29th August, 2017
Eurasian Economic Union Moves Forward with Customs Code, Eurasian Trademark
The Customs Code of the Eurasian Economic Union (EAEU) may enter into force this year, since the last EAEU member state, Belarus, signed it in July. All other member states signed it in December 2016.
The Code still needs to be ratified by all five members – Armenia, Belarus, Kazakhstan, Kyrgyzstan and the Russian Federation. During INTA’s Pre-Annual Meeting Roundtable held on 28 March 2017 in Moscow, a Eurasian Economic Commission (EEC) representative specified that the entry into force could be expected in December 2017 or January 2018.
The new Code provides for the establishment of the EAEU Customs Register that will be kept by the EEC and that will exist alongside national customs registers.
According to Article 385 of the Code, in order to enter trademark, service mark, geographical indication or copyright and related rights into the EAEU Customs Register, a rights holder will have to submit a request and all other necessary documents confirming the rights in all EAEU member states directly to the EEC. When being represented by an attorney, rights holders will have to have provide a power of attorney that is valid across the EAEU.
Once entered into the Register, an IP right will be under Customs protection for two years with possible unlimited two-year extensions. Each extension should be claimed well before the lapse of the previous two-year period. However, the total term of Customs protection cannot exceed the term of protection of the IP right itself in the EAEU member state in which it expires the earliest.
The EEC is expected to adopt detailed regulations on keeping the Register and on the entire process after the Code enters into force.
The EAEU is also moving forward with the Eurasian trademark system, which will allow rights holders to obtain registrations across the EAEU. The draft Agreement on Trademarks, Service Marks and Appellations of Origin of the EAEU was adopted on 17 March 2016 by the EEC Council, and the internal approval of the Agreement by each member state is currently being carried out. In February 2017, the Russian government issued an Order to sign the Agreement.
Much like the EAEU Customs Code, the Eurasian trademark system is expected to come into force by the end of 2017.
Tajikistan Introduces Patent Term Extensions
On 14 November 2016, Tajikistan passed amendments to its Law on Inventions which provide for extensions of national and Eurasian patents in Tajikistan. The amendments entered into force on the same day, but the procedure for applying for extensions is yet to be determined by the Tajik Patent and Trade Mark Office.
According to the new provisions added to Article 4 of the Tajik Law on Inventions, the term of protection for a national or Eurasian patent in the field of pharmaceuticals, pesticides and agrochemicals whose use requires a drug registration certificate can be extended if more than four years have lapsed from the date of filing the patent application until the date of obtaining the drug registration certificate (marketing authorization). The patent term will then be extended by the amount of time elapsed between the filing date of the patent application and the date of receipt of the drug registration certificate, minus four years, but without exceeding five years.
Now all Eurasian Patent Organization (EAPO) member states’ national legislations provide for patent term extensions.
The European continent is ‘split’ between the European Patent Convention (EPC) countries and the Eurasian Patent Convention (EAPC) countries. The EPC was the model for the EAPC; therefore Eurasian patents work in a similar way to European patents in EPC countries.
There are eight EAPO member states: Turkmenistan, Belarus, Tajikistan, the Russian Federation, Azerbaijan, Kazakhstan, Kyrgyzstan and Armenia. Moldova is a former member state; in 2011, it denounced the Eurasian Patent Convention, the treaty that instituted Eurasian patents and the EAPO in 1995.
Russia’s Supreme Court Upholds IP Court’s Controversial Decision
On 15 May 2017, the Russian Supreme Court upheld one of the recent confusing Russian IP Court decisions that seem to collide with Russian legislation regulating what is and what is not a trademark infringement as well as with established practice.
The case in question concerns importing goods into Russia bearing the TRISOLEN trademark manufactured and sold by German company LEUNA EUROKKOMERZ GmbH, the owner of the trademark in Germany, which is similar to the ТРИЗОЛЕН trademark (TRISOLEN in the Latin alphabet), registered in Russia by the Russian company MVT Trade LLC. In line with the existing case law, the first instance and appellate courts issued decisions stating that importing TRISOLEN branded goods constituted trademark infringement, but the IP Court cancelled the decisions, declaring that goods imported to Russia manufactured in another country and bearing a trademark registered in that country of origin, despite bearing a mark highly similar to a trademark registered in Russia, cannot be considered counterfeit according to the Code of Administrative Offences. According to the IP Court ruling, only goods that infringe a trademark in their country of origin can be prohibited from circulating in Russia.
The Supreme Court upheld this decision and rejected the appeal filed by MVT Trade LLC on the grounds that the Russian company’s arguments did not prove the alleged breach of procedural or material laws.
The Supreme Court decision is likely to limit the scope of trademark rights protection in Russia, because Russian customs and police authorities, which have traditionally played an important role in stopping such shipments, will be unlikely to take action in such cases in the future.
A trademark infringement can incur civil, administrative or criminal liability under Russian legislation. Police and Customs, which could initiate administrative or criminal proceedings, are now unlikely to act, so the only remaining IPR protection route for trademark holders is a civil action, particularly because the Russian Civil Code fully transposes the Paris Convention of 1883, including the territorial principle of exclusive rights (Article 1346 of the Civil Code).
Given that in civil actions the burden of proof, suppression of unlawful acts and participation in court proceedings rests solely with the rights holder, and that, according to existing case law, courts are generally reluctant to grant preliminary injunctions, protecting IP rights in similar cases is likely to become even more complex for trademark holders in Russia.