IP News Overview: Russia & CIS (September 2024 – February 2025)
29 April 2025Government Acts and Departmental Acts
Disputes over Granting and Termination of Protection
Disputes on Infringement of Exclusive Rights
Rospatent Practice
1. Well-Known Trade Marks
2. Names of Places of Origin of Goods (Poo) and Geographical Indications (Gi)
Intellectual Property News of the Eurasian Economic Union and Neighboring Countries
1. Eurasian Patent Organization
2. Belarus
3. Uzbekistan
4. Turkmenistan
Laws and Bills
Amendments were made to Articles 333.30 and 333.35 of the Tax Code of the Russian Federation, establishing state duties for the registration of Computer Programs (CP), Databases (DB), and Topographies of Integrated Microcircuits (TIMC)) (Federal Law № 389-FZ of 23.11.2024)
The amounts of state duties for actions performed by Rospatent for the registration of computer programs, databases, and topographies of integrated microcircuits have changed:
- for consideration of an application for registration of CP, DB or TIMC — 5000 rubles regardless of the applicant (previously legal entities paid 4500 rubles, and individuals — 3000 rubles);
- for consideration of an application for making changes to the Register of CP, Register of DB or Register of TIMC — 3000 rubles (previously — 2600 rubles);
- for consideration of an application for registration of disposal of exclusive rights to CP, DB or TIMC or for changing information about disposal, including termination of registered disposal — 5000 rubles + 3000 rubles for each CP, DB or TIMC exceeding one (previously — 5000 rubles + 2500 rubles);
- for consideration of an application for registration of the transfer of exclusive rights to CP, DB or TIMC — 5000 rubles + 3000 rubles for each CP, DB or TIMC specified in the application exceeding one. (previously — 800 rubles);
- state duties for making changes to application documents and deposited materials before publication in the official bulletin, as well as the state duty for issuing a duplicate registration certificate in the new edition of Article 330.30 of the Tax Code of the Russian Federation are not provided for.
The changes came into force on January 1, 2025.
Amendments were made to certain legislative acts (Federal Law № 494-FZ of 26.12.2024)
The new law, in particular, amends the Law “On Patent Attorneys”, resulting in a change in the procedure for registration of patent attorneys by Rospatent and the introduction of a register-based model for the provision of services by Rospatent for the registration of patent attorneys.
Currently, after successfully passing the qualifying examination and the qualification commission’s decision on attestation, a candidate for patent attorneys must submit an application for registration and pay the corresponding state duty. Within 30 days thereafter, Rospatent registers the patent attorney and issues him/her a patent attorney certificate.
As a result of the amendments to the law, the registration procedure will be simplified. Rospatent will register a patent attorney — without a separate application and without paying a state duty — within one day after the qualification commission makes a decision on attestation. Issuance of a patent attorney registration certificate is not provided for. The status of a patent attorney will be confirmed by an entry in the register.
The amendments to the Law “On Patent Attorneys” will come into force on September 1, 2025.
The new law also extends the powers of the Government for 2025 to make decisions on the list of “parallel import” goods, as well as to allow applicants, right holders, and parties to agreements on the disposal of exclusive rights to request Rospatent not to publish information about them in the official Rospatent bulletin.
On the right of self-employed individuals to a trade name and to conclude commercial concession agreements (bill № 823006-8)
State Duma deputies propose to amend Articles 1027 and 1538 of the Civil Code of the Russian Federation (CC RF).
The bill proposes to lift the restriction on the right to a trade name only for legal entities or individual entrepreneurs. According to the authors of the bill, citizens carrying out entrepreneurial activity without registration as individual entrepreneurs (self-employed citizens) should also have the right to a trade name (Article 1538 of the CC RF).
It is also proposed to allow self-employed individuals to conclude commercial concession agreements (Article 1027 of the CC RF), which seems quite logical, since they received the right to own a trademark back in 2023. Then the legislators forgot about their right to a trade name and to conclude franchising agreements (commercial concession). It seems that this gap will now be eliminated.
Strengthening criminal liability for the illegal obtaining and use of information constituting a legally protected secret (bill № 825103-8)
The Government submitted to the State Duma a bill amending Article 183 of the Criminal Code of the Russian Federation.
