The Eurasian Trademark System is a regional system that allows a trademark to be registered in all Eurasian Economic Union (EAE) countries by submitting a single application. The EAEU member states currently include Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia. A single customs area operates within these territories and lays down a broad regional principle of exhaustion of trademarks. This requires the registration of a trademark in all EAEU member states in order to ensure effective protection of the rights of the trademark owner, which can be crucial when it comes to combating counterfeits and parallel imports.
The discussion on the need to create a regional trademark system for the registration of trademarks in the EAEU has been ongoing since 2017. In February 2020, member states signed the EAEU Treaty, which entered into force on April 26, 2021 – World Intellectual Property Day. Weeks later, the Eurasian Economic Commission approved the EAEU Treaty Instruction, along with a list of legally important actions and royalty rates.
Key points of the registration process
The EAEU Treaty Instruction governs the Eurasian trademark application process, trademark registration procedures, renewal processes and the assignment of trademark rights. It also contains standard forms including trademark application and Eurasian trademark certificate.
The main features of the Eurasian trademark system are as follows:
- Only designations which can be represented in graphic form may be registered as a Eurasian trade mark. Non-traditional marks (eg sound and smell marks) cannot be registered.
- Trademark applications must be filed in Russian or in a language of an EAEU member state with a Russian translation attached.
- A trademark application must be submitted in electronic form. Paper trademark applications can only be temporarily filed if it is technically impossible to process the trademark application electronically.
- Applicants should apply to the national trademark office of the EAEU country where they have an approved establishment. Those from non-EAEU member states have the right to apply to any EAEU national trademark office.
- Any interested party may file an opposition against the Eurasian trademark application within three months from the date of publication of the application.
- An applicant has the right to submit a response to the provisional refusal within three months from the date of receipt.
- An applicant has the right to appeal the decision of a national trademark office by sending an objection against such decision directly to that national trademark office.
- An applicant has the right to nationalize the application in EAEU countries that can approve it, even if the entire Eurasian trademark application has been rejected.
- The total time between the application and the registration of a Eurasian mark should be around eight months (in the absence of action by the office or provisional refusal), which is shorter than the period of registration under the national system or the Madrid system in EAEU countries.
- A Eurasian trademark is valid for 10 years from the filing date of the application with the right of extension for an unlimited number of times.
- Anyone interested can cancel a Eurasian mark for non-use if it has not been used within three years from the date of its registration in the territory of each EAEU country.
- A transfer of the exclusive right to a Eurasian trademark must take place in the territories of all EAEU member states at the same time and is subject to registration with the filing office.
- A licensing agreement for a Eurasian trademark must be registered with the national trademark office of the EAEU member state where the right to use the trademark is granted.
- Disputes relating to the infringement of the exclusive right of a Eurasian trademark in the territory of an EAEU member state are resolved in accordance with the legislation of that respective state.
The Eurasian Trademark System has features related to the payment of fees that distinguish it from both the National System and the Madrid System, including:
- the depositor must pay the filing fee, as well as the registration or renewal fee, at the filing office; and
- the substantive examination fee is payable by the applicant to each national Office separately.
The approved list of fee rates, which are in Swiss francs, suggests that it is more cost effective to register a Eurasian trademark than to register trademarks in EAEU countries individually under national or Madrid systems. .
For example, the total fee for the registration of the Eurasian trademark against a class by a Russian applicant is 1,220 Swiss francs; while the cost of registering the international mark under the Madrid Protocol by a Russian applicant in five EAEU countries will be around 1,343 Swiss francs (including the cost of registering a basic mark ). The cost of registering national trademarks in five EAEU countries will be much higher due to the need to pay for patent attorney services in all EAEU countries.
The Eurasian Trademark System offers applicants a number of advantages, including:
- the submission of a single application for registration of a mark in all EAEU countries;
- a shorter registration period;
- lower registration fees; and
- cancellation for non-use only if it has not been used in all EAEU countries.
It is expected that trademark owners will soon have the option of using the new regional trademark system to register their trademarks in the EAEU. However, the strategy and the best options for registration in EAEU countries should be selected in each specific case. This will depend on the designation chosen, the results of the authorization searches (if conducted before the trademark application was filed), the trademark owner’s business plans and other related factors.
Gowling WLG (International) Inc
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