New regional systems for protection of trademarks and designs in the Eurasian Economic Union states

The Eurasian Economic Union (hereinafter – EAEU or simply Union) is an international organization for regional economic integration which provides for free movement of goods, services, capital and labor, pursues coordinated, harmonized and single policy in the sectors determined by the Treaty and international agreements within the Union.

One of the key sectors regulated by the Treaty is IP protection especially brand and design protection.

Insofar as brand protection is concerned the Union is currently composed of the following member-states, namely: the Republic of Armenia, the Republic of Belarus, the Republic of Kazakhstan, the Kyrgyz Republic and the Russian Federation

1. Brand protection strategy

Currently the following options are available for the brand owners to get their marks protected in the member states of EAEU.

Firstly, this is a national trademark filing system. In particular, a trademark owner is entitled to apply for registration of its trademark by way of filing a national trademark application with a national IPO of a member-state. The second option takes note of the fact that Russia and other member-states of EAEU are signatories to a number of International Treaties, especially Madrid System providing for the international registration of trademarks whereby trademark owners can seek protection of their trademarks simultaneously in a number of designated countries, including those covered by the EUEU using a single application form.

Thirdly, a brand-new regional trademark protection system has recently been introduced and this system is based on the Eurasian trademark which represents itself a regional trademark being effective on the whole territory formed by the aforementioned states of the Union.

The governing law for the Eurasian trademark is composed of the following basic documents/ legal acts.

First of all, the International law which introduces a brand new EAEU trademark system, namely EAEU trademark Treaty was signed in Moscow on February 3, 2020 by the said five memberstates of the EAEU. This agreement was based on the earlier adopted EAEU Treaty. The agreement governs legal relations concerning registration, protection and application of trademarks and appellations of origin in the member-states of EAEU. It is explicitly stated in the aforementioned document that it is not applied to certification and guarantee marks as well as designations that cannot be reproduced graphically. That means that at least some of the so-called non-traditional marks such as smell, or sound marks may be exempt from being eligible for protection as Eurasian trademarks as these may not be reproduced graphically.

The EAEU trademark Treaty has just come into force after having been duly ratified by the respective member-states.

Further, there is also a document called instructions and this document is supposed to concretize the norms of the EAEU trademark Treaty and in particular should describe in details procedure of filing, examination and obtaining protection for EAEU trademarks. Instructions have to be established by the Council of the Eurasian economic commission within three months since the date at which EAEU trademark Treaty came into force.

Likewise other trademarks the Eurasian trademark is a perceptible sign which is capable of distinguishing goods and services of one person from those of another as long as such a sign can be graphically reproduced. Being a regional brand, it enjoys protection in the aforementioned member states of EAEU simultaneously.

The International law suggests that any designations including but not limited to verbal, device, numeral, three dimensional, and combined signs can enjoy protection as EAEU trademarks provided all of them can be graphically represented. A trademark can be claimed in color, color combination, or just in black & white.

When dealing with Eurasian trademark applications one should keep in mind the following key principles that distinguish the Eurasian trademark system from other regional brand protection systems:

First of all, the Eurasian trademark system does not provide for the Unified multinational IP Office likewise EU IPO. Instead it is suggested that all the IP Offices of the member states are to work in close collaboration when examining and registering Eurasian trademark applications. The concept of the Eurasian trademark system also suggests that the key role will be played by the national IP office through which an application will be filed. Such office will be called the filing IP office and it will be responsible for formal examination.

A single application covering all the member states has to be filed with any of the national IP Offices in order to have a trademark registered as a Eurasian trademark. The Eurasian trademark application does not have to be based on an application or registration in the country of origin of the applicant unlike, for instance, international trademark applications.

Furthermore, the Eurasian trademark system is based on the first to file principle. That implies that those who first apply for registration of a trademark gain priority right to get the mark registered. For this reason it is vitally important to file trademark applications without delay even though the trademark owner does not intend to use its trademark in all or any of the member states right now. This is especially very important due to the fact that the Eurasian trademark legislation does not recognize prior use rights (as a general rule the exclusive right to use a trademark arises as a result of its registration). It is worth noting that unlike some other jurisdictions there is no need to file evidence of use or intent to use declaration along with filing an application what, obviously, makes the examination process not so complicated.

Eurasian trademark is protected the same way it is registered. It means that the trademark protection for the mark in Latin will not automatically extend to the marks in all other scripts. The same applies to the color of the mark. Therefore, each time when a potential infringer starts using a similar mark in a different color or in a different script one has to prove that the respective marks are confusingly similar to be able to enforce the respective trademark rights against infringer and sometimes this could be a matter of dispute, especially in a situation where color/combination of colors and script are essential features of the mark.

What is also important is that Eurasian trademark system provides for the multiple priority that could be established based on a number of applications of the same applicant filed in member states of the Paris Convention for the same mark in relation to different goods.