The bill provides for tougher liability for the illegal obtaining, disclosure, and use of information constituting a commercial, tax, or banking secret.
The justification for the bill indicates a growth in the illegal circulation of information, including that contained in the databases of customs authorities. In particular, information on schemes used for the import of goods subject to sanctions has actively begun to spread in the mass media.
The purpose of such publications is to cause damage to specific business entities, sectors of the economy, and overall Russian economic interests.
The bill proposes to exclude a fine as the main punishment from Part 3 of Article 183 of the Criminal Code RF, to establish a lower threshold of punishment in the form of imprisonment — from 2 years, with the simultaneous addition of the sanction with an additional type of punishment in the form of a fine of up to 5 million rubles. In addition, Part 4 of Article 183 of the Criminal Code RF proposes to introduce a lower threshold of punishment in the form of imprisonment from 3 years, with the simultaneous addition of the sanction with an additional type of punishment in the form of a fine from 1 to 5 million rubles.
Government Acts and Departmental Acts
Rospatent, with the permission of the Government, does not publish information about a number of persons in its official bulletins at their request (Government Decree of the Russian Federation № 1209 of 02.09.2024)
Since September 30, 2024, applicants, right holders, and parties to agreements on the disposal of exclusive rights to certain objects of intellectual property can submit an application to Rospatent requesting not to publish information about them in the official Rospatent bulletin. The application can be submitted in relation to inventions, utility models, industrial designs, trademarks, computer programs, databases, and topographies of integrated microcircuits.
The new procedure will be in effect until December 31, 2025.
Amendment of patent fees (Government Decree of the Russian Federation № 1278 of 18.09.2024)
From October 5, 2024, new amounts and rules for paying patent fees came into force. The novelties include:
- the 30 % discount on fees has been abolished if the applicant contacted Rospatent through electronic interaction;
- almost all fees have been increased, some significantly. In particular, the fee for considering an application for extending the term of a patent for an invention related to a medicinal product has been increased from 3,000 to 100,000 rubles;
- new fees have been introduced (mostly related to international procedures);
- new preferential categories of applicants have been introduced;
- the fee for maintaining a patent for an invention, utility model, and industrial design is paid immediately for 5‑year periods, and the fee for the patent’s validity from the 1st to the 5th years is paid upon registration and issuance of the patent; benefits on the fee for maintaining the patent in force are excluded;
- only one additional term remains for paying the filing fee, the examination fee, and the registration fee for inventions, utility models, and industrial designs, namely 12 months with a 100 % increase in the fee. Previously, there were two additional terms: 6 months with a 50 % surcharge and 12 months with a 100 % surcharge;
- the additional term for paying the filing fee, the examination fee, and the trademark registration fee has been reduced from 6 to 1 month, and the surcharge has been increased from 50 % to 100 %.
Amendments were made to the Requirements for documents of an invention application and the Rules for considering such applications for inventions related to the application of a product or method for a specific purpose (Order of the Ministry of Economic Development № 610 of 27.09.2024)
According to the amendment made to subparagraph 22 of paragraph 62 of the Requirements for documents of an application for the issuance of a patent for an invention, for characterizing an invention related to the application of a product or method for a specific purpose, a formula is used that includes only an indication of the application of the product or method for a specific purpose.
According to the amendments made to paragraphs 73 and 82 of the Rules for considering an application for the issuance of a patent for an invention, when checking the novelty and inventive step of an invention related to the application of a product or method for a specific purpose, only the features characterizing such purpose are taken into account.
The changes came into force on November 10, 2024.
Updated list of goods allowed for parallel import (Order of the Ministry of Industry and Trade № 4611 of 08.10.2024)
By order of the Ministry of Industry and Trade, amendments were made to the list of imported goods (groups of goods) to which the provisions of the Civil Code on the protection of exclusive rights do not apply, provided that such goods are put into circulation outside the territory of the Russian Federation by right holders or with their consent.
In particular, goods from the machine-building sector with the KIA, Hyundai trademarks, as well as goods with the MOTUL trademark, have been excluded from the list of goods allowed for parallel import.
