Another step towards creating a regional trademark protection system across Eurasia26 June 2020
The Treaty on Trademarks, Service Marks and Appellations of Origin of Goods of the Eurasian Economic Union was signed in Moscow on 3 February 2020.
The Treaty provides for possibility of obtaining trademark protection on the territory of all states of the Eurasian Economic Union, which includes Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia. According to the Treaty legal protection of a trademark in these countries may be granted on the basis of one registration which is named Eurasian Union Trademark Registration. The process of registration of the EAEU trademarks will be carried out during the collaborative work of the trademark offices of the EAEU states. The creation of a single interstate trademark office is not foreseen by the Treaty.
In order to obtain protection of the EAEU trademark it will be necessary to file one application with the patent office of any state of the Union. The application must be drafted in the Russian language according to uniform requirements, regardless of the fact which patent office is chosen by the applicant for filing.
Preliminary (formal) examination of the application will be carried out only by the filing office. If the results of preliminary examination are positive, this office decides to publish the application on the official website and sends the application documents to other national patent offices.
Within three months after the publication of the application interested parties will be able to submit their oppositions against registration of the mark, which are taken into account by the national patent offices during the examination of the claimed designation.
Within six months after sending of the application documents by the filing office to the patent offices of the Union states, these offices can conduct the examination of the claimed designation and notify the filing office of the grounds for refusing to register the EAEU trademark. If the offices do not take respective actions within the indicated time period, they lose this opportunity.
Based on the information received from the national patent offices the filing office either decides to register the Union trademark or sends a notification to the applicant with reasons for refusal. The refusal of any of the national offices can be appealed according to the available procedure in the respective country.
In the case of a decision on registration the filing office shall enter the trademark into the Union Register of EAEU Trademarks and issue the respective certificate of trademark registration. The certificate is valid for 10 years from the date of application and may be renewed every 10 years.
If the same trademark is registered in the name of the same person in the national registers of all countries of the Union for completely or partially matching lists of goods, after the entry into force of the Treaty the trademark holder will be able to file a request for an EUAU trademark certificate with any national patent office of the Union. Such a certificate shall be issued for the period of validity of trademark registration in that State of the Union, in which the validity of the national registration expires later. In this case entries are made in the national registries about the registration of the EAEU trademark and on the replacement of the previous national registration by such regional registration.
Challenging an EAEU trademark registration is possible in the competent authority of any state of the Union in accordance with the national procedure of that state but on the grounds provided for in the Treaty. If an EAEU trademark is invalidated, the owner of the mark will be able to submit - on the basis of the invalidated regional registration - a national application (or applications) for the same trademark while maintaining the priority date of the canceled registration.
Protection of the Union trademark may be terminated ahead of time due to its non-use for three years. At the same time, in order to maintain protection of an EAEU trademark its use on the territory of at least one state of the Union is considered sufficient.
Disputes relating to violation of the exclusive right to an EAEU trademark on the territory of any state of the Union will be considered in accordance with the national legislation of that state. The procedure will be similar to that foreseen in connection with violations of rights for national trademarks.
The agreement also provides for a regional system of protection of appellations of origin on the territory of the EAEU member states. Currently the EAEU countries maintain national registers of protected appellations of origin. The Treaty provides that the Union states will exchange their lists of appellations of origin registered prior to the entry into the Treaty in the relevant national registers. After exchanging the said lists the right holders will be able to apply to the national patent offices with requests to register their appellations of origin in the Unified Register of the appellations of origin of the Union and to issue certificates of the right to use them.
The requirements for the application for the appellations of origin of the Union are established by the Treaty. Applicants from members states of the Union will be able to submit new applications for registration of the appellations of origin of the Union and obtaining the right to use them to their national patent office. Applicants from other countries will be able to choose the national patent office of any state of the Union as the filing office.
The procedure of examination of the application for the appellations of origin of the Union is established by the legislation of the state of the office of filing. If the examination result is positive, the filing office enters the appellation of origin into the Unified Register and issues a certificate for the right to use it. The Treaty does not provide for the examination of applications for the appellations of origin of the Union by each national patent office.
The Treaty will enter into force from the date of receipt by the Eurasian Economic Commission of the last written notice on the implementation of the necessary domestic procedures by Member States.