Likewise for any other application the Eurasian one has to be examined. Traditionally, examination is composed of the two stages, namely: the formal one at which the filing IP Office verifies whether the application meets formal requirements (in particular, whether the application contains all the necessary filing particulars, whether the respective fees are paid etc.), and substantive examination stage at which it is verified whether the applied designation meets registrability requirements based on absolute and relative grounds for refusal.

Applications which have successfully passed formal examination stage are to be published on the official website of the EAEU. Within three months from the publication date any interested person is entitled to file written observations against the filed applications to try to prevent them from being accepted. Those observations are duly reported to the applicant and are published on the website. The applicant is entitled to submit its response to the observations within three months since the date at which he was notified of the observations. Within six months since the date of sending published application to the national IP Offices the latter including the filing one conduct examination on merits both on absolute and relative grounds for refusal. The examination results along with the observations are to be taken into account when making a final decision on the application.

The grounds for which a trademark may be refused protection can be divided into two categories, namely the absolute ones which take note of the essence of the mark in terms of its capability to function as a means of individualization and the relative ones which help to understand whether the applied for registration mark is in conflict with third parties’ prior rights in similar signs and neighboring objects.

In particular, signs which lack in distinctiveness, also due to their descriptive nature as well as those being capable of misleading consumers as to the nature of product or producer shall not be entitled to protection.

On the relative grounds side, a trademark shall not be registered, in particular, if it is confusingly similar to the third parties’ prior marks (both registrations and pending applications), well-known marks or neighboring objects such as appellations of origin, designs, commercial designations, copyrighted objects etc., enjoying protection in at least one of the respective member-states.

Upon results of examination and based on conclusions of the national IP Offices the Filing IP Office makes decision of registration (assuming no objections were raised by the national IPOs during examination) or issues a notification of provisional refusal if at least one of the IP offices of the member states objects to registration of the mark in full or in part. The applicant is entitled to respond to the provisional refusal within three months. Upon consideration of the applicant’s submissions filed in response to the provisional refusal, the national IPOs make decision whether to accept the mark or refuse in protection. Partial or full refusal decisions issued by the national IPOs may be appealed within three months in accordance with the legislation of the respective member state.

Based on the registration decision and subject to payment of the registration fee the filing IPO proceeds to register the mark in the Unified Register of Eurasian trademarks.

Summarizing the above stated it appears that the brand new regional protection system for trademarks on the territory of EAEU is expected to be, no doubt, quite efficient, cost- effective and relatively simple and convenient tool in the hands of brands owners to get their marks protected at the regional level. It goes without saying that this new tool should be kept in mind when developing brand protection strategy aimed at seeking protection for brands in the Eurasian part of the world being one of the key markets for the manufacturers and service providers.

2. Design protection system

The Eurasian design protection system is a direct development of the Eurasian Patent Convention (EAPC) signed on September 09, 1994 in Russia and entered into force on August 12, 1995. All Member States of the Eurasian Economic Union are signatories to the EAPC.

Now the functionality of this regional IP protection system headed by the Eurasian Patent Organization is enlarged and it provides the possibility to obtain a Eurasian patent for industrial design.

The Member States of EAPC signed on September 09, 2019 a Protocol on Protection of Industrial Designs (Protocol), which entered into force on March 17, 2021.

On April 12, 2021 the Administrative Counsel of the EAPO approved the Part II of the Patent Instruction to the EAPC containing the material and procedural provisions regulating the Eurasian design protection system as well as the Regulation on fees of the EAPO relating to Eurasian designs.

Accordingly, as from June 01, 2021 the Eurasian Patent Office will start accepting applications for Eurasian Industrial Designs (EAID). According to the Article 22 (4) of the Protocol a Eurasian patent for an industrial design is valid in the territory of a Member State if the corresponding Eurasian application for an industrial design was filed after the entry into force of this Protocol in respect of that State.

On June 01, 2021 the Protocol will be valid for five countries: Russia, Armenia, Azerbaijan, Kyrgyzstan and Kazakhstan. The other countries signatories to EAPC are supposed to implement respective national procedures for joining the Protocol.

Patentable solutions

According to the Protocol Eurasian industrial design is a solution of an outer appearance of an industrial or handicraft article, which should be patentable according to set criteria, in particular, packaging, label, composite article, set of articles, typeface, as well as an independent part of an article.

According to the Patent Instruction the Eurasian patent is issued for an industrial design that is new and original in its essential features.

This means that a patentable solution must be new and not known from the publicly available information in the world (including Eurasian and national applications with earlier priority and which are not withdrawn) and it must be original what means that the essential features of the article must have a creative character, in particular if there is no prior known solution of the outer appearance of the article with similar purpose which makes the same overall impression on the informed user.

According to the Rule 78(5) of the Patent Instruction there is a grace period of 12 months for filing an application for an EAID without affecting the patentability in case the information related to this design has been disclosed by the author, applicant or other person who received this information from them.

