Russia sanctions force attorneys into tricky positions
Choosing between Russia and Eurasia
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Thanks to a new regional trademark, protecting a brand across Eurasia will be cost-effective and straightforward, explains Arman Sauganbayev of Gorodissky & Partners.
Eurasia is one of the key and huge markets for brand owners from all over the world. The fast progress in economic development in the Eurasian space resulted in the establishment in 2014 of a supranational coordinating body—the Eurasian Economic Union (hereinafter, EAEU or simply ‘union’). The EAEU is an international organisation for regional economic integration that provides for the free movement of goods, services, capital and labour. It encompasses several states with a total population of about 184 million people and consolidated GDP of more than $2.4 trillion as of 2021.
It also pursues coordinated, harmonised and single policies in the sectors determined by the treaty and international agreements within the union.
This makes the Eurasian continent one of the most attractive for global investing in trading activities.
IP protection in the EAEU
One of the key sectors regulated by the treaty is IP protection, especially brand and design protection.
Insofar as brand protection is concerned, the union is currently composed of the following member states, namely: Armenia, Belarus, Kazakhstan, Kyrgyzstan and the Russian Federation.
From the perspective of a brand protection strategy, the following options are available for brand owners to get their marks protected in the member states of the EAEU.
"To register a Eurasian trademark, a single application covering all the member states has to be filed with any of the national IP offices."
Firstly, one of the most traditional ways of securing trademark rights in the Eurasian space is a national trademark filing. In particular, a trademark owner is entitled to apply for registration of its trademark by way of filing a national trademark application with a national IP office of a member state.
This option suggests that a brand owner will have to file a number of national applications in each of the member states to cover the whole territory of the EAEU. But this makes the registration process quite complicated and costly as it requires appointing local trademark attorneys to represent the brand owner’s interests in the respective territories.
The second option takes note of the fact that Russia and other member states of the EAEU are signatories to the Madrid System of international registration of trademarks whereby trademark owners can seek the protection of their trademarks simultaneously in a number of designated countries, including those covered by the EAEU, using a single application form. One of the key disadvantages attributed to this option is the requirement to have a basic application or registration in the country of origin to be able to file an international application. Another notable drawback is the dependence of the international mark on the fate of the basic one within the first five-year term.
Thirdly, a new regional trademark protection system has recently been introduced and is expected to be available by the end of 2023. This system is based on the Eurasian trademark, which represents itself as a regional trademark being effective across the whole territory formed by the aforementioned states of the union.
EAEU trademark treaty
The basic governing law for the Eurasian trademark is the Eurasian Economic Union (EAEU) Treaty on Trademarks, which describes in detail the procedure of filing, examination and obtaining protection for EAEU trademarks. The treaty was signed on February 3, 2020, and came into force on April 26, 2021.
It is explicitly stated in the treaty that it does not apply to certification and guarantee marks as well as designations that cannot be reproduced graphically. That means that at least some of the so-called non- traditional marks such as smell and sound marks may not be granted protection as Eurasian trademarks.
The Eurasian trademark defined as a graphically perceptible sign that is capable of distinguishing the goods and services of one person from those of another as long as such a sign can be graphically reproduced.
As a regional brand the Eurasian trademark enjoys protection on the whole territory of the EAEU.
Eurasian trademark applications
When dealing with Eurasian trademark applications one should keep in mind the following key principles that distinguish the Eurasian trademark system from other regional brand protection systems.
First of all the Eurasian trademark system does not provide a unified multinational IP office such as the EU Intellectual Property Office. Instead, it is suggested that all the IP offices of the member states work in close collaboration when examining and registering Eurasian trademark applications.
The concept of the Eurasian trademark system also suggests that the key role will be played by a national IP office through which an application is filed. This office will be called the filing IP office and it will be responsible for formal examination.
To have a trademark registered as a Eurasian trademark, a single application covering all the member states has to be filed with any of the national IP offices. The Eurasian trademark application does not have to be based on an application or registration in the country of origin of the applicant unlike, for instance, international trademark applications.
Furthermore, the Eurasian trademark system is based on the first-to-file principle. That implies that those who first apply for registration of a trademark gain priority right to get the mark registered. The Eurasian trademark legislation does not recognise prior use rights (as a general rule the exclusive right to use a trademark arises as a result of its registration). It is worth noting that, unlike some other jurisdictions, there is no need to file evidence of use or an intent to use declaration along with filing an application, which makes the examination process quite simple.
Eurasian trademarks are protected the same way they are registered. This means that the trademark protection for the mark in Latin will not automatically extend to the marks in all other scripts. The same applies to the colour of the mark.
What is also important is that the Eurasian trademark system provides for multiple priorities to be established, if an applicant files various applications in the member states of the Paris Convention for the same mark in relation to different goods.
Once filed the Eurasian application has to undergo a two-stage examination: a formal one in which the filing IP office verifies whether the application meets formal requirements (specifically, whether the application contains all the necessary filing particulars, whether the respective fees are paid, etc.); and a substantive examination at which it is verified whether the applied designation meets registrability requirements based on absolute and relative grounds for refusal.
Applications that have successfully passed the formal examination stage are to be published on the official website of the EAEU and after that, any interested person is entitled to file written observations against the filed applications to try to prevent them from being accepted.
Results of the substantive examination along with the observations are to be taken into account when making a final decision on the application.
Grounds for refusal
The grounds for which a trademark may be refused protection can be divided into two categories, namely absolute, which take note of the essence of the mark in terms of its capability to function as a means of individualisation, and relative, which consider whether the applied-for registration mark is in conflict with third parties’ prior rights in similar signs and neighbouring objects.
In particular, signs that lack distinctiveness especially due to their descriptive nature as well as those capable of misleading consumers as to the nature of the product or producer shall not be entitled to protection.
A mark which is not inherently distinctive can still be registered provided it has acquired necessary distinctiveness through intensive use in all the member states of the union.
In terms of relative grounds, a trademark shall not be registered in particular if it is confusingly similar to third parties’ prior marks (both registrations and pending applications), well-known marks or neighbouring objects such as appellations of origin, designs, commercial designations, copyrighted objects etc. enjoying protection in at least one of the respective member-states.
"It appears that the Eurasian trademark is expected to be, no doubt, quite efficient, cost-effective and a relatively simple and convenient tool."
Upon the results of the examination and based on the conclusions of the national IP offices, the filing IP office makes a decision about the trademark’s registration (assuming no objections were raised by the national IP offices during examination) or issues a notification of provisional refusal if at least one of the IP offices of the member states objects to registration of the mark in full or in part.
Based on the registration decision and subject to payment of the registration fee the filing IP office proceeds to register the mark in the Unified Register of Eurasian trademarks (or ‘Common Register’).
Invalidation and summary
The Eurasian trademark system makes it possible to invalidate or cancel Eurasian trademarks after registration. In particular, an invalidation action can be filed based on absolute or relative grounds with any of the member states in accordance with the local legislative requirements. A trademark becomes potentially vulnerable to cancellation on non-use grounds three years after registration. Use in any of the member states should suffice to support the registration.
Although the Eurasian trademark filing system has yet to be launched (it will take some time for the member states to adopt the list of applicable fees and establish an information exchange system) it appears that the Eurasian trademark is expected to be, no doubt, quite efficient, cost-effective and a relatively simple and convenient tool in the hands of brands owners to get their marks protected at the regional level.
This new tool should be kept in mind when developing a strategy for brand protection in Eurasia, which is one of the world’s key markets for manufacturers and service providers.
Arman Sauganbayev is a Kazakh patent attorney and Eurasian patent and design attorney at Gorodissky & Partners (Kazakhstan). He can be contacted at: SauganbayevA@gorodissky.com
Gorodissky & Partners, trademarks, brand owners, Eurasia, EAEU, IP protection, designs, IP office, registration, Russia, Madrid System, filing system