Author: Valiantsin Rachkouski, Associated Partner, Patent Attorney of Belarus, Appraiser of Intellectual Property, Lawyer
EAEC structure foresees the establishment of a single market with free movement of goods (work, services). It will require uniform economic regulation mechanisms based, inter alia, on harmonized or unified legal norms.
The Protocol on intellectual property rights protection (Annex 26 to the Treaty on the Eurasian Economic Union of May 29, 2014 (Treaty on EAEC)), as well as other earlier documents of the Customs Union (CU), fixed the so-called regional principle of exhaustion of the exclusive rights on the trademark. It limits the ability of the rightholder to influence on the movement of goods within EAEC.
The regional principle legalized the parallel import by the importers not authorized by the rightholder of the trademark inside the territory of CU initially, and now – between the EAEC countries.
At the same time the rightholder retained the ability to restrict unauthorized deliveries of goods coming from outside. Herewith, it needs a unified regime for the protection of the trademark in all the countries of EAEC. That way can be excluded the possibility of uncontrolled entry of counterfeit goods into the integration union.
Accordingly, the trademark registration is required throughout the entire territory of EAEC and the customs protection measures should be applied to all territories of the EAEC countries. For this purpose, the countries agreed to put into effect the common trademark of EAEC and a single customs register of intellectual property objects.
Registration of the EAEC trademark
The registration of the EAEC trademark will be available as soon as the Treaty on Trademarks, Service Marks and Appellations of Origin of Goods of the Eurasian Economic Union (Treaty on trademarks of EAEC) comes into force. The draft of Treaty was approved by the Order of the Council of the Eurasian Economic Commission of March 17, 2016 No. 13.
The Treaty on trademarks of EAEC is based on the centralization of procedural issues of filing of applications and the multiplicity of decision-making centers for granting protection to the trademark of EAEC.
The application can be submitted to any of the national patent offices of the EAEC countries. The protection to the trademark will be provided if the application does not receive any refusal of these national offices. The regulation of procedural steps will allow such applications to pass the examination within a period not exceeding a year. This is an obvious advantage of the trademark of the EAEC in comparison with alternative procedures.
At the same time the system of registration of trademarks of EAEC proposed by the draft of Treaty at the current stage has certain weaknesses. If the EAEC countries fail to arrive at a reasonable consensus on the issue of fee rates, the procedure may not become a financially attractive alternative to the Madrid system for the international registration of trademarks. The EAEC trademarks registration system does not yet contemplate a single registration authority and a common body for resolving disputes related to their protection and use. Accordingly, there will be risks for users of the EAEC trademark registration system, arising from the existing differences in the methodological approaches of patent offices and the practice of law enforcement agencies and courts of the EAEC countries.
The single customs register of intellectual property objects legally existed in the format of the CU. But in fact, it did not begin to work because of the procedural issues as the national customs bodies did not agreed the order of interaction.
It is expected that the single customs register of intellectual property objects will become fully operational, if the new Treaty on the Customs Code of EAEC enters into force on July 1, 2017. For now the rightholders continue to use the capabilities of national customs registers to protect their trademark rights.
A significant advantage for rightholders which follows from the introduction of the procedure of registration of the EAEC trademark and the creation of the single customs register will be the technical component of their work.
A single information platform of the procedures will be administered directly by the Eurasian Economic Commission. These procedures will be synchronized to a certain extent, therefore, the rightholder will not have difficulties with the introduction of the EAEC trademark into a single customs register.
The pace of harmonization of the legislation within the legal space of EAEC in the field of trademarks protection does not create prerequisites for a significant correction of strategies for their protection and use. The implementation of the basic principles of EAEC into national legislation is minimal. In Belarusian law, for example, it is limited by duplicating of the regional principle of exhaustion of the exclusive right to a trademark according to the law “On trademarks and service marks”.
The somewhat protracted process of creating of the legal basis of the unified market of EAEC doesn’t allow us to consider the mechanisms of EAEC as a real alternative to the existing possibilities for the protection of trademarks. In the foreseeable future it will be more correctly to use the procedure of registration of trademarks of EAEC not as an alternative but as an addition to the existing national and international systems of trademark registrations, which allows to establish the unified regime of protection of the means of individualization throughout the entire EAEC space. The positive outcome of the EAEC trademark registration will be the regime of protection directly based on the provisions of the international treaty and independent (in due measure) from the specific national legislation. The practical argument for this kind of registration will be the existence of simplified procedure of including of the EAEC trademark in a single customs register (when it starts functioning). Furthermore, there will be no necessity of the confirmation of its use separately in each participating country as according to the Treaty on Trademarks of EAEC it will be enough to have a proof of use of particular EAEC trademark in any part of EAEC for the purposes of proceedings relating to the revocation of trademarks.