HomeNews & EventsEAEU Treaty on Trademarks, Service Marks and Appellations of Origin of Goods enters into force
May 24, 2021

EAEU Treaty on Trademarks, Service Marks and Appellations of Origin of Goods enters into force

April 26, 2021 saw the Eurasian Economic Union’s (EAEU) Treaty on Trademarks, Service Marks and Appellations of Origin of Goods enter into force. Initially concluded by the EAEU on February 3, 2020, the enactment of the Treaty was coincidentally aligned with World Intellectual Property Day 2021, suitably marking the momentous occasion. Whilst the Treaty has entered into force, the date of acceptance of applications is yet to be confirmed.

The introduction of the Treaty is a significant step forward for the EAEU, forging regional routes for the protection of trademarks and appellations of origin of goods amongst its member states of Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia.

Unlike other regional intellectual property systems implemented across the world, the new EAEU Trademark Treaty does not create a regional trademark office, but affords applicants the opportunity to file one single trademark application, or appellation of origin of goods application, in Russian with the IP office of any EAEU member state, covering all contracting parties simultaneously.

Once a trademark application is filed with the receiving office, the same office will conduct the formal examination of the application. The application will then be published on the EEC’s official site, and any interested party will be able to oppose registration of the claimed trademark. Substantive examination is conducted by the national IP office of each member state simultaneously, that will also review oppositions filed, if any. Owing to the fact that the IP right is to cover all member states of the EAEU, the mark must be deemed registrable by all national offices, or the EAEU application will be deemed unregistrable overall.

Should a regional application be deemed unregistrable in any EAEU member state, or if the applicant wishes, an application may be converted from a regional trademark application into separate national applications within the EAEU member states. Such applications will retain the same priority date as the initial regional filing, and will be subject to the registrability requirements determined and examined by each respective national IP office. Furthermore, applications which begin as national in any one of the member states can be converted into a regional trademark application covering the EAEU, subject to the priority requirements of the Treaty. In this instance, the national office of filing may be used as the receiving office of the regional application, and a converted application will be subject to the same requirements set forth above.

Trademark infringements for EAEU registered marks will be subject to the same level of liability as those registered as national trademarks, or as validated international marks, in any member state.

The existing procedure for the protection of appellations of origin of goods within the EAEU allows for rights to be registered and recorded on the national registers of each EAEU country, according to their national law. Henceforth, these existing registrations in any member state will become recognised in each EAEU country under the Treaty upon filing a request and paying a prescribed fee. As a consequence, they will be entered into the Unified Register of Appellations of Origin of Goods, thus being valid across the territory of the EAEU.

A new application for an appellation of origin is to be filed with, and examined by, one national IP office within the EAEU, simplifying the process of obtaining EAEU-wide protection. Once registered by that national office, the appellation of origin is then added to the Unified Register of Appellations of Origin of Goods for all EAEU territory states to accept. The right holder will also be issued a unified certificate of protection, certifying its use within the territory.

In the event of a negative decision in relation to an appellation of origin, applicants may appeal to the IP Office with which the application was filed within 3 months from the receipt of the decision.

Both EAEU registered trademarks and appellations of origin will be valid for an initial period of 10 years from the date of filing, and are both extendable by further 10-year periods an unlimited number of times.

The implementation of the Treaty, and subsequent regional trademark system and appellations of origin system, aims to provide for a more harmonized environment for the registration of IP rights across the EAEU. This is facilitated by the fact that applicants are no longer required to submit an application to each individual EAEU state in which they wish to secure protection. The new routes for obtaining IP rights within the region of the EAEU offer a more attractive, and potentially lucrative, location for conducting business activity and entrepreneurial investments for international applicants and nationals alike.

Author: Danielle Carvey