The Eurasian trademark system creates new opportunities for brand owners
The Eurasian trademark system is a regional system that allows a trademark to be registered in all of countries of the Eurasian Economic Union (EAEU) by submitting a single application.
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The Eurasian trademark system is a regional system that permits a trademark to be registered in all Eurasian Economic Union (EAEU) countries with just one application. Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia are the current members of the EAEU. Within these territories, a single customs space functions, establishing a broad regional principle of trademark exhaustion. This needs trademark registration in all EAEU member states in order to ensure efficient protection of a brand owner’s rights, which can be critical in the fight against counterfeits and parallel imports.
The discussion of the need to create a regional trademark system for registering trademarks in the EAEU has been underway since 2017. In February 2020, member states signed the EAEU Treaty, which came into effect on 26 April 2021 – World IP Day. A few weeks later, the Eurasian Economic Commission approved the instruction to the EAEU Treaty, as well as a list of legally significant actions and fee rates.
The Eurasian trademark system creates new opportunities for brand owners
Key points of the registration procedure
The EAEU Treaty’s instruction governs the Eurasian trademark application process, trademark registration procedures, renewal procedures, and trademark rights disposition. Standard forms, such as the trademark application and the Eurasian trademark certificate, are also included.
Key features of the Eurasian trademark system include the following:
- Only designations that can be represented in graphical form can be registered as a Eurasian trademark. Non-traditional trademarks (eg, sound and smell marks) cannot be registered.
- Trademark applications must be filed in Russian or a language of an EAEU member state with a Russian translation attached.
- A trademark application must be submitted in electronic form. Paper trademark applications may only be filed temporarily in the event that there is a technical inability to process the trademark application electronically.
- Applicants must apply to the national trademark office of the EAEU country where they have an accredited place of business. Those from non-EAEU member states are entitled to apply to any national trademark offices in the EAEU.
- Any interested party can file an opposition against the Eurasian trademark application within three months from the publication date of the application.
- An applicant has the right to submit a response to the provisional refusal within three months from the receipt date.
- An applicant has the right to appeal the decision of a national trademark office by sending an objection against such a decision directly to that national trademark office.
- An applicant has the right to nationalise the application in the EAEU countries that may approve it, even if the entire Eurasian trademark application was rejected.
- The total time from application to registration for a Eurasian trademark is expected to be approximately eight months (in the absence of office actions or a provisional refusal), which is shorter than the registration period under the national or the Madrid systems in EAEU countries.
- A Eurasian trademark is valid for 10 years starting from the application filing date with the right of extension for an unlimited number of times.
- Any interested person can cancel a Eurasian trademark due to 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 licence agreement on a Eurasian trademark must be registered in the national trademark office of the EAEU member state where the right to use the trademark is granted.
- Disputes related to the violation of the exclusive right to a Eurasian trademark on the territory of an EAEU member state are resolved in accordance with the legislation of that respective state.
Comment
The Eurasian trademark system offers applicants a number of advantages, particularly:
- the submission of a single application to register a trademark in all EAEU countries;
- a shorter registration period;
- lower registration costs; and
- cancellation due to non-use only if it has not been used in all EAEU countries.
It is expected that brand owners will soon have the opportunity to use the new regional trademark system to register their marks in the EAEU. However, the strategy and best options for registration in EAEU countries should be selected in each specific case. This will depend on the selected designation, the results of clearance searches (if they were conducted before filing the trademark application), the brand owner’s business plans and other related factors.
AAA IPRIGHT – Global IP – Global Trademark Registration
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