The order will come into force on May 8, 2025.
Disputes over Granting and Termination of Protection
Rospatent is not entitled to change the reasons for the objection on the basis of clause 45 of the Rules for considering disputes in Rospatent (decision of the Presidium of the IP Court of 16.08.2024 in case № SIP-1302/2023)
The Intellectual Property Court considered and granted the application of LLC “ROMANGRUP” to declare invalid clause 45 of the Rules for considering and resolving disputes in an administrative procedure by the federal executive body for intellectual property, approved by the orders of the Ministry of Education and Science and the Ministry of Economic Development of Russia dated 30.04.2020 № 644/261, in part concerning the possibility of identifying and taking into account by members of the board the grounds for declaring invalid the granting of legal protection to an already protected object at the stage of considering an objection against granting legal protection to such an object.
The Presidium of the IP Court established that this rule does not comply with the provisions of Articles 1398, 1512, 1513, 1535 of the Civil Code of the Russian Federation, which have greater legal force, since challenging the validity of a patent or trademark registration is only possible by filing corresponding objections by third parties.
The Civil Code of the Russian Federation does not provide Rospatent with any other opportunity, outside the framework of the submitted objection, to verify the patentability of a registered trademark or invention. Rospatent is not entitled to independently formulate and consider grounds for declaring a patent or trademark registration invalid.
Therefore, Rospatent is not entitled to identify and evaluate any new grounds not disclosed in the objection.
The IP Court declared clause 45 of the Rules invalid in the relevant part.
At the suit of LLC “R-Climat”, the protection of four trademarks of the Swedish company Ericsson was prematurely terminated (decision of the SIP of 30.10.2024 and decision of the Presidium of the SIP of 12.02.2025 in case SIP‑334/2024)
The limited liability company “R-Climat” (hereinafter — the Society) applied to the Intellectual Property Court with a claim against the foreign entity Telefonaktiebolaget LM Ericsson (hereinafter — the Company) for the partial premature termination of the legal protection of the following trademarks belonging to the Company due to their non-use:
Russian trademarks (№ 205234); (№ 207822); and (№ 253069); as well as the trademark under international registration № 1024858.
All these marks are protected in Russia, including in relation to goods of class 11 of the International Classification of Goods and Services (ICGS) “devices for heating, cooling, and ventilation”.
The Society presented to the court evidence that allowed the court to recognize it as a party interested in the termination of the protection of Ericsson’s trademarks in relation to goods of class 11 of the ICGS. At the same time, the Society complied with the pre-trial procedure for settling this dispute, which the Company does not dispute. In its response to the statement of claim, the Company stated that the claims should not be satisfied, since it uses the disputed trademarks.
In addition, based on the provisions of Article 10 of the CC RF and Article 10.bis of the Paris Convention, Ericsson pointed to the bad faith of the Society, which intends to take advantage of the wide-known reputation of the Company and its trademarks. In the opinion of the Company, the use of a virtually identical designation (as well as the filing of an application for registration of the corresponding designation as a trademark) cannot be considered good faith.
The Company also refers to the fact that the courts of the Republic of Kazakhstan found abuse of rights and unfair competition in the actions of the plaintiff. The representative of the Company also indicated numerous decisions of foreign courts, which allegedly satisfied the claims for recognizing the actions of the Society as abuse of rights and unfair competition, but these circumstances were not documented. The judicial panel recognizes the above arguments of the Company as untenable.
The SIP noted that the Company’s references to the decisions of the courts of the Republic of Kazakhstan have no legal significance within the framework of this case, which concerns other trademarks, the legal protection of which is granted on the territory of the Russian Federation.
The court also did not take into account the Company’s argument that the premature termination of the legal protection of the disputed trademark will allow the use of the designation “ERICSSON/ЭРИКССОН”, associated in the minds of consumers exclusively with the Company, by any person, which will mislead consumers regarding the quality of the goods and its manufacturer. The court noted that if Ericsson is so keen on preserving the possibility of using the disputed trademarks, it should have taken appropriate measures to maintain their legal protection.
