Towards the year 2015, a new IP system has emerged in Northern Europe that aims to harmonize and unify, to a certain extent, the registration of trademarks in Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia. It is the so-called “Eurasian IP System”.
The Eurasian IP System is created primarily under the framework of the “Eurasian Economic Union (EAEU)” and is based on the “Treaty of the Eurasian Economic Union”. At the moment the five cited countries are the only members, but it is very possible that others in the region will join over the time.
For us Spaniards and, in general, for the Western world, the eastern markets of our continent may seem somewhat unknown, distant or very alien to our daily lives, very focused on the European Union and America. However, in the world, especially in Asia, these markets are very important. The Russian market looks mainly towards Asian horizon and this process of integration with other states in the region to boost their economies has been developing for many years.
The alliance among these five States aims to achieve a free and unique economic space in which goods, capital, services and people circulate freely within a single market and under the framework of a coordinated customs integration.
As regards the IP field, the new trademark registration system is about to materialize – it was planned for 2020 – as an opportunity for the registration and protection of trademarks, even though there are still many fringes to overcome. In addition to the logical objectives of any common market, it seems that this new system also seeks to speed up the registration of trademarks in these jurisdictions.
Making a comparison with other existent and commonly used registration systems, it would broadly be more similar to the Madrid System than to the trademark in the European Union or to the AIPO administered by L’ Organization Africaine de la Propriété Intellectuelle (OAPI). It is not a completely unitary system, but rather a system that allows obtaining a trademark registration to obtain a bundle of national registrations, but that maintains a certain unity and dependence for some procedures and aspects. Therefore, from the moment this new registration comes into force, it will constitute one more strategic formula for the protection and internationalization of trademarks.
Some characteristics of what the Eurasian Trademark System will be:
- The application form will be unique and will be deposited with any of the intellectual property offices to choose from among those of Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia.
- The substantive examination will be carried out by each intellectual property office in each country.
- The official language will be, of course, Russian.
- For a trademark to be granted, it must be granted in all countries. Despite the fact that once the trademark is granted it becomes a bundle of national registrations, it must be granted by all the offices. Otherwise, it will be necessary to transform the Eurasian registry into independent national registries.
- The duration of the procedure is estimated to last approximately 1 year.
- There will be an opposition procedure within a period of 3 months. The opposition may be submitted to the receiving office where the application was filed.
- It is expected that the use of the trademark in one of the countries may serve as proof of use in the other members.
- It is not clear enough which office will have to be the one to request the renewal of a trademark, but it is reasonable to think that it will also have to be filed with the office that received the trademark application.
- It is still unknown if the Eurasian Mark is expected to become part of the Madrid Protocol. Therefore, it will not be possible to make a designation of this jurisdiction via Madrid Protocol, at least in the short-medium term.
- At the moment, there is not a unitary or centralized Eurasian administration nor jurisdiction. Therefore, administrative or judicial issues, it seems that they must be defended before the office through which the trademark has been applied for, and judicial issues will be heard by the competent national court.
It will be very interesting to know how this new Eurasian System and the Madrid Protocol coexist in practice. The reality is that the Madrid Protocol allows to protect trademarks not only in Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia, but also in practically all of northern Europe and very much of Asia (new Asian countries are also adding) through a partially centralized procedure in the initial phases and which currently allows a more or less centralized management of portfolios for certain formalities.
Author: Cristina Arroyo
Previously published in Economist & Jurist [in Spanish]
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