One Trademark for 5 Countries: Future EAEU Trademarks

On February 3rd, 2020, the Agreement on Trademarks, Service Marks and Appellations of Origin of the Eurasian Economic Union (The Agreement) was signed in Moscow. The Agreement includes all Eurasian Economic Union (EAEU) member states: Armenia, Belarus, Kazakhstan, Kyrgyzstan, Russia and introduces a new one-window registration system of EAEU trademarks (EAEU TM) and appellations of origin (EAEU AO).

The present article focuses on the key provisions of the Agreement related to the EAEU Trademarks. In case you are interested in clauses for the EAEU AO, please email us at the email address provided below.

Registration

In order to register a EAEU Trademark, the owner will only need to submit one application to any EAEU member states’ IP registry office. In cases where the TM owner is domiciled in one of the EAEU member states, they shall submit an application to the national IP registry office.

The minimum period for the registration procedure is 8 months, but it can be extended in cases where the national IP registry offices requires additional documents and information.

When the application is approved, the trademark will be automatically registered in all member states.

Note: The simultaneous registration in all EAEU states raised some concerns regarding the practical application of the mechanism. Malicious trademark(s) in one of the EAEU member states will then cause the delay in the registration due to the necessity of national appeal against registered trademarks and raises the risk of loss of the TM priority in registering states during the process of registration.

For those who have already registered their TMs in all EAEU states, the Agreement also provides a mechanism for the conversion of already existing national TM registrations into a EAEU TM registration. It should be noted, a EAEU TM would be approved for classes that were registered in all states. However, in cases where the owner will have to give up on some classes for the EAEU TM Agreement, the owner reserves the right to retain the nationally registered TM along with a EAEU TM.

Note: Where national TMs were registered by different subsidiaries of the company, the headquarters will have to choose which of the subsidiaries will become the owner of the EAEU TM.

After the formal approval of the EAEU TM by the national IP registry offices, any interested party have the right to challenge the registration within 3 months from the date of the publication through his/her national IP registry office. In cases where no challenge requests are submitted the EAEU TM shall be deemed successfully registered.

TM Protection Period

The term of the rights to the EAEU TM is 10 years from the date of filing an application. The TM owner can extend the protection period for an unlimited number of times.

Fees

The fees will be equal for all EAEU member states. The exact amount will be established by the decision of the Council of the Eurasian Economic Commission (EEC).

IPR Transfer

The EAEU TM owner has the right to dispose of exclusive rights in accordance with the laws of the member states, which includes alienation, licensing rights to use, conclusion of a franchising agreement or the pledging of the exclusive rights to the EAEU TM. Such disposal of rights is subject to mandatory registration with the filing IP registry office.

Cancelation and Early Termination of the EAEU Trademark

It is possible to challenge a maliciously registered EAEU TM. The Agreement also includes a mechanism of early termination of the EAEU TM where the owner does not use it for 3 years. However, it should be noted that an absence of use shall exist in all member states simultaneously.

The procedures shall be held in the national authorities and according to the national legislation of the applicant or in authorities of any of the EAEU member states where an applicant is domiciled out of the EAEU.

Comments

The Agreement is still in the process of ratification by its member states and experts estimate that the new registration system is expected to be reinvigorated by the end of 2020.

EAEU TM can be useful for companies considering to be or already present in the markets of either all or most of the EAEU member states. Such a unique TM system aims to speed up the process of TM registration at customs and help in the combating of counterfeit and parallel imports.

It should be mentioned that the EAEU regional TM system is to a certain extend similar to the Madrid International Trademark System. At least in current circumstances it seems that the EAEU system will be more beneficial for those companies who operate specifically within the EAEU market. However, a significant impact would may be felt on the fees rate and procedural speed, both of which will become clearer after the implementation of supplementary instructions and a certain period of practice.

We at D’Andrea and Partners are continuously following the amendments of regional IP laws and regulations. Please do get in touch with us at russiadesk@dandreapartners.com for any queries or clarifications.