The Court also found the Company’s arguments regarding the potential dilution of the disputed trademarks to be unfounded, as the Company failed to prove the use of the disputed trademarks in relation to the disputed goods during the relevant period.
The judicial panel noted that in cases of non-use, the right holder must prove the use of the trademark specifically in relation to those goods for which protection is granted and in relation to which a claim for termination has been filed. The homogeneity of goods and services is not taken into account if the wide renown of this mark is not proven.
Having assessed the volume of evidence submitted in the case materials, the Judicial Panel concluded that in this case, no evidence of the wide renown of the disputed trademarks was presented to the court. Any legally binding court decisions on this matter, as well as Rospatent decisions confirming the wide renown of the disputed trademarks, were not presented. The disputed trademarks have not been recognized as well-known in Russia in the manner prescribed by law.
In this situation, the homogeneity of the goods sold cannot be taken into account.
Having assessed the evidence presented by the Company, the court concluded that they do not confirm the use of the disputed trademarks in relation to the disputed goods, since the documents submitted by the Company concerned only telecommunications, but not climate control equipment.
In addition, the Company stated the existence of circumstances (sanctions regime; restrictions introduced by the Russian Federation) that prevent the use of the disputed trademarks on the territory of the Russian Federation.
To this, the court noted that the circumstances described by the Company cannot be considered a valid reason for non-use of its trademarks on the territory of the Russian Federation during the period under consideration, since no evidence of restrictions imposed by the Russian Federation on the import of the disputed goods was presented.
Meanwhile, in refutation of this argument by the Company, the Society noted that the Decree of the President of the Russian Federation of 08.03.2022 № 100 and the Decree of the Government of the Russian Federation of 09.03.2022 № 311, which the defendant refers to, introduce restrictions on the export (not import) of telecommunications equipment (not devices for heating, cooling, and ventilation) outside the Russian Federation. In addition, the circumstances cited by the Company are related to sanctions that concern dual-use goods, and the defendant did not provide evidence that goods of class 11 of the ICGS “devices for heating, cooling, and ventilation” in the countries that have imposed the relevant sanctions are considered dualuse goods.
Having assessed the evidence presented in the case materials, the judicial panel concluded that the defendant did not prove the use of the disputed trademarks during the threeyear period in relation to the goods of class 11 of the ICGS for which they are registered, and did not provide valid reasons preventing their use during the specified three-year period.
In this connection, the court granted the claims and prematurely terminated the protection in relation to goods of class 11 of the ICGS of Russian trademarks № 205234, № 207822, № 253069, as well as international registration № 1024858 in relation to these goods of class 11 of the ICGS — on the territory of the Russian Federation due to their non-use.
Disputes on Infringement of Exclusive Rights
In the case of infringement of the right to trademark № 677614, which is a label with the unprotected word element “Maikopskoye”, the Supreme Court of the Russian Federation overturned the decisions of the lower courts, which did not take into account the respondent’s right to the Protected Geographical Indication (PGI) “Maikopskoye beer” (Determination of the Supreme Court of the Russian Federation of 11.02.2025 № 308-ES24-17130 in case A01-4210/2022)
LLC “MPK” Maikopsky Brewery (hereinafter — the Plant) is the right holder of trademark № 677614 of the Russian Federation, registered, including for the goods “beer”, in which all the words and numbers contained in it (including the word “Maikopskoye”) are unprotected elements of the trademark, as well as the holder of the right to use the name of the place of origin of the goods “Maikopskoye beer” (hereinafter — PGI) under certificate № 248/1 of the Russian Federation.
The Plant learned that LLC “Maikopskoye pivo” (hereinafter — the Company) produces and sells beer using the word designation “Maikopskoye”, similar to its trademark and PGI, and therefore applied to the arbitration court with a claim for the protection of exclusive rights and the recovery of compensation in the amount of 3,146,436 rubles.
The court of first instance, whose decision was left unchanged by the ruling of the arbitration appellate court and the ruling of the Intellectual Property Court (IPC), granted the claim.
The Company filed a cassation appeal with the Supreme Court of the Russian Federation.
The Economic Disputes Panel of the Supreme Court of the Russian Federation (hereinafter — the Judicial Panel) established the following.
