A Eurasian trademark

June 14, 2018

The Eurasian Economic Union (EAEU) is an international organisation of regional economic integration having an international legal standing. The EAEU founded under the Treaty on the Eurasian Economic Union (dated 29 May 2014) entered into force on 1 January 2015.

The purpose of EAEU formation is to ensure free movement of goods, services, capital, and workforces as well as to implement a coordinated, agreed or unified policy in economic sectors.

Current EAEU members are Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia.

All EAEU countries participate in all major international treaties regarding trademark protection: the Paris Convention, Nice Agreement of ICGS, Singapore Treaty on the Law of Trademarks, Madrid Agreement concerning the International Registration of Marks and Protocol Relating to the Madrid Agreement. In addition, Russia, Kyrgyzstan, Armenia, and Kazakhstan are World Trade Organisation members and are bound with the obligations arising out of the the Agreement on Trade-Related Aspects of Intellectual Property Rights.

In the EAEU, various procedures for obtaining legal protection of a trademark may apply.

The national legislation on trademarks in the EAEU countries has substantive examination, including checking of absolute and relative criteria.

At the same time, there are some specific features of the national trademark protection systems in the EAEU countries.

In Russia, Belarus, and Armenia, trademark applications are published, after that, any interested parties may submit their arguments against registration of a trademark under the published application.

In Kazakhstan, as against other EAEU countries, protection of well-known marks is not termless. Any well-known mark is protected during 10 years and, intending to renew it for the next 10 years, a rights holder must confirm again that it is well-known.

The national legislation of all EAEU countries allows for termination of legal protection of a trademark due to its non-use, and in Belarus, for the trademarks registered after 25 January 2010. Kazakhstan, Kyrgyzstan and Russia, a three-year non-use period (from the registration date of a trademark) is set forth.

In Armenia, a non-use period under the national legislation is five years. In accordance the Treaty on the Eurasian Economic Union, all EAEU countries shall apply 3-year non-use period, therefore, it may happen that the Armenian legislation will be amended in this regard.

Protection of a trademark in the EAEU countries may be also granted based on the Madrid International Trademark System.

A regional trademark protection system in the EAEU is just being formed. Only time will tell whether it becomes more convenient and engaging.

The regional trademark protection system will be governed by the EAEU Agreement on trademarks, service marks, and appellations of origin of goods and instruction thereto, which are drafted under the authority of the Eurasian Economic Commission (EEC).

In the most general terms, the draft agreement does not provide for formation of a unified interstate office for trademarks, but stipulates joint work of the offices of all EAEU countries in consideration of one application for EAEU trademark registration being simultaneously effective in all EAEU countries, and keeping a Unified Register of Union Trade Marks, which will consist of national sections to be kept by the national Patent and Trademark Office (PTO).

Any disputes relating to infringement of the exclusive right to an EAEU trademark in the EAEU countries will be considered in accordance with the national legislation and liability for infringement of a right will be the same as set forth in this EAEU country.

The draft agreement allows for registration of only those designations as an EAEU trademark, which may be presented in graphic view.

For obtaining protection of an EAEU trademark, it is necessary to file one application (in Russian) with a PTO of any EAEU country and no preliminary filing of a national basic application is required, which decreases financial and time expenditures. The applicants from any non-EAEU countries must appoint a trademark attorney among those registered in the relevant filing office.

The formal examination will be carried out only by the filing office, and a fee shall be charged in accordance with the legislation of the country of the filing office. In case of a positive result of the formal examination, the filing office will take a decision on publication of an application on the official EEC website.

Within three months from the publication date any interested party will be able to present an opposition against registration of the trademark to the filing office. The claimed designation will be examined by each national office, including the filing office, by checking absolute and relative criteria. A search for similar designations will be performed in the national bases of trademarks and filed applications in the EAEU countries, the base of international registrations, and the Unified Register. Examination must be completed within six months from the payment date by the applicant of a fee for application examination.

Upon expiration of six months, the filing office, based on the opinions of the national offices and taking into account the oppositions of the interested parties and the applicant's arguments to these oppositions, shall take a decision on registration of an EAEU trademark or send a notice containing reasons for refusal. An EAEU trademark may be registered only subject to a positive opinion obtained from the national PTO of all EAEU countries.

If any EAEU country refuses to grant protection the applicant may appeal against such refusal in accordance with the appeal procedure effective in this country.

Upon completion of the appeal procedure, the decision of the national competent authority will be forwarded to the filing office, and it will take a final decision that cannot be appealed.

The draft agreement stipulates that, in case the filing office intends to take a final decision on refusal to register an EAEU trademark, before such decision is taken, the applicant will be able to transform an application for an EAEU trademark into a national one in that EAEU country, where, based on the opinions of the national PTO, there are no impediments to register a trademark.

Registration of an EAEU trademark may be contested during its entire validity period if the EAEU trademark does not meet the absolute criteria provided in the draft agreement, if it is similar to a trade name or business name of any other person, if a copyright and personal non-property rights or a right to an industrial design is infringed where such rights accrue before the priority date of the EAEU trademark, or if the actions in registration and use of the EAEU trademarks are recognised as abuse of right or unfair competition. Registration of an EAEU trademark may be contested within five years from the date of publication of the relevant information in the Unified Register on the official EEC website in case such registration infringes any third party's rights to a trademark, well-known marks, and appellations of origin of goods. The draft agreement stipulates that registration of an EAEU trademark may be contested in any competent authority of any EAEU country in accordance with the procedure set forth by the legislation of such country. If, in this case, an EAEU trademark is invalidated upon a decision of any competent authority, the mark holder will have an opportunity to file, within the set period based on the cancelled registration, a national application (or applications) for the trademark keeping the priority date of the cancelled registration.

An exclusive right to an EAEU trademark will be in effect during 10 years from the filing date of the application with an opportunity of multiple renewal by 10 years each time by filing the relevant application to the filing office and paying a renewal fee set forth in each EAEU country. Compared with the costs on renewal of the international registration of a mark effective in an EAEU country has shown that these costs are significantly lower than the costs on EAEU trademark renewal.

Protection of an EAEU trademark may be early terminated due to its non-use. In this case, in order to keep protection of an EAEU trademark it is sufficient to use such mark in any Union country.

The draft agreement stipulates that, if a trademark is registered according to the national procedure in all EAEU countries in the name of the same person, all these national registrations may be replaced, upon a petition of their right holder, with registration of an EAEU trademark issuing the relevant EAEU trademark certificate to the mark holder.

- As compared to the national trademark registration systems, the regional trademark protection system provided for by the draft agreement will provide the interested parties with the following advantages.

- Application for registration of an EAEU trademark may be filed to a PTO of any EAEU country. Such application may be filed by conversion of the national application filed to a PTO of any EAEU country into a regional application.

- An EAEU trademark certificate certifying the right holder's exclusive right in all EAEU countries will be issued based on one application.

- The applicant's costs on fee payment will decrease, since the fee for preliminary examination (as to form) and the fee for mark registration and certificate issuance are paid only to one PTO being the filing office.

ECTA daily // 14 June 2018

Liudmila Serova