There is still a list of solutions that cannot be protected as EAIDs due to direct prohibition by the provisions of Patent Instruction.

Non-patentable are solutions:

• which are contrary to public interests or principles of humanity and morality;
• which include, reproduce or imitate official state symbols or signs, or names and symbols of international organizations (or their recognizable parts) without the respective consent of competent state bodies or international organizations; or official control, warranty or hallmarks, seals, awards and other insignia;
• which include, reproduce or imitate official names or pictures of cultural heritage sites or their recognizable parts without the respective consent of competent bodies of a Member State or the respective right holder;
• whose features are determined exclusively by technical function of an article;
• which are identical or confusingly similar with prior trademarks (filed and published or already protected on the territory of a Member State) or which include such trademarks;
• which are identical or confusingly similar with copyrighted objects earlier known on the territory of a Member State or which include such objects without the consent of the copyright holder;
• which are capable to mislead the consumers in respect of the article or its manufacturer, or place of origin.

Procedures before the EAPTO

An application for an EAID is filed with the EAPTO on paper or electronically. An important rule is that the applicant not domiciled in Member States should be represented by Eurasian Patent Attorneys duly registered before the EAPTO.

The application must indicate the applicant, the author of the ID, the title of the ID, the indication of the article or the product connected with the claimed solution, the class of the International classification of IDs (ICID) as well as the priority claim, if any. The application should also include pictures of the claimed design with different views, but no more than seven views for each claimed design. The application can include up to 100 IDs provided that they all relate to one and the same class of the ICID.

The EAPTO conducts a preliminary examination and checks the filed solution as to its compliance with formal requirements and also it verifies if the claimed solution does not contradict the principles of humanity and morality at least in one Member State.

In case of positive result of preliminary examination, the application is published and there is a term of two months when third parties (and also a national PTO if it is provided by the legislation of the respective Member State) can file an objection / opposition against the EAID application on the basis that the claimed ID is not new or original or represents a solution which cannot be registered as ID according to Protocol/Instruction.

In case the objection is filed by a person insisting that the claimed solution cannot be registered as ID, since it is identical or confusingly similar with a prior copyrighted object known on the territory of at least one Member State or is included in the claimed ID in this case the dispute can be resolved by the way of mediation procedure in case both the applicant and the person who filed an objection submit a respective request with the EAPTO (the Rules for this procedure are still to be adopted by the President of the EAPTO).

The EAPTO conducts a substantive examination (with due account of objections, if filed) which may result in issuance of a decision of grant or decision of refusal. The latter can be objected with the EAPTO within three months from the date of forwarding the decision by the EAPTO. Furthermore in case and as a result of consideration of the objection the EAPTO still issues a decision of refusal it can be further appealed with the President of the EAPTO within four months from the date of its forwarding to the applicant.

In case of refusal to grant an EAID Patent there is a possibility to transform the application for an EAID into national applications in the Member States (per choice of the applicant). In case of positive decision the EAID is registered in the Register of EAIDs and it is published in the official bulletin within two months subject to payment of the respective fees. The Eurasian Patent is valid on the territory of all Member States.

The term of validity of an EAID is five years counting from the date of filing an application and it can be extended each time for five years, but the overall term of validity cannot be more than 25 years.

The holder has also the right to dispose of the exclusive right in EAID within the period of its validity and starting from the date of its publication in the official bulletin of the EAPTO. The disposal of right is possible by the way of its transfer, or concluding a license or pledge agreement, or by another way provided by the legislation of a Member State. The transfer of right in the EAID can be affected only in respect of all Member States.

It is important to note that the Protocol provides for temporary legal protection for an EAID in case of filing an application. The temporary legal protection is granted for the period starting from the publication of application and till publication of Eurasian patent and it is valid for the territory of all Member States.

The temporary legal protection means that the applicant has the possibility to claim compensation in case the EAID was used by third parties in the mentioned period (according to legislation of a Member State where the use took place). Simultaneously, no temporary protection can be claimed in case of refusal to grant patent or withdrawal of application.

The Protocol and Patent Instruction also provide for a legal possibility to challenge the Eurasian Patent for ID. The invalidation of Eurasian ID patent is possible by the way of administrative procedure before the Eurasian PTO or as a result of proceedings in the national Courts or other competent bodies of Member States.

The invalidation of the EAID patent as a result of administrative procedure before the Eurasian PTO concerns all Member States. In case the decision of invalidation is issued as a result of proceedings in the national Courts or other competent bodies of Member States it will be valid only for the territory of the Member State where such decision was issued and from now on the unified protection of the EAID can no more be applied and the EAID will be valid only on the territory of Member States where the decision of invalidation was not rendered.

Obviously it is too early to make even first conclusions as to how the mentioned regional Trademark and Design protection systems will work in practice as still much has to be done at the legislative level to ensure smooth launch of the systems and provide clear cut guidelines as to how to deal with new regional brands and designs, but anyway this is a major step forward towards improvement of the brand and design protection environment.

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