On February 2, 2017, Russia announced that it would seek to ratify the draft Agreement on Trademarks, Service Marks and Appellations of Origin of the Eurasian Economic Union.
The Agreement introduces the concept of a CES trademark. “CES” stands for common economic space. A CES trademark is a regional Eurasian trademark that covers the territories of all members of the Eurasian Economic Union (EAEU). The EAEU is a political and economic union of five member states: Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia. It was established on January 1, 2015, by the Treaty on the Eurasian Economic Union.
The CES trademark register will co-exist alongside national registers, which will continue as before. Brand owners will have the option of applying to register either, or both, CES trademarks and national trademarks.
Under the CES trademark regime, a brand owner may file an application in the local national trademarks office (the “Office of Filing”) of any one of the member countries where it has an accredited place of business. After receiving an application, the Office of Filing performs examination as to formalities and then notifies the national trademarks offices of each member country. The application is then published on the CES website and there is a three-month window to file a pre-grant opposition. If there is no opposition, the application then proceeds to substantive examination in each national office. Each national office, including the Office of Filing, delivers an examination opinion to the Office of Filing. If the mark is available, a favorable decision is passed along to the applicant and the final fee can be paid; a registration has a ten-year renewable term.
If any one country delivers a negative opinion, it can be appealed by filing an appeal directly with the national office that issued that opinion; if a negative opinion is not appealed, or if the appeal is rejected, then the Office of Filing will reject the entire CES application. In that case, the applicant would have a few options: if the negative opinion can be overcome by amending the list of goods to a narrower list, then the CES application can proceed to allowance; alternatively, the applicant could elect to nationalize the CES application into those countries that provided a positive opinion. In that case, the applicant would file a Notice of Conversion and the application would continue in those regional offices as a national application.
The Agreement also envisages that a person who has filed a national application in, for example, Russia can elect to convert the pending application into a CES application by giving notice and paying the requisite fees (Art. 4, para. 5). Article 14 of the draft allows the owner of a national registration to request a CES trademark certificate provided that the mark, the named owner, and the list of goods and services are to be the same.
The details as to how the process is to be administered will be set out in official guidelines, which have not yet been released.
A CES Trademark registration can be enforced, or invalidated, in each member country under the local laws of that country.
The creation of the CES Trademark system will ultimately be advantageous to brand owners and is consistent with the creation of the free trade zone and unified customs register for the Eurasian Economic Union.
The ratification of the draft agreement is in its final stages and it is hoped that all member-states will ratify the draft agreement by the end of 2017 with implementation perhaps as early as 2018.
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© 2017 International Trademark Association