This economic agreement allowed the ratification of the Treaty on EAEU trademarks and appellations of origin of February 3, 2020 followed by the Instructions to the Treaty on EAEU trademarks and appellations of origin.
It is interesting to note that this treaty is not yet implemented unlike the Protocol on Protection of Industrial Designs adopted on September 9, 2019, which is operational since June 1, 2021 for Eurasian design registration (https://www.eapo.org/en/index.php?newspress=view&d=1201).
Although its implementation is not yet effective, we have a fairly concrete vision of the main characteristics that the EAEU Trademark should have. Nevertheless, all the information we have is what seems to be planned at the moment and may still be subject to modification.
In practice, the Eurasian trademark will have similarities with the EU trademark: a single mark with effect in all the member countries which is thus a potentially valuable/promising tool /new regional trademark system, both from a management and from cost points of view.
What : The different types of trademarks able to be registered shall be graphically represented and are thus expected to be: word; device; three-dimensional or the combination of the latter elements.
On the other hand, signs may not be registered if they: lack distinctiveness; are descriptive or deceptive and misleading.
The lack of distinctiveness is expected to be overcome only if distinctiveness is acquired in all member States.
There are a number of other points worth noting with respect to applications:
- A multi-class application will be possible
- No evidence of use or intention to use will be required for filing an application (first to file principle)
- Trademarks will be protected in the form they are registered: those in a particular color/script will not automatically cover all other color/script versions.
- The validity of an EAEU trademark will be 10 years starting from the filing date.
First, there is currently no centralized office for the management of Eurasian trademarks: a single application will have to be filed in the IP Office of one of the five member States. No basic application or registration will be required. 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 office in the EAEU.
The Office receiving the EAEU trademark application will first carry out a formal examination, and then a substantive examination (entailing related fees) may be carried out by all the Offices of all the Member States based on absolute and/or relative grounds of refusal.
In the event that a notification of provisional refusal is issued by the office that received the application, and before the filing IP Office has rendered his final decision, the applicant will have the opportunity to file amendments to withdraw its EAEU application or to transform its EAEU application into national ones.
The EAEU trademarks that successfully pass examination will be published on the official website of the EAEU. Within 3 months of publication, any party is entitled to file written observations against an application in order to prevent the registration. The applicant will have a three months period to respond to these observations starting from the date of notification of the observations. 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)
The relative grounds for refusal will be:
- Identity or confusing similarity to prior trademarks enjoying protection/pending for registration in a member State;
- Identity or confusing similarity to well-known marks enjoying protection in a member State;
- Identity or confusing similarity to third parties’ neighboring IP enjoying protection in a member State (industrial design, appellation of origin, company name, commercial designation, copyright-protected item…).
Invalidation and cancellation actions:
Any party will be able to file an invalidation action. It is important to note that the action can only be introduced within 5 years from the date of registration if it is based on relative grounds. However, there will be no limit for introducing an invalidation action based on absolute grounds.
In the event that one of the national IP offices pronounces an invalidation, there will be an annulment of registration in the Unified Register, but the transformation into national applications will still be an option for the applicant.
Finally, non-use cancellation actions will be possible from 3 years after the registration date. It is important to note that evidence of use in a single Member State should be sufficient to maintain the EAEU registration.
Subsequent changes and recordals:
A transfer of the exclusive right to a Eurasian trademark must be registered at the national offices in the territories of all EAEU member states at the same time.
A license 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.
The EAEU trademark is not yet implemented. A number of aspects still need to be discussed between the member States.
In particular, the member States still have to organize themselves regarding the management and the exchange of information between the national IP Offices. Moreover, the fees for all the procedures relating to the EAEU trademark have not yet been decided.
The interest of registering such a trademark may arise for companies with an international scope and especially if we take into account potential future integrations of other States into the Eurasian Economic Union .
The system will most likely start to operate in early 2022 and we will keep you posted. Do not hesitate to contact us. Our group will be pleased to assist you in developing filing strategies.
Victor Blanloeil is a French Legal Counsel who recently joined the Paris trademarks team. He is the holder of a Master’s Degree in Intellectual Property Law from the Center for International Intellectual Property Studies. He assists a very diverse clientele, both in France and abroad, primarily handling trademark and design matters.