Eurasian Union Trademark – an Overview of Challenges and Benefits16 November 2018
The idea behind the Eurasian Union Trademark
The Eurasian Economic Union (EAEU) is a relatively new economic union of several countries of former USSR. The economic relations between those countries were broken and now they are taking steps to restore them. Currently the EAEU includes five countries: Russia, Belorussia, Kazakhstan, Armenia and Kyrgyzstan. Although the EAEU has been established to simplify and enhance turnover of goods between the countries, it presents nevertheless new challenges for the trademark owners, given the fact that each country has its own trademark registration system. In fact, there are no custom borders between those states and the goods are carried freely from one country to another country. This means that if a trademark is registered in one of the countries and not registered in another country, the particular item may or may not infringe the trademark rights. This may cause problems to the trademark owner/his distributor and makes it highly recommendable to register the trademark in all five countries.
In order to tackle these issues and to make things easier (and cheaper) for the trademark owners, the EAEU countries agreed on a common Eurasian Union Trademark. Currently, the agreement on the common EAEU trademark is at the stage of approval by the participating countries.
A common trademark entails common customs register. This problem is also high on the agenda and has been discussed in parallel with the common trademark. In fact, all the formalities for the unified register have been complied with but it is not yet in place. As in case of the EAEU trademark it is expected that the unified register will be operable soon. Pending that, trademarks must be registered in each particular country and in each national customs register.
The fight against counterfeit goods
Some counterfeit goods come to Russia from Europe but most of them come from the South. Russia has thousands of miles long border with China, Kazakhstan and Kyrgyzstan has border with China too. Russian customs may monitor counterfeit goods when they come from the countries other than the EAEU. Hence dealing with counterfeits coming from EAEU countries (even though their customs also monitor the goods at their borders) is only possible on the market involving police or suing infringers directly on the market.
Fighting counterfeiting may be a problem even though there are good laws and good enforcement opportunities. Within the framework of this article counterfeiting may be interpreted broadly. Time ago, some businesses brought their goods to Russia without registering trademarks. Trademark squatters registered those trademarks in their name and tried to sell the trademarks to the real owners, often successfully. Sometimes trademark squatters were sued and the trademarks returned to their real owners. Later, government fees were raised, the laws were improved so that the practice discontinued.
At the same time, another problem came to the fore. Many manufacturing companies do not trade directly in Russia but sign contracts with distributors. While doing that they overlook registration of trademarks. This cooperation may last for some time without a hitch. The goods earn reputation on the market. Later, good business relations may crack. Not every time but more than once distributors registered such trademarks in their own name and created obstacles to their former business partners. Alternatively, they could engage in parallel import. In all cases, this is the result of negligence on the part of real trademark owners. This situation can be repaired because the updated IP law and the law on unfair competition allow taking away the pirated trademarks, however this involves expense of time and money. Presence of EAEU on the scene may give additional touches to this situation given that the goods move freely through the EAEU, the trademarks may not be registered in all the EAEU countries, the Eurasian trademark is not yet in place and there may be other incoming factors which are not seen yet due to the young age of EAEU.
The importance of registering a trademark
So it is clear the importance of registering a trademark in Russia and other countries of EAEU before putting the goods on the market. This situation may have various overtones in different cases; there were cases where the real trademark owners managed to cancel pirated trademarks and assert their rights, however the necessary procedures involved much expense and time which negatively affected the business.