cases must be brought before the relevant national court. Also, any judgement issued by a national court is not automatically effective in other member states. It will be interesting to see if the courts will follow a uniform interpretation and how case law will develop in this regard.
Simultaneously with the new trademark system, a Unified Eurasian Customs Register (“EACR”) is being prepared to support customs control of counterfeit goods. Under the new system, one customs watch application will apply to each EAEU member state. Recordation in the EACR presupposes that the trademark enjoys protection in all five member states. According to currently available information a somewhat controversial requirement regarding proof of previous infringement will be applied.
In sum, the new Eurasian trademark system introduces an interesting option alongside national registrations and the Madrid Protocol. A Eurasian trademark may be an efficient way to protect and maintain your rights in the whole region with one application, as proof of use evidence may be accepted from any of the countries. As such, use in one member state should be sufficient to prove use within the whole EAEU territory.
Despite many promising features, several questions remain to be answered. What is the official fee for a Eurasian trademark application? Will the Eurasian trademark system join the Madrid Protocol? Is it possible to claim seniority based on one or more earlier national registrations? We should learn the answers to these and other questions in the upcoming months.
Background on the Eurasian Patent Convention
While the Eurasian trademark is based on the EAEU Treaty on Trademarks, the possibility of a Eurasian industrial design protocol was discussed at a conference in 2019 by the 8 member states of the Eurasian Patent Convention (EAPC) - Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan. The meeting resulted in the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention (“the Protocol”), which was recently signed by all EAPC member states. The Protocol entered into force on 17 March 2021. Note that the 8 members of the EAPC include each of the 5 countries which are part of the EAEU system for trademarks, plus Azerbaijan, Tajikistan and Turkmenistan.
Eurasian Industrial Designs Under the Eurasian Patent Convention
For a Eurasian industrial design to have legal effect in the territory of a member state, an application should be filed after the Protocol entered into force in that specific member state. Entries became effective on 17 March 2021 in Armenia, Kyrgyzstan and Azerbaijan, and are expected on 11 April in Russia and 12 April in Kazakhstan, respectively. Entry dates for Belarus, Turkmenistan and Tajikistan are currently unknown. The EAPO Administrative Council, which is scheduled to meet on 14 April 2021, will decide on the starting date for accepting applications for the grant of Eurasian industrial designs.
A Eurasian industrial design application can then be filed with the Eurasian Patent Office (“EAPO”) or with any of the national offices of the EAPO member states. It is, however, unclear at this point whether the national offices will examine the applications or whether they will act as receiving offices, forwarding the applications to the EAPO for examination. Furthermore, there are indications in the Protocol that a conversion of a Eurasian design application to a national application may be possible. We also will learn in the future if a multiple design application can be filed according to the Protocol.
The procedural language of a Eurasian design application will be Russian. Regardless of the filing office, the filing fee will be the same. The examination requirements are uniform, and the examination is expected to take approximately 6 months. The scope of protection will be determined by the appearance of a product, illustrated in the drawings/views of the design. Technical solutions or functional characteristics of a product are not protected.
Eurasian industrial designs widen the regional possibilities of protection for the appearance of products, alongside inventions, having legal effect in all EAPC member states simultaneously. The protection is valid for 5 years from the filing date of the application and this 5-year period can be extended 4 times, resulting in a maximum term of protection of 25 years.
It is still not clear precisely how prosecution and enforcement issues will function under the new Eurasian industrial design system.
The new Eurasian IP system will significantly increase possibilities of IP protection in the Eurasian region. This should be kept in mind when planning an international IP protection strategy, particularly if, for example, Russia and/or Kazakhstan play any role in your overall IP protection plans. There are no customs borders between the EAEU countries, which allows free movement of goods and services within the region. Therefore, utilizing this system to protect your brand in the entire EAEU region could be an effective strategy even if you are planning to expand the geographical scope of your products or services to some but not all member states.
Despite a few remaining questions and uncertainties, Eurasian trademarks and designs already look like an attractive option to add to existing IP strategies. Stay tuned for more news on these topics as it becomes available.
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