IP News Overview: Russia & CIS (September 2022 to February 2023)18 April 2023
1. Well-Known Trade Marks
2. Appellations of Origin of Goods and Geographical Indications
Intellectual Property News of the Eurasian Economic Union and Neighboring Countries
1. EAPO and EAEU
Additional ground for challenging a patent extension for an invention related to a medicinal product, pesticide, or agrochemical
On October 7, 2022, the Law on Amendments to Article 1363 of Part IV of the Civil Code
Clause 2 of Article 1363 of the Civil Code provides for the conditions for the patent extension for an invention related to a medicinal product, pesticide, or agrochemical, as well as granting an additional patent for an extended period.
The adopted law provides for the introduction of additional ground for challenging the patent extension and for challenging the effect of the additional patent granted in case of such extension. In accordance with the new version of Clause 5 of Article 1363 of the Civil Code, the patent extension and the corresponding additional patent may be invalidated in case of violation of the conditions provided for in Clause 2 of Article 1363 of the Civil Code.
The extension and the additional patent may be challenged by filing an appeal with Rospatent.
During the entire extended validity period, an appeal may be filed by any person, and after the expiration of this period — by an interested person.
The new law provisions apply to additional patents issued both before and after the law’s entry into force, as well as to the patents extended before January 1, 2015, when the patents were to be extended without issuing an additional patent.
The law entered into force on October 18, 2022.
The Law on Customs Regulation has been amended to allow entering geographical indications in the customs register of intellectual property subject matters
On December 5, Federal Law
In accordance with the amendments, geographical indications protected in Russia can be included in the customs register of intellectual property subject matters (TROIS) at the request of the right holder. Before the law was amended, such a procedure had been carried out only in respect of subject matters of copyright and related rights, trademarks and appellations of origin of goods.
With regard to goods placed under customs procedures that contain geographical indications entered in the Customs Register (TROIS), the customs authorities will take measures to protect intellectual property rights related to the suspension of the release of goods. In particular, the right holder will be notified about the received goods for which there is suspicion of counterfeiting, and will be able to take measures to protect its rights.
The amendments entered into force on March 6, 2023.
The Civil Code is amended in relation to the procedure for granting protection to inventions, industrial designs, appellations of origin of goods and geographical indications in accordance with international treaties
On December 5, 2022, Federal Law
The law clarifies the procedures related to granting legal protection in the Russian Federation to inventions, industrial designs, geographical indications and appellations of origin of goods in accordance with international treaties: the Patent Cooperation Treaty, the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs and the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.
In particular, the amendment to Article 1391 of the Civil Code provides that legal protection shall be granted in Russia to an industrial design registered in accordance with an international treaty if it complies with the conditions for granting protection to industrial designs provided for in the Civil Code. Similar provisions are envisaged in Article 1517 of the Civil Code for geographical indications and appellations of origin of goods protected in Russia in accordance with an international treaty of the Russian Federation.
Articles 1398 and 1535 of the Civil Code are supplemented with provisions on challenging the granting of legal protection in Russia to subject matters registered in accordance with the international treaties. The procedure for challenging them is the same as for Russian patents and registrations.
In addition, the amendment to Article 1385 of the Civil Code provides for publication of information on the receipt of international applications (PCT) by Rospatent for consideration. This will accelerate the appearance of information on such applications and make it more realistic for anyone to provide comments on the compliance of the inventions claimed in such applications with the requirements of the Russian legislation.
By virtue of the amendment to Article 1517 of the Civil Code, Rospatent will publish in the official bulletin information about foreign appellations of origin of goods and geographical indications for which legal protection has been requested in Russia under the Lisbon system. This will allow interested parties to submit to Rospatent their comments and oppositions to granting protection.
The amendments entered into force on December 31, 2022.
Draft law on amending Article 1260 of the Civil Code, aimed at protecting authors of composite and derivative works
On December 9, 2022, the Government submitted to the State Duma a draft law On Amendments to Article 1260 of Part IV of the Civil Code (draft law
The Government proposes to supplement Clause 4 of Article 1260 of the Civil Code with a new paragraph, in accordance with which in case of unauthorized use of a derivative or composite work, both the copyright of the author of the derivative or composite work and the rights of the authors of the works on which the derivative or composite work is based shall be protected.
Thus, the adoption of the Government’s proposal will ensure compliance with a unified approach to the protection of intellectual property rights, in accordance with which copyright in the work (including the derivative or composite one) arises at the time of its creation and must be legally protected from the moment it arises.
The proposed approach will apply to all types of derivative and composite works, and not only to computer programs, the denial of protection of the rights to which was the subject of consideration in the Constitutional Court.
On February 8, 2023, the draft law was adopted in the first reading.
Fees for granting protection to foreign appellations of origin of goods and geographical indications under the Geneva Act of the Lisbon Agreement were established and amendments to the Regulation on Patent and Other Fees were made (Decree of the Government of Russia dated September 19, 2022
In connection with the Russia’s upcoming accession to the Lisbon System for the International Protection of Appellations of Origin of Goods and Geographical Indications (Law on Accession No. 450-FZ dated December 30, 2021), the Government established so-called “individual fees” for the examination of international registrations by Rospatent (10,800 rubles / 155 USD), as well as “administrative fees” for granting the exclusive right to appellations of origin of goods and geographical indications in Russia (16,000 rubles / 230 USD) and its extension (20,000 rubles / 285 USD). As for these fees, the resolution became effective on December 31, 2022, when Law No. 450-FZ became effective, but in practice it will become applicable only after all the necessary procedures for the entry into force of the Geneva Act for Russia are completed.
In addition, in connection with the upcoming entry into force of amendments to the Civil Code allowing any individuals, not only individual entrepreneurs, to register trademarks (Law No. 193-FZ dated June 28, 2022), the relevant amendments were made to the Regulation on Patent Fees and will enter into force on June 29, 2023, together with Law No. 193-FZ.
Amendments to the rules for registering the exclusive right disposal and transfer of the exclusive right without agreement were made (Decree of the Government of Russia dated February 09, 2023
In connection with the upcoming entry into force of amendments to IV Part of the Civil Code — Law No. 143-FZ dated May 28, 2022 (enters into force on May 29, 2023) and Law No. 193-FZ dated June 28, 2022 (enters into force on June 29, 2023), the Government amended the Rules for State Registration of Disposal of the Exclusive Right to Invention, Utility Models, Industrial Design, Trademark, Service Mark, Registered Integrated Circuits Topography, Computer Program, Database under an Agreement, and Transfer of an Exclusive Right to Them without an Agreement, approved by Decree of the Government of Russia No. 1416 dated December 24, 2015 (hereinafter the “Rules”).
These laws provide for the following: Law No. 143-FZ — new conditions for the disposal of a trademark containing geographical elements, and Law No. 193-FZ — mandatory registration of a pledge of the exclusive right to a registered computer program and database. In this regard, the Government made the necessary amendments to Clauses 1, 3, 8, and 15 of the Rules.
In addition, one of the amendments to the Rules provides that Rospatent, when considering applications for registration of disposal or transfer of rights, may obtain the necessary explanations from the applicant through video conferencing.
The amendments will enter into force on May 29, 2023 (with regard to amendments related to the registration of a pledge of computer programs and databases and obtaining explanations through video conferencing) and on June 29, 2023 (with regard to amendments related to the registration of disposal of the right to a trademark).
The Ministry of Economic Development and Rospatent issued departmental enactments in connection with the amendments to the Law on Patent Attorneys
On December 22, 2022, the amendments to the Law on Patent Attorneys (hereinafter the “Law”), introduced by Law No. 416-FZ dated December 21, 2021, entered into force.
One of the amendments provides for the appointment of a so-called “responsible patent attorney” by the applicant or right holder, who can be approached by the federal executive authorities, including Rospatent, if they deal with the intellectual property subject matter registered with Rospatent in the name of the principal (Clause 4 of Article 13 of the Law).
In anticipation of the entry into force of these amendments, the orders of the Ministry of Economic Development approved the procedure for entering information about the responsible patent attorney in the state registers, changing and excluding such information, as well as the forms of the relevant applications (Orders of the Ministry of Economic Development
Earlier, Order of the Ministry of Economic Development
Also, in connection with the amendments to this law, Rospatent approved the List of Information Systems of Rospatent and Its Subordinate Organizations that patent attorneys are entitled to use, as well as the Procedure for Granting Access to Them (Order of Rospatent
The Ministry of Industry and Trade has amended the list of goods to which certain provisions of the Civil Code on protection of exclusive rights do not apply (Order of the Ministry of Industry and Trade No. 4456 dated October 21, 2022)
The order of the Ministry of Industry and Trade has amended certain items of the list of goods (groups of goods) to which Sub-clause 6 of Article 1359 and Article 1487 of the Civil Code do not apply, provided that these goods are commercialized outside the Russian Federation by the right holders (patent holders) or with their consent.
In particular, now the List includes an additional group of goods — alcoholic beverages that are allowed for parallel import starting from November 3, 2022. The list of sports goods, games, and toys that can be imported without the consent of the right holders from February 2, 2023 has been significantly expanded. At the same time, a number of brands of goods were excluded from the List. In particular, KYOCERA, SHARP, Legrand are excluded from the goods allowed for import.
Amendments were made to the Rules for Administrative Consideration of Disputes over Granting and Challenging of Granting Legal Protection to Subject Matters of Patent Law and Means of Individualization (Joint Order of the Ministry of Education and Science and the Ministry of Economic Development dated November 23, 2022
In connection with Russia’s participation in the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention (Law on Ratification No. 377-FZ dated November 23, 2020), as well as taking into account the prospects for Russia’s participation in the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Law on Accession No. 450-FZ dated December 30, 2021) and in the Treaty on Trademarks, Service Marks, and Appellations of Origin of Goods of the Eurasian Economic Union (Law on Ratification No. 360-FZ dated November 9, 2020), the Ministry of Education and Science and the Ministry of Economic Development issued a joint order amending the Rules for Consideration and Resolution by Rospatent of Disputes in Administrative Proceedings.
The Rules are supplemented with the types of appeals to be filed with Rospatent in connection with challenging the decisions being taken by Rospatent in respect of international and regional applications, patents and registrations.
The Rules are also supplemented with the indication of the possibility to file with Rospatent an appeal against the extension of the exclusive right to the invention and of the additional patent.
In accordance with the amendments to the Rules, when postponing the date of the meeting, as well as when suspending or terminating the consideration of the dispute, information on this must indicate the grounds and reasons for the postponement, suspension or termination.
In addition, now the grounds for refusal to accept an appeal for consideration exclude registration and granting protection when challenging decisions on granting a patent, on registration and on granting legal protection.
Previously, the Rules allowed a refusal to accept an appeal against such decisions if the appeal is filed after the registration was made on the application, but such a refusal was repeatedly recognized by the Intellectual Property Court as non-compliant with the law.
The IP Court considered the dispute between Deer & Company (US) and Rospatent regarding the Rospatent’ refusal to grant trademark protection for a color designation (court decision dated November 11, 2022 on case
The company applied to Rospatent for registration as a trademark of the color designation No. 2020726541 for goods of classes 7, 12 and 28 of the ICGS.
Rospatent refused to register on the grounds that the claimed designation does not meet the requirements of Clause 1 of Article 1483 of the Civil Code, namely, that it has no distinctiveness.
At the same time, Rospatent took a critical look at the materials provided by the company in support of the acquired distinctiveness.
The company appealed to the IP Court (hereinafter the “IPC”) requesting to reverse Rospatent’s decisions and to oblige Rospatent to reconsider the question of the claimed designation’s protectability.
In its decision adopted on November 11, 2022, the IPC noted that, as a general rule, the color design alone is not sufficient to allow the designation to perform an individualizing function.
The use of the claimed combination of colors or individual colors by other well-known manufacturers of identical products indicates a low probability of consumers having an associative link with the goods of only one manufacturer.
Registration of a color in the name of a particular person leads to monopolization of rights to it in the relevant market segment. In doing so, the court proceeds from the fact that the number of colors is limited and the frequent practice of color registration in the name of individual business entities may lead to a rapid depletion of all available colors in a particular area and, as a result, create barriers to market access for other business entities.
The IPC noted that a designation initially lacking distinctiveness can acquire it only as a result of long-term use.
In this instance, the applicant must prove that in the consumer’s mind such a designation is associated exclusively with the applicant and its specific goods or services.
The panel of the IPC judges agreed with Rospatent that both colors from the claimed combination are often used specifically on agricultural and timber-harvesting equipment, including in the claimed combination.
The widespread use of green and yellow in the agricultural equipment is due, among other things, to the fact that these colors are associated with nature, vegetation and the sun. For example, in addition to the applicant, agricultural equipment in a green and yellow color combination is produced by the world-famous German brand Krone, agricultural machines in green color are produced by such world brands as AGCO, Same-Deutz-Fahr (SDF), Amazone, etc., agricultural machinery in yellow color is produced, for example, by Caterpillar, ROPA.
The court pointed out that it is necessary to distinguish the procedure for establishing the acquired distinctiveness in the case when the designation is devoid of distinctiveness in itself, but, at the same time, it is not established that it is widely used by other manufacturers, from the case when, as in the case under consideration, the designation has no distinctiveness and is often used by other manufacturers to mark the goods produced and sold.
In the first case, the evidence of intensive use does serve as a basis for the conclusion that the consumer perceives the designation exactly as a means of individualization of the applicant’s goods and services.
In the second case, even when the applicant provides evidence of intensive use, the conclusion that the consumer perceives the designation as the applicant’s means of individualization is difficult given that other persons also use this designation.
The panel of judges analyzed the applicant’s arguments on the acquired distinctiveness of the disputed designation and evaluated the documents submitted in support of this argument.
Based on the results of such an analysis, the IPC agreed with the Rospatent’s opinion that the documents submitted by the applicant do not confirm the acquired distinctiveness of the claimed designation as at the application’s filing date.
The acquisition by a certain combination of colors of distinctiveness can be recognized if in the eyes of the consumer this combination of colors is in itself indicative of the manufacturer, irrespective of the presence or absence of other elements. However, in all the photographs available in the case, the agricultural and timber-harvesting equipment, in addition to being painted in certain colors, has other individualizing elements, in particular,
From the materials presented for the goods of the 7th and 12th classes of the ICGS being supplied to the Russian Federation, it is impossible to understand by what characteristics consumers individualize the company’s products: whether these characteristics are a combination of colors or verbal and visual elements. No evidence of the company’s commercialization in the Russian Federation of goods of the 28th class of ICGS (toys) marked with the claimed designation was presented.
The presented information on the history of the beginning of the company’s work in Russia, the creation of production facilities, participation in exhibitions, the geography of deliveries, publications in the media, printouts from the Internet, invoices and consignment notes, license agreements on the right to use other trademarks do not directly confirm the well-knownness among consumers of the company’s equipment painted in the green and yellow colors and, therefore, do not indicate that the claimed designation acquired distinctiveness.
Thus, the documents submitted by the applicant do not show that on the date of filing the application the combination of green and yellow began to be perceived by consumers as a means of individualization of the company’s goods specified in the application. In this regard, the IP Court dismissed the application of Deere & Company (USA) to invalidate the decision of Rospatent to refuse the state registration of the trademark.
Having considered the company’s cassation appeal, the Presidium of the IP Court upheld the decision of the court of first instance (resolution dated February 10, 2023 on case
[IR No. 1503811]
Schengen beer from Estonia (Decision of the IPC dated November 2, 2022 on case No. SIP‑822/2021)
SAY Organization OÜ (Estonia) filed a claim with the IP Court (hereinafter the “IPC”) to invalidate the Rospatent’s decision to refuse to grant legal protection in the Russian Federation of the trademark under international registration No. 1503811.
Refusing to grant protection, Rospatent noted that the verbal element “SCHENGEN” included in the claimed designation reproduces the name of a village located in the Grand Duchy of Luxembourg, for which reason the verbal element “SCHENGEN” is non-protectable, since it is perceived as an indication of origin of goods or location of the person manufacturing goods and providing services.
In addition, Rospatent noted that since the applicant is located in Estonia, the claimed designation is capable of misleading a consumer with regard to the place of production of goods.
By decision of the IPC (court of first instance), the company’s claims were dismissed, but the Presidium of the IPC, having considered the company’s cassation appeal, reversed the decision of the court of first instance and remanded the case for a new consideration.
During the reconsideration of the case in the first instance, the IPC invalidated the Rospatent’s decision and obliged Rospatent to reconsider the company’s appeal.
When reversing the Rospatent’s decision, the IPC stated the following.
The law does not establish an unconditional ban on the use of geographical names in trademarks.
The designation may be claimed for goods whose characteristics are related to geographical origin (in this case, such designation indicates the place of production and sale of the goods, as well as the location of the manufacturer of the goods and the geographical origin of the goods), or for goods whose characteristics are not related to geographical origin (in this case, the designation indicates the place of production and sale of the goods, as well as the location of the manufacturer of the goods).
In the case where the characteristics of the goods are not related to geographical origin, the analysis of the possibility of granting protection to the claimed designation should include an analysis of associative links among consumers in relation to the place of production or sale of the specific goods specified in the application, as well as to the location of the manufacturer of such goods. In the case where the characteristics of the goods are related to the geographical origin of the goods, in addition to the previous analysis, an analysis should be made of the consumer’s perception of the characteristics of the goods claimed for registration as related or not related to the geographical name under consideration. To determine the descriptiveness of the claimed designation in relation to the goods specified in the application for registration of a trademark, it is required to establish at least one of these circumstances.
Rospatent violated the established methodological approach.
When assessing the existence of grounds for refusal to register a trademark on the basis of Clause 3 of Article 1483 of the Civil Code, existing or probable associative links that arise among consumers in connection with the disputed designation should be taken into account.
Rospatent did not produce any evidence that the specific goods, for which legal protection is requested, can be perceived by a Russian consumer as goods produced in the village of Schengen, and, therefore, did not prove either the descriptive nature of the claimed designation or its falseness or ability to mislead a consumer.
The evasion of Rospatent from considering the company’s arguments that the trademark is not descriptive and is not capable of misleading the Russian consumer about the place of production of goods (Schengen Village) and from evaluating the evidence submitted by the applicant in support of these arguments is a significant violation of the decision-making procedure by a body exercising public functions.
As a result, the Rospatent’s decision has been canceled. The Presidium of the IPC upheld the decision of the IPC of first instance.
Recovery of lost profit in the claimed amount contradicts the principles of reasonableness, fairness and proportionality of liability to the committed violation, it was carried out by the court without taking into account the fact of destruction of counterfeit goods, as well as in the absence of evidence of a cause-and-effect relationship between the fact of commercialization of counterfeit goods and the failure of the right holders to receive income from the sale of the original goods (Ruling of the Supreme Court of the Russian Federation dated February 07, 2023
Foreign companies Chanel SARL (CH) and Christian Dior Couture S. A. (AC) filed a claim against the entrepreneur for damages in the form of lost profit caused by the infringement of the rights to their trademarks.
The reason for going to court was the sale by the defendant of sunglasses with a picture and an inscription confusingly similar to the companies’ trademarks. These circumstances were previously established in an administrative court case (No. А63–3402/2019), in which the entrepreneur was brought to administrative liability imposing a punishment in the form of a warning and the destruction of seized counterfeit products.
In the new court case, the claimants asked the court to recover losses from the entrepreneur in the form of lost profit amounting to 125,500 rubles. The lost profit for the claimants was the lost income as a result of the defendant’s gratuitous use of trademarks applied to the goods intended for sale. The amount of damages claimed for recovery was determined by the claimants based on the prices of original products, on the principle that one unit of counterfeit product displaces one unit of original product from the market, and was recognized by the courts as justified.
By decision of the court of first instance, the stated claims were fully satisfied. The Court of Appeal and the Intellectual Property Court as the court of cassation upheld the decision of the court of first instance.
The Supreme Court, to which the entrepreneur applied, reversed the judgments of the inferior courts and remanded the case for a new trial to the court of first instance. In doing so, the Supreme Court stated the following.
Compensation for damages as a penalty is compensatory in nature and is aimed at restoring the property status of the injured person. Damages in the form of lost profit are subject to compensation if the relevant income could be extracted in ordinary course of business or when taking measures and preparations, which were made, but the possibility of obtaining it was lost due to the defendant’s wrongful actions.
At the same time, the claimant must prove that the violation committed by the defendant was the only obstacle that did not allow him to receive the lost profit.
Meanwhile, the court of first instance and the court of appeal did not investigate the question of the similarities and differences between original and counterfeit goods in order to determine whether the ordinary consumer could understand that he is not buying the goods from the IP owner, or whether he could be misled about the properties and quality of the goods, that is, about the real possibility of obtaining income by the right holders when the entrepreneur sells counterfeit goods, the cost of which was equated with the original by the claimants, and compensation for the damages as lost profit in the claimed amount.
The courts did not take into account that the parties do not compete on the same market (the offender creates obviously unoriginal counterfeit goods of prestigious brands and sells them to a completely different class of consumers as compared to those who buy the original product); no evidence that because of counterfeit goods the copyright holder directly loses customers who are ready to buy original products was presented.
Expenses incurred by a party in the course of consideration of an opposition by Rospatent may be compensated under the rules for court costs reimbursement in the case of challenging the Rospatent’s decision (Resolution of the Constitutional Court
No. 1-P dated January 10, 2023)
The Constitutional Court considered the issue of compliance of Clause 2 of Article 1248 of the Civil Code and Article 106 of the Commercial Procedure Code with the Constitution.
The reason for consideration was the complaint of NIKA-PETROTECH LLC (hereinafter the “Company”), which, within court case No. SIP‑639/2019 and earlier — in case SIP‑631/2017, was denied reimbursement as legal costs of the expenses incurred by the Company during the consideration by Rospatent of an appeal against its patent.
The Constitutional Court noted that Clause 2 of Article 1248 of the Civil Code, while providing for an administrative procedure for resolving disputes on granting legal protection to the results of intellectual activity and means of individualization, does not contain any special rules that would regulate the grounds, procedure and amounts of reimbursement of expenses incurred by the parties to such proceedings.
In addition, the adoption of a judgment in favor of a person participating in the case of challenging the Rospatent’s decision is not necessarily directly connected with the expenses incurred by that person as a party to the administrative proceedings, and therefore cannot mean the need to automatically — without taking into account the results of the proceedings in Rospatent — recover such expenses.
Meanwhile, in order to effectively protect their violated or challenged right, the parties to the administrative proceedings bear the expenses for obtaining legal assistance, finding the necessary information and materials, transportation to the place of the collegium meeting, etc. Therefore, when providing for mandatory administrative procedures for the protection of rights and freedoms, the legislator should not impose such conditions — including the procedure for allocating the expenses incurred by the parties to participate in these procedures — that would block or unreasonably impede access to state protection of rights and freedoms.
But the established case law proceeds from the fact that these expenses are not reimbursed either as legal costs or as damages.
Thus, the Constitutional Court identified a gap in legal regulation, which may lead to a decrease in incentives to actively participate in administrative proceedings in order to refute the arguments of the appeal against granting of legal protection to the subject matter belonging to a person, which is at odds with the goals and objectives of introduction by the legislator of an administrative form of protection for violated or challenged intellectual rights.
In this regard, the Constitutional Court recognized interrelated paragraph 2 of Article 1248 of the Civil Code and Article 106 of the Commercial Procedure Code as non-compliant with the Constitution insofar as they prevent the reimbursement to the person, participating in the case on challenging the Rospatent’s decision, of the expenses previously incurred by him in connection with the consideration by this state authority of the appeal against granting of a patent for an invention, while there is no mechanism for the efficient protection of the right to reimbursement of such expenses in the current legal regulation system.
The Constitutional Court obliged the federal legislature to make appropriate amendments to the current legal regulation arising from the Resolution.
And before amendments are made to the legislation, the expenses incurred by a party during consideration and resolution by Rospatent of a dispute on granting legal protection to the results of intellectual activity and means of individualization, in the event of challenging a decision made by Rospatent in court, may be attributed to the losing party under the rules for reimbursement of court costs, taking into account the results of the previous administrative proceedings.
1. Well-known trademarks
For the period from September 2022 to February 2023, Rospatent recognized the following trademarks as well-known:
Right Holder — F. E. Dzerzhinsky Uralvagonzavod Research and Production Corporation JSC
Goods/Services — freight wagons
Date of Becoming Well-Known — June 18, 2020
Right Holder — Almaz-Antey Aerospace Defense Concern JSC
Goods/Services — missile systems and complexes; guided missiles
Date of Becoming Well-Known — November 01, 2021
During the same period, Rospatent refused Federal Generating Company — RusHydro PJSC to recognize as well-known in Russia its verbal trademark No. 454053 “RusHydro” and pictorial trademark No. 440951 in relation to the goods of class 09 of the ICGS and the services of classes 35, 37, 39, 40 and 42 of the ICGS. In the Rospatent’s opinion, the documents provided by the company were insufficient to prove the well-knownness of the marks in Russia for the goods and services for which the recognition of the marks as wellknown was requested.
Fastrunner Investments Limited (Cyprus) was also denied recognition of the designations “циан” and “cian” as wellknown trademarks in Russia in relation to the services of classes 35 and 36 of the ICGS related to the provision of information on real estate items. In the Rospatent’s opinion, the submitted materials do not confirm the connection of the use of the designations “циан” and “cian” with the Cypriot company.
Germany company Queisser Pharma GmbH & Co. KG also failed to convince Rospatent that the designation "Doppel herz" used for dietary supplements is associated exactly with this company by Russian consumers.
The documents submitted to Rospatent by Synergy Moscow Financial and Industrial University were also insufficient to prove that the designation “SYNERGY” is generally known in relation to the educational services of class 41 of the ICGS.
2. Appellations of Origin and Geographical Indications
From September 2022 to February 2023, Rospatent registered ten geographical indications and three appellations of origin of goods:
(Number in the Register of Geographical Indications and Appellations of Origin — Geographical indication/appellation of origin — Goods)
296(AOG) — ROMANOV TOY — clay toy for decorative, applied and game purposes
297 (GI) — KUBAN.ANAPA — wines, sparkling wines
298 (AOG) — SEMIKARAKOR CERAMICS — Hand-painted decorative and utilitarian faience ware
299 (GI) — URYUPINSK DOWN PRODUCTS — goat down knitwear
300 (GI) — TOMSK BIRCH BARK — birch bark products for utilitarian and decorative purposes
301 (AOG) — VOLKHOV PAINTING — decorative and utilitarian painted woodware
302 (GI) — MINUSINSK BUTTER — butter
303 (GI) — KUBAN.KRYMSK — wines, sparkling wines
304 (GI) — KUBAN. AFIPS RIVER VALLEY — wines
305 (GI) — MANSUROVSKY GRANITE — granite blocks
306 (GI) — UDMURT RIDGE — woven fabrics
307 (GI) — TYUMEN PLOMBIR — plombiere ice cream
308 (GI) — BELEVSKAYA SMOKVA — Fruit leather
1. EAPO and EAEU
From January 1, 2023, fees to be paid on Eurasian applications and patents for industrial designs changed
On January 1, 2023, new fees for Eurasian applications and patents for industrial designs entered into force.
For many items, duties increased by 20 to 30%. So, for example, a single procedural fee for filing a Eurasian application for an industrial design is now 25,000 rubles (360 USD). Previously it was 20,000 rubles (285 USD).
The changes were made by the decision of the EAPO Administrative Council at the meeting held on September 20 to 21, 2022.
From January 1, 2023, the Eurasian Patent Office issues Eurasian patents in electronic form
From January 1, 2023, the Eurasian Patent Office (EAPO) switched to issuing Eurasian patents for inventions and industrial designs (Eurasian patents) in the form of electronic documents. At the same time, patent holders can receive a Eurasian patent in hard copy without paying any fee if they file a request with the EAPO after the publication of information about the issuance of the Eurasian patent.
From January 1, 2023, certificates of transfer of a right to Eurasian patents, certificates of extension of Eurasian patents (certificates), as well as Eurasian patents, are also issued in the form of electronic documents with the possibility to obtain a certificate in hard copy at the request of the patent owner.
Belarus allowed parallel import and use of copyright and neighboring right subject matters without the consent of unfriendly right holders
On January 3, 2023, Law of the Republic of Belarus No. 241-Z On Restriction of Exclusive Rights to Intellectual Property Subject Matters was issued.
The law allows to use the following lawfully disclosed subject matters without the consent of the right holders from unfriendly states that have banned or have not given permission to use them in the territory of the Republic of Belarus:
- Computer programs;
- Audiovisual works;
- Musical works; and
- Transmissions of broadcasting organizations.
Such use shall be remunerated in the amount established by the Government of the Republic of Belarus. Remuneration is to be paid on the account of the patent authority, where it is to be stored for three years until demanded by the right holder or rights collective management organization.
In addition, the law provides for the possibility of parallel import of original goods in which intellectual property subject matters are used, if such goods are included in the list of goods that are essential for the domestic market. The list of such goods shall be established by the Government.
Goods are not included in the list if the right holders or other persons with their consent provide a sufficient amount of goods on the domestic market.
The restrictions will remain in place until the end of 2024.
A number of laws in the field of intellectual property were amended
On January 9, 2023, Law of the Republic of Belarus
The law was initiated by the Government of the Republic of Belarus in order to comprehensively adjust the legislation in the field of intellectual property.
The amended laws include, in particular:
- Law of the Republic of Belarus On Patents for Inventions, Utility Models, and Industrial Designs
- Law of the Republic of Belarus On Trademarks and Service Marks
- Law On Geographical Indications
- Law of the Republic of Belarus On Patents for Plant Varieties
- Law of the Republic of Belarus On Legal Protection of Integrated Circuits Topographies
- Law of the Republic of Belarus On Copyright and Related Rights
The amendments are intended to:
- Bring the norms of the national legislation in line with the provisions of the Treaty on Trademarks, Service Marks, and Appellations of Origin of Goods of the Eurasian Economic Union, the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, and the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention;
- Create a legal basis for registration of trademarks and appellations of origin of goods of the Eurasian Economic Union and for obtaining international registration of industrial designs;
- Development of a mechanism of compulsory licensing with regard to granting the Government the powers to make decisions on the issuance of a license to the individual or legal person concerned, allowing the use without the consent of the patent owner of inventions, utility models, industrial designs in order to ensure national security, state defense, safeguarding and protection of life and health of people;
- Improvement of legal regulation in the field of collective management of property rights, as well as the procedure for use (without the consent of the right holder, but with payment of remuneration) of musical works during holding and media covering of certain cultural events.
In February 2023, the Parliament of Kyrgyzstan adopted a number of laws related to the field of intellectual property:
On Amendments to Certain Legislative Acts of the Kyrgyz Republic in the Field of Intellectual Property, which amends:
- Part II of the Civil Code of the Kyrgyz Republic
- Code of the Kyrgyz Republic on Non-Tax Revenues
- Law of the Kyrgyz Republic On Customs Regulation
- Law of the Kyrgyz Republic On Legal Protection of Integrated Circuits Topographies
- Law of the Kyrgyz Republic On Legal Protection of Selection Inventions
- Law of the Kyrgyz Republic On Inventions, Utility Models, Industrial Designs
- Law of the Kyrgyz Republic On Patent Attorneys
- Law of the Kyrgyz Republic On Secret Inventions
- Law of the Kyrgyz Republic On Protection of Traditional Knowledge
In particular, the amendments provide for the addition of a new IP subject matter being a geographical indication and the possibility of electronic filing of applications for registration of intellectual property subject matters with the authorized body.
In particular, the issuance of “patents under the applicant’s responsibility” is excluded; the period of protection for utility models is increased from 8 to 10 years, and the maximum period of protection for industrial designs is increased from 15 to 25 years, while the “list of essential features” is excluded from the documents of the application for an industrial design.
The law provides for a reduction in the time for conducting an examination of applications from 12 to 7 months and a reduction in the time for responding to an examination notice from 12 to 6 months.
Legal protection of a new subject matter — geographical indication — is introduced preserving at the same time the protection for appellations of origin of goods.
The restriction on the registration of trademarks in the name of individuals who are not engaged in entrepreneurial activities is removed.
On Amendments to the Law “On Copyright and Related Rights” and Repealing Certain Legislative Acts of the Republic of Kyrgyzstan
The law on copyright includes provisions on the protection of computer programs and databases with the simultaneous termination of the Law of the Kyrgyz Republic On Legal Protection of Programs for Electronic Computers and Databases.