Previously, in another court case involving the same parties — case № A01-118/2021 — the similarity to the point of confusion of the combined designation used by the company with the Plant’s disputed trademark was established, and the identity with the Company’s beer PGI, containing the name “Maikopskoye” on the labels, was recognized as counterfeit.
Having again discovered the sale of products with the same designation by the Company on the market, the Plant again applied to the court with a demand to cease the infringement and pay compensation.
Taking into account the circumstances established within the framework of case № A01-118/2021, and having found proven the fact of infringement by the defendant of the plaintiff’s exclusive right to the trademark, the courts of first and appellate instances granted the claim.
The Intellectual Property Court agreed with the conclusions of the courts of first and appellate instances, including that the presence of the Company’s exclusive right to the PGI “Maikopskoye beer” does not indicate the legality of its use of the designation on the label, similar to the Plant’s disputed trademark. The establishment of similarity is carried out by the court based on the results of comparing the plaintiff’s trademark and the designation used by the defendant. In this case, the court takes into account which elements have similarities — strong or weak elements of the trademark and designation.
The similarity of only unprotected elements is not taken into account.
In concluding that there was similarity to the point of confusion between the plaintiff’s trademark and the designation used on the defendant’s label, the courts referred to the established fact of such similarity by the court decision in case № A01-118/2021. Within the framework of this case, the court established that the word designation “Maikopskoye” is obviously crucial for the first impression of similarity.
Meanwhile, the Judicial Panel noted that, having applied the provisions of Part 2 of Article 69 of the Arbitration Procedure Code of the Russian Federation, according to which circumstances established by a legally binding court decision of an arbitration court in a previously considered case are not proven again when another case involving the same persons is considered by an arbitration court, the courts did not take into account that at the time of consideration of the new case — № A01-4210/2022 — the circumstances established by the courts in another case — № A01-118/2021 — changed, since outside the period considered within the framework of case № A01-118/202, the Company received a certificate for the right to use the PGI “Maikopskoye beer” (certificate № 248/3) and received the right to produce and sell products with the PGI “Maikopskoye beer” applied to the labels.
Therefore, the courts needed to assess the legality of the Company’s sale of products using this designation (label), investigate the similarity to the point of confusion of the plaintiff’s trademark and the Company’s label using appropriate methodological approaches, and also take into account that the word “Maikopskoye” used in the Plant’s trademark refers to unprotected elements of the trademark.
The Economic Disputes Panel of the Supreme Court of the Russian Federation overturned the court decisions of the lower instances and sent the case for reconsideration to the court of first instance.
Other Disputes
BM-Bank achieved the termination of a sublicense for software and the recovery of unjustified enrichment from the sublicensor in the amount of 30.5 million rubles as a result of Microsoft’s refusal to provide access to the software product (decision of the Moscow Arbitration Court of 07.10.2024 and ruling of the Ninth Arbitration Court of Appeal of 28.02.2025 in case A40-74902/2023)
AO “BM-Bank” (hereinafter — the Bank) and AO “Envision Group” (currently AO “Sitronics IT”) (hereinafter — the Respondent) concluded a sublicense agreement for the right to use Microsoft software (hereinafter — the Agreement).
The term of the license in the agreement was set from January 1, 2022, to December 31, 2022. The Bank timely and fully fulfilled its obligations to pay for the licenses in the amount of 36,970,364.34 rubles.
However, from March 5, 2022, due to the termination of access to Microsoft product technical support in the Russian Federation, the Bank lost access to the software governed by the Agreement, including access to activation keys and downloadable distributions.
In this regard, the Bank considered that part of the paid license fee in the amount of 30,589,178.17 rubles constituted unjustified enrichment for the Respondent.
During the consideration of the case, the Respondent attempted to present the agreement concluded with the Bank as a supply agreement, rather than a sublicense agreement. Therefore, it believed that it had fulfilled all obligations regarding the transfer of rights to use the software.
Later, the Respondent changed its position regarding the qualification of the Agreement and argued that the disputed agreement is not a sublicense agreement, nor a supply agreement, but a brokerage agreement.
