Integration within the Eurasian Economic Union is ongoing, and this time in the area of intellectual property: trademark registration will be possible in all five EAEU member states at once – Republic of Armenia, Republic of Belarus, Republic of Kazakhstan, Kyrgyz Republic and the Russian Federation, under a unified procedure.

On December 5, 2018 in St. Petersburg, members of the EEC Council signed the Treaty on trademarks, service marks and appellations of origin of EAEU goods, the draft of which was approved by the EEC Council earlier on March 17, 2016.

This Treaty establishes a unified system of registration and legal protection of trademarks and appellations of origin (AO) covering the territory of all EAEU member states. In order to obtain legal protection for a designation, the applicant will only need to submit an application to the authorized state body in one of the member states (to the appropriate office) and pay the relevant fees. From there on, the procedure will continue without the applicant's participation: the submission office will send the filed application to patent offices of the other states, each of which will independently examine the applied-for designation and assess the possibility of granting legal protection to the designation on the territory of the relevant state.

The grounds for denial of registration for a designation as an EAEU trademark under Article 8 of the Treaty are the same as the grounds provided for by the Russian Civil Code.

It should be noted that a designation may be registered as an EAEU trademark only if there are no obstacles to registration in all the EAEU member states. If there are grounds for denial in at least one of the states (for example, a trademark previously registered in one of the countries regarding similar goods is confusingly similar to the applied-for designation), then registration of the EAEU trademark will be denied.

We should also mention Article 14 of the Treaty, providing for replacement of national trademark registrations with the EAEU trademark registration, if an identical designation was registered:

• in the name of the same rightholder;

• in all EAEU member states;

• regarding fully or partially similar goods.

At the same time, the term of validity of exclusive rights to the EAEU trademark will be equal to the validity term of the national registration that is the last to expire.

Of course, the introduction of the unified trademark and AO registration system does not preclude registration of a designation in each EAEU member state under the national procedure; moreover, at the applicant's request, their application for registration of an EAEU trademark may also be converted into a national application in the state where they applied.

The introduction of the EAEU unified trademark and AO registration system should facilitate the protection of rights to relevant intellectual property. In particular, a correlation between the introduction of EAEU trademarks and AOs and the introduction of the Single Customs Register of Intellectual Property Objects of the EAEU (the EAEU Customs Register of IP Objects) in accordance with the provisions of Article 385 of the EAEU Customs Code seems logical. Currently, there are only national customs registries; accordingly, protection of exclusive rights requires applying to the authorized bodies of each individual EAEU state. As the EAEU Customs Register of IP Objects starts to operate, this process will become much simpler – if an intellectual property object is protected in all the EAEU member states (such objects will be the EAEU trademarks and AOs), registration in the EAEU Customs Register of IP Objects without applying to customs authorities of each separate EAEU member state will be possible.

It should be noted that currently legal protection of designations in all EAEU member states can be obtained by submitting one application to the World Intellectual Property Organization in accordance with the Madrid Agreement and the Protocol Relating to it. However, the system under the Treaty will have a number of advantages over the Madrid system. In particular, the Treaty provides a shorter time for examining the applied-for designation in national departments: currently such examining the applied-for designation and deciding on the results lasts 12-18 months in the EAEU member states, and the deadline for these actions provided for in Article 9 of the Treaty is 6 months from the date of the published application is sent to national departments.

Moreover, the procedure for registering EAEU trademarks is expected to be cheaper due to lower fees in comparison with fees charged for the Madrid system registration.

At the same time, despite the fact that the Treaty has been signed, the EAEU trademark registration system is expected to become operational only after 2020. This is due to the need to adopt the Instructions setting the procedure for registering the EAEU trademarks and other necessary national formalities before the Treaty can become effective.

Elena Berger Head of IP Practice                                St. Petersburg  Тel.: +7 (812) 346 79 90

Vladislav Scherbatykh Associate   St. Petersburg  Тel.: +7 (812) 346 79 90

Additional notes

Should any questions arise in connection with the above or if you need any additional materials, please contact Elena Berger and Vladislav Scherbatykh Office of Capital Legal Services.

This Information letter keeps the clients of Capital Legal Services and other interested parties abreast of information that may, to any extent, affect their activity or cater to their particular interests. The opinions and commentaries expressed in this information letter shall not be deemed as legal opinions and do not cancel the need to obtain legal advice or legal opinion on separate issues. 

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