On the establishment of the Eurasian trademark and appellation of origin system

About three years ago the Eurasian Economic Commission, the regulatory body of the Eurasian Economic Union (hereinafter – EAEU), adopted a draft treaty establishing the EAEU’s trademark and appellation of origin system. Shortly after, the draft was forwarded to EAEU member states for internal approval. Although expected to happen much earlier, final signing of the treaty took place only in December 2018. The new system is expected to come in force after 2020 upon the issuance of regulatory instructions. The system will provide opportunity to secure exclusive rights to trademarks and appellations of origin simultaneously in five countries: Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia – current member states of the Eurasian Economic Union (the Union is an international organization established in 2015 for economic integration of the countries listed above; it has a common customs territory with free movement of goods, people, services and capital).

The idea of establishment of a unitary system for the protection of IP rights in Eurasian region is far from being novel. The region already has a well-functioning unitary patent system that secures exclusive rights to inventions. Unlike the soon-to-come Eurasian trademarks and appellations of origin (hereinafter – AO), Eurasian patents are valid in eight countries – the contracting states of the Eurasian Patent Convention: Armenia, Azerbaijan, Belarus, Kyrgyzstan, Kazakhstan, Russia, Turkmenistan and Tajikistan, and are prosecuted by a specialized body – Eurasian Patent Office. In contrast, the Eurasian trademark and AO system does not imply establishment of a specialized office. Eurasian trademark applications will be handled by IP office of any member state, and Eurasian AO applications will be handled by IP office of the member state, which the AO in question directly, i.e. geographically, relates to, or if application is filed from outside of the EAEU, by IP office of any member state.

How it works: Eurasian trademarks

Eurasian trademark protection will be granted for ten years with possibility of renewal for unlimited number of ten-year periods. During prosecution the applicant will keep in contact with only one office – the office receiving the application, which, again, may be IP office of any member state. Within one month the receiving office will conduct formal examination. Further substantive examination will be performed by IP offices of all member states. The results of substantive examinations will be forwarded to the receiving office no later than within six months. Requirements, as to substance, set for Eurasian trademarks are rather standard: trademarks shall be distinctive, they shall not contradict principles of ethics and humanity, be identical or have a confusing similarity with trademarks or AOs registered for the same category of goods in any of the member state, etc. Based on the substantive examination reports the receiving office will render a final decision. Before the final decision is made, it will be possible to convert Eurasian application into a national application(s). Registered trademarks will be listed in the unified trademark registry of the Union available to the public.

How it works: Eurasian appellations of origin

Similar to trademarks, Eurasian AO protection will be granted for ten years with possibility of renewal for unlimited number of ten-year periods. As mentioned above, application for Eurasian AO is to be filed with IP office of the member state, which the AO in question directly, i.e. geographically, relates to. This office will perform the entire examination and will render a final decision based on the compliance of the application with national requirements. If application comes from outside of EAEU, it may be filed with IP office of any member state. Registered AOs will be listed in the unified AO registry of the Union available to the public.

Potential advantages

Given that prosecution in the new system will operate through a single office, it is expected to be more efficient than individual filing to several national offices. Apart from reducing the hassle, the new system is also expected to provide better control over prosecution timeframes and potentially reduce the overall time from filing to registration. In particular, with respect to trademarks, the unified system will oblige national offices to follow unified timelines for examination, while in case of separate filing each office will keep its own turnaround speed, usually variant from office to office. And last but not least, the new system is expected to be more cost efficient than individual filing. With respect to trademarks, filing and registration fees will correspond to the fees of the receiving office (yet substantive examination fees will be paid to all member states). With respect to AOs, filing and examination fees will be paid once – to the receiving office, and registration fees will be paid to all member states. In addition, due to the fact that prosecution will be handled by a single office – there will be no need to have a representative in each country, and thus the applicant may be able to save some money on IP services.

However, it is too soon to say how the listed benefits are different from the ones already provided for trademarks by the Madrid system, administered by the WIPO. It is still to be learnt when the applicant shall opt for the Eurasian system instead of the international one (as the latter also provides the opportunity to secure exclusive rights on trademarks in all EAEU’s member states).

Should you have any questions on this or any other topic related to intellectual property protection, do not hesitate to contact us.

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