Russia jurisdiction report: A new system to rival Madrid?

You may have heard rumours about a new trademark protection system created in Eurasia. What exactly does the Eurasian region encompass, and how does the new system work?

The new trademark system is created within the Eurasian Economic Union (EAEU) and is based on the “Treaty on the Eurasian Economic Union (Protocol for the Protection and Enforcement of Intellectual Property Rights”. Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia are the current member states.

The EAEU introduces the concept of free movement of goods, capital, services and people and aims at economic integration and a customs union among the member states, similar to the system in the EU.

The integration process required changes to existing national legislation, in addition to trademark registration rules. This was particularly true for customs integration and the registration of IP rights at the customs union. The idea of a unified Eurasian trademark system arose during this legislative work a few years ago.

What is a Eurasian trademark?

The agreement relating to the Eurasian trademark system has been signed, but there are a few practical issues still to be decided before the system enters into force.

It’s planned that the system will begin operating after 2020 when instructions, rules for the implementation of the overall process, and technological documents will be adopted. No exact time has yet been published.

We know that the system is similar to the Madrid Agreement concerning the registration of international trademarks. The Eurasian trademark is based on the idea of “one application, one registration”, with one registration covering several countries. However, there are also differences between these systems.

Similarities include:

• A unified register of Eurasian trademarks;
• Filing office will conduct the formal examination;
• Substantive examination is conducted by the national offices of member states; and
• Examination results of the national offices will be sent to the filing office, which accepts the registration.

Differences include:

• No unified office for Eurasian trademarks;
• No basic registration needed;
• Application can be filed with the patent office of any EAEU country (with this office becoming the filing office);
• Foreign applicants must appoint a representative among the trademark attorneys of EAEU countries at the filing stage;
• Russian is the only application language;
• A short registration process (six months); and
• Cooperation between offices of all EAEU countries.

Who will benefit?

It is known that economic integration and a customs union are good things for businesses in general. Free movement of goods creates more opportunities for companies to easily expand their activities, imports and sales within the countries of the EAEU.

Concerning the trademark registration itself, it must be noted that all the member states of the EAEU are already members of the Madrid Agreement. This means that trademark owners are already able to protect their trademarks by one application through the Madrid system, which includes many more countries than the EAEU.

"Companies active in the Eurasian region that are applying for trademarks in Cyrillic characters specifically for Russian-speaking countries will benefit from the new system."

Protecting a trademark through two different systems may seem unreasonable. However, companies active in the Eurasian region that are applying for trademarks in Cyrillic characters specifically for Russian-speaking countries will benefit from the new system.

There is no longer a need to apply for national trademarks in each country. In addition, the system is more flexible and much faster than Madrid or national registration systems.

In addition, no basic registration is required as a basis for the Eurasian trademark (according to the information available at this stage), allowing companies to more freely and easily choose the trademark and specification of goods and services to be protected. Accordingly, the new system may become appealing to different applicants and represents a new option for trademark protection in the region.

It remains to be seen how the new system will be adopted and whether the Eurasian trademark could form a part of Madrid system designations in the future. One thing is clear: filing national trademarks in EAEU countries will soon become history.  

Riikka Palmos is trademark lawyer and senior partner at Papula-Nevinpat. She can be contacted at: riikka.palmos@papula-nevinpat.com