However, the court, based on the literal meaning of the terms of the Agreement, determined that the disputed Agreement is, in its legal nature, a sublicense agreement.
The terms and subject matter of the Agreement show that the actual common will of the parties to the Agreement was aimed at creating contractual grounds for the lawful use of computer programs by the plaintiff by granting a derivative authorization from the right holder (sublicense), taking into account the fact that computer programs are works — objects of copyright, in respect of which exclusive rights are recognized and effective. The disposal of these rights must be carried out according to the rules provided for license agreements (Article 1235 of the Civil Code of the Russian Federation), and not according to the rules established for the transfer of ownership of things under a sales contract.
The court indicated that the fulfillment of the license agreement by the respondent consists not only in the one-time provision of access to the licensed computer programs, but also in the provision for a certain period of the right to use the programs specified in the Agreement, not burdened by prohibitions or restrictions from the relevant right holder, about which the Respondent provided the Bank with corresponding assurances.
The court noted that limiting the Bank’s ability to use the computer programs specified in the Agreement before the expiration of the license term constitutes a deterioration of the terms of use, i. e., is non-equivalent performance of the Agreement by the Respondent.
At the same time, the Respondent’s references to the provisions of the agreement concluded between it and Microsoft are irrelevant, since the Claimant is not a party to this agreement, it does not create any rights or obligations for the Claimant, and the Claimant cannot be held responsible for either the content or the fulfillment of obligations under this agreement, since it regulates exclusively the relationship between the Respondent and Microsoft.
Thus, the Respondent improperly fulfilled its obligations under the said Agreement, and regardless of whether the disputed agreement is a sublicense agreement or a brokerage agreement, unjustified enrichment arose on the Respondent’s side, since the disputed agreement was concluded between the Bank and the Respondent, the licenses were transferred by the Respondent, and the Bank transferred funds under the agreement to the Respondent’s account.
The court fully satisfied the Bank’s claim, terminated the disputed contract, and recovered from the Respondent in favor of the Bank the amount of unjustified enrichment in the amount of 30,589,178 rubles and 17 kopecks.
The Supreme Court of the Russian Federation considered a case on the payment of license fees to a Ukrainian firm (determination of the Supreme Court of the Russian Federation of 03.02.2025 № 307-ES24-18161 in case № A56-2577/2023)
In 2016, a license agreement was concluded between the Ukrainian LLC “New Products” (licensor) and the Russian LLC “Bravo Premium” (licensee), providing for the payment of royalties for the use of trademarks belonging to the licensor.
In April 2022, the parties signed an agreement on the termination of the license agreement, according to which the payment of royalties for the period of use of the trademarks until the date of termination of the agreement should be made by the licensee before September 1, 2022. However, as of August 31, 2022, the licensee’s debt to the licensor amounted to more than 383 thousand US dollars, and the licensee refused to voluntarily pay the debt. The licensor applied to the arbitration court (case № A56-2577/2023). During the consideration of the case, the plaintiff was replaced due to the assignment of the right to claim debt, concluded between LLC “New Products” and the Russian LLC “Interbrands Group”.
The court of first instance denied the claim, but the appellate court, supported by the Intellectual Property Court as a cassation court, overturned the decision of the court of first instance and granted the claim. At the same time, the court of first instance, as well as the appellate and cassation courts, did not give a legal assessment of the defendant’s arguments about the assignment of the right of claim being merely a formality, without the intention of creating corresponding legal consequences, as well as about the affiliation of the parties that concluded the assignment agreement.
LLC “Bravo Premium” appealed the decisions of the lower courts to the Economic Disputes Panel of the Supreme Court.
Overturning the decision of the appellate and cassation courts and sending the case for reconsideration to the court of first instance, the Economic Disputes Panel of the Supreme Court of the Russian Federation noted that when considering the dispute, the courts did not take into account that when establishing, exercising, and protecting civil rights and when fulfilling civil obligations, participants in civil legal relations must act in good faith, and that no one is entitled to derive benefit from their illegal or unfair behavior. Therefore, the reality of obligations under a transaction does not preclude the court’s right to refuse to satisfy claims based on a transaction if the purpose of its conclusion was to circumvent prohibitions and restrictions established by legislation on countering the legalization (laundering) of proceeds obtained by criminal means and the financing of terrorism; legislation on banks and banking activities; currency legislation, etc.
The claims in this case are related to the fulfillment of an obligation to a foreign right holder from an unfriendly state, in connection with which the fulfillment of this obligation must be carried out in accordance with the procedure established by the Decree of the President of the Russian Federation of May 27, 2022 № 322.
At the same time, the Judicial Panel noted that the provisions of the Decree do not apply to right holders who properly fulfill their obligations under contracts.
The Judicial Panel drew attention to the fact that, in accordance with the agreement on the assignment of the right of claim between LLC “New Products” and LLC “Interbrands Group”, the assignee, after recovering funds from the company “Bravo Premium”, undertakes to pay the assignor (the original plaintiff, the right holder) the full amount claimed for recovery in the case.
Since the funds recovered by the court from the company “Bravo Premium” in favor of the company “Interbrands Group” are subject to transfer to the right holder from an unfriendly state on the basis of the assignment agreement, the court needed to investigate the issue of the application of the procedure established by the Decree to the debtor, as well as to take into account its argument about the conclusion of an agreement by a third party and the plaintiff with the aim of circumventing the requirements of the Decree and the presence of intent in the actions of the parties directed against public interests.
At the same time, the Judicial Panel qualified as unfounded the arguments of the licensee — LLC “Bravo Premium” — that the claims are not subject to satisfaction in principle, since the right holder — LLC “New Products” — is openly financing the armed forces of Ukraine. In this case, the Supreme Court proceeded from the fact that the Presidential Decrees determine a special procedure for the performance of obligations, but do not exclude the possibility of resolving the dispute by the court and issuing a court decision on the merits. Neither at the time of the occurrence of the debt of the company “Bravo Premium”, nor at the time of the consideration of the case in court, retorsions against legal entities of Ukraine concerning exclusive rights were adopted by the Government of the Russian Federation. In this connection, the implementation by LLC “New Products” of the right to apply to the arbitration court complies with Russian legislation.
Rospatent Practice
1. Well-known trademarks
From September 2024 to February 2025, Rospatent recognized the word “BAIKAL” as a well-known trademark in relation to non-alcoholic carbonated beverages of class 32 of the ICGS (decision of Rospatent of 12.12.2024 № 2024B00472). The mark has been recognized as well-known since January 1, 2024 and entered into the List of well-known marks in Russia under № 263; the right holder is LLC “Baikalskoye”.
During the same period, Rospatent refused to recognize the following designations as well-known marks:
(decision of Rospatent of 19.11.2024 № 2023B03572).
Well-known status was requested in relation to goods of class 29 of the ICGS “ham; sausage products; pork; semi-finished products from pork” in the name of PJSC “Cherkizovo Group”. According to Rospatent, the evidence presented confirms the wide renown of the designation only in relation to the product “sausage products”, but not in relation to ham, pork, and semi-finished products from pork;
(decision of Rospatent of 28.12.2024 № 2023B03571).
JSC “Technological Company “Center” requested recognition of the word designation “STOLOTO” as well-known for goods of class 28 of the ICGS “lottery tickets”, services of class 35 of the ICGS “lottery distribution services; retail sales services for lottery tickets, including through online stores”, services of class 41 of the ICGS “organization of lotteries, namely, services for the distribution of lottery tickets”. The Rospatent decision notes that the documents submitted do not confirm either the wide renown of the designation among consumers or its connection with the applicant.
2. Appellations of Origin and Geographical Indications
From September 2024 to February 2025, Rospatent registered 18 geographical indications (GI):
(Number in the Register of Geographical Indications and Appellations of Origin — Geographical indication/appellation of origin — Goods)
353 (GI) — OROKHOVETSKIY PRYANIK — Gingerbread (printed gingerbread, painted gingerbread)
354 (GI) — LENINGRADSKIYE PYSHKI — Donuts (baked goods)
355 (GI) — KOVRIZHKA ZARAYSKAYA — Kvass bread
356 (GI) — KHOLMOