Russian Federation: Protection Of Patents And Trademarks In The Eurasian Economic Union

Last Updated: 6 December 2017
Article by Evgeny Alexandrov

Most Read Contributor in Russian Federation, August 2018

Eurasian Economic Union (hereinafter, EAEU or Union) is the international economic integration organization founded under the Treaty on the Eurasian Economic Union entered into force on January 1 2015. As of end of August 2015 Belarus, Kazakhstan, Russia, Kyrgyzstan and Armenia are members of the Union.

There are no customs borders between the countries of EAEU and the goods can freely move within this single market space. In this regard the matter of protection of IP has become very important taking into account that every country-member has its own IP legal regulations which may have certain peculiarities from country to country.

Every EAEU country-member participates in all major international treaties regarding trademark and patent protection. Aside from that, Russia, Kyrgyzstan, Armenia and Kazakhstan are members of WTO and bound with obligations under TRIPS agreement. In view of these facts legislation of EAEU members is mostly uniform which makes cooperation in the field of intellectual property much easier.

Trademarks

There are various ways to obtain a trademark protection in countries of the Union, including through the national filing system and filing under Madrid trademark registration system.

In Russia, legislation on trademark protection is provided in Part IV of the Civil Code since 2008. In other EAEU countries, civil codes include only general provisions regulating legal protection of all intellectual property and some basic provision concerning certain types of subject matters. In these countries, issues relating to legal protection of trademarks are addressed in detail in special laws. In Armenia it is the law "On trademark" (2010); in Belarus, "On trademarks and service marks" (1993); in Kazakhstan, law "On trademarks, service marks and appellations of origin of goods" (1999); in Kyrgyzstan, law "On trademarks, service marks and appellations of origin of goods" (1998).

National trademark-related legislations of EAEU member-countries have a lot in common. For instance:

  • Legal protection is granted to a trademark on the basis of its state registration;
  • The exception is protection of well-known trademarks that is granted due to the provisions of Paris Convention;
  • Examination of applications is performed in two stages: formal (preliminary) examination and substantial examination;
  • There are similar conditions and procedures for establishing trademark priority, including convention and exhibition priority;
  • Substantial examination includes reviewing of both absolute and relative grounds;
  • Division of an application is possible before a decision on the parent application is adopted;
  • PTO's decisions and trademark registrations may be opposed in administrative and/or judicial bodies;
  • There is the possibility for termination of the trademark protection due to its nonuse.

In the meantime, there may be some differences in the local laws as regards to prosecution procedures as well as approaches of examiners.

Aside from national registration, trademark protection can be obtained on the territory of EAEU member-countries on the basis of the Madrid International Trademark Registration System.

Regional system of trademark protection in EAEU

The countries-members of EAEU have agreed on the draft of the Treaty on Trademarks, Service Marks and Appellations of Origin of Goods of the Eurasian Economic Union introducing a regional trademark and service mark protection system, providing establishment of a Union Trademark, as well as regional system for protection of appellations of origin of goods (geographical indications).

The said Draft Treaty does not envisage creation of a regional trademark office, rather it provides for collaboration of all EAEU countries' PTOs in examining of an application for registration of a Union Trademark, which would be valid in all EAEU countries. The Draft Treaty also provides that the Eurasian Economic Committee (EEC) will manage the Unified Register of Union Trademarks. All Union Trademark infringement cases on the territory of any Union's country will be handled in accordance with national legislation of this country, and the liability for the infringement of Union Trademark will be the same as for infringement of a trademark registered under the national procedure or an international registration valid in a given jurisdiction.

In order to register a Union Trademark, it will be necessary to file a single application in PTO of any EAEU country at the applicant's discretion. The application is to be filed in Russian regardless of what PTO is chosen by an applicant as a filing office.

Applicants from countries outside EAEU shall act through patent attorneys registered registered in the corresponding filing office.

The exclusive right to a Union Trademark will be valid for 10 years from the filing date with an option of multiple renewals each time for 10 more years. In order to renew a Union Trademark registration, it will be necessary to file a request to the filing office and pay renewal fees set forth in each of EAEU countries.

Preliminary (formal) examination will be carried out only by the filing office and the filing fee will be equal to the fixed fee in that filing office. In case of positive result of preliminary examination, the application will be published on the EEC's official site. After that, interested persons will be able to provide the filing office with their observations regarding registration of the claimed trademark.

Examination of a sign claimed as a trademark will be carried out by each national office of EAEU countries. The third parties' observations, if submitted, would to be considered by all national PTOs during the examination of the claimed mark. In the course of examination both absolute and relative grounds for refusal will be checked.

On the basis of national PTOs' opinions, the filing office will either adopt a decision to register a Union Trademark, or notify the applicant of the grounds for refusal communicated to the filing office by national PTOs. Any national PTO's refusal to register the claimed mark may be appealed in accordance with the respective country's procedure for such an appeal.

In case of positive opinions from all national PTOs, the filing office will make a Decision of Registration of a Union Trademark and enter the mark into the Unified Register of EAEU Trademarks.

The Draft Treaty provides that it will be possible to oppose a registered Union Trademark in a competent body of any EAEU country in accordance with procedure set forth by respective country's legislation, but only on the grounds provided by the treaty. Meanwhile, if a Union Trademark is ruled invalid by a decision of any competent body, the trademark owner will be entitled to file a national trademark application (or applications) preserving the priority date of the invalidated registration.

The exclusive right to a Union

Trademark will be valid for 10 years from the filing date with an option of multiple renewals each time for 10 more years. In order to renew a Union Trademark registration, it will be necessary to file a request to the filing office and pay renewal fees set forth in each of EAEU countries.

The Draft Treaty provides that a Union Trademark registration may be terminated early due to non-use. At the same time, use of the Trademark at least on the territory of one of the EAEU countries would be recognized as sufficient use for the purposes of maintaining the registration.

The countries-members of EAEU have agreed on the draft of the Treaty on Trademarks, Service Marks and Appellations of Origin of Goods of the Eurasian Economic Union introducing a regional trademark and service mark protection system

It is expected that the said treaty on the regional trademark will become effective at the beginning of the next year.

Appellations of origin of goods (geographical indications) in EAEU countries

EAEU countries have national registers of protected appellations of origin, including both appellations related to geographical objects inside that country and appellations related to the objects on other countries' territory. New entries are registered in those Registers by national PTOs under the procedures set forth by national laws. The procedures provide filing an application for registration of an appellation of origin and granting the right to use the said appellation or filing an application for granting the right to use the registered appellation of origin.

EAEU's Draft Treaty provides recognition of appellations of origin registered in EAEU countries as appellations of origin protected on the territory of all EAEU countries. It will be carried out by registration of the nationally-registered appellations of origin into the Unified Register of Union Appellations of Origin and issuance of a unified certificate of protection. Under the Draft Treaty, the Union countries shall not be obliged to protect another country's appellations of origins that are not protected or ceased to be protected in that country.

In order to obtain protection to appellations of origin on the Union territory applicants from EAEU countries will file corresponding applications to their national PTOs. Applicants from other countries may choose any EAEU country's PTO as their filing office. Procedure of registration of appellation of goods in EAEU countries' national PTOs and fees for filing an application are set forth by the each EAEU country's legislation, while a fee for registration of appellation of origin in the Unified Register will be determined as a sum of registration fees of all Union countries. For each appellation of origin registered in Unified Register the right holder will be granted with a single document certifying both protection of appellation of origin and his right to use it on the Union territory.

The Draft Treaty therefore did not provide for examining appellations of origin applications by each national PTO of EAEU countries; in fact, Union countries recognize as valid on the Union territory appellations of origin protection granted by a filing office upon payment of the respective fees by the applicant. This procedure will simplify obtaining of protection for appellations of origin on the territory of EAEU.

Patents

Technical solutions may be protected in Russia and other countries of the Union by a patent for invention or a patent for utility model. Also, there is the Eurasian Patent Convention (EAPC) which provides the possibility to obtain a regional patent for an invention valid in all Member-States.

The EAPC covers more countries than the Eurasian Economic Union, viz: Armenia, Azerbaijan, Belarus, Kyrgyzstan, Kazakhstan, Russia, Turkmenistan and Tajikistan. Hence, when making a decision to protect an invention the applicant should consider whether to file a Eurasian patent application covering eight countries or national applications in selected countries. The Eurasian patent system is used by applicants from over 80 countries of the world.

To perform administrative tasks relating to the functioning of the Eurasian patent system and grant of Eurasian patents, the Eurasian Patent Convention established the Eurasian Patent Organization with the Eurasian Patent Office (EAPO) acting as its executive body. The patent issued by the Eurasian Patent Office is in the Russian language and shall have the same effect in Member-States as national patents for inventions.

The EAPC does not recognize as inventions the following subject matters in those cases where a Eurasian application or a Eurasian patent are directly pertinent to any of the above-listed subject matter as such:

  • discoveries;
  • scientific theories and mathematical methods;
  • presentation of information;
  • methods of economic organization and management;
  • symbols, schedules and rules, including rules of games;
  • methods for performing mental acts;
  • algorithms and computer programs;
  • topographies of integrated circuits;
  • projects and plans for structures and buildings and for land development;
  • solutions concerning solely the outward appearance of manufactured goods and aimed at satisfying aesthetic requirements.

At that, as in many other jurisdictions Eurasian patents shall not be granted for:

  • plant varieties and animal breeds;
  • topology of integrated circuits;
  • inventions, the commercial use of which it is essential to prevent, for the purposes of protecting public order or morality, including the protection of the life and health of people and animals or the protection of plants, or in order to prevent serious damage being caused to the environment. In that regard, such use may not be considered such, solely on the grounds that it is forbidden by the legislation of one or more Member-States.

Any dispute relating validity of the Eurasian patent in a given Member-State, or the infringement, in a given Member-State, of a Eurasian patent shall be resolved by the national courts or other competent authorities of that State on the basis of EAPC and the Patent Regulations. The decision shall have effect only in the territory of the Member-State.

Conclusion

The above demonstrates that the legal environment on IP protection within the Eurasian Economic Union is quite unified and harmonized with the major International Treaties that ensures appropriate legal protection of IP assets and encourages foreign companies doing business in the given jurisdictions.

Originally published in AIPLA Daily Report, October 19, 2017

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Gorodissky & Partners
Gorodissky & Partners
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Gorodissky & Partners
Gorodissky & Partners
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions