On 20 November 2020, Russia ratified* the Agreement* on Trademarks, Service Marks and Appellations of Origin of Goods of the Eurasian Economic Union (EAEU). Signed on 3 February 2020, the Agreement introduces a regional system for the protection of trademarks and appellations of origin.
The Agreement will enter into force once ratified by all its parties (Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia). Within three months after entry into force, an instruction will need to be approved to regulate procedural issues in detail (e.g. the application form and the procedure for maintaining a single register of EAEU trademarks).
The Agreement allows applicants to obtain protection for means of individualisation on the territory of the EAEU.
The new opportunities will be particularly attractive to companies doing business in all EAEU member states and those plagued by counterfeit and parallel imports in the EAEU.
Trademark registration procedure
The Agreement simplifies the procedure for obtaining trademark protection within the EAEU, making it possible to file a single application with any Patent and Trademark Office (PTO) of an EAEU member state.
A PTO will formally examine an application and send it to PTOs in other EAEU member states for consideration. In turn, they will conduct independent examinations of the declared designation.
A Eurasian trademark can only be registered when the examination has received positive results in all countries. Otherwise, the applicant is refused registration.
Currently, only graphic trademarks can be registered in the EAEU.
The registration procedure will take approximately eight months, but may take significantly longer if there are objections from interested persons, if the examination results are challenged in any of the countries or if other obstacles to registration arise.
Under the Agreement, it is also possible to convert national applications in EAEU member states into Eurasian applications.
In addition, if there are registered trademarks in the territory of all EAEU member states, the applicant can apply to replace them with a single Eurasian trademark.
Possibility for interested parties to file objections
After the publication of a trademark application, interested persons will have three months to object to this designation receiving legal protection.
The applicant can submit its arguments against the objection within three months after being notified by a PTO that an objection has been presented. PTOs will make the final decision.
As a result, right holders of registered trademarks are advised to monitor published EAEU applications to control the risk of the registration of trademarks similar to their own.
After the full entry into force of the Agreement, the new regional system will allow companies to conveniently register trademarks on EAEU territory with a single procedure. Based on the “one stop shop” principle, this will increase the efficiency of managing trademark portfolios.
Once a trademark is registered in the EAEU, the right holder can protect its exclusive right within all the EAEU member states in accordance with the national legislation of the state where the relevant proceedings were initiated.
For more information on this eAlert, please contact CMS Russia experts Anton Bankovskiy, Vladislav Eltovskiy or your regular contact at CMS Russia.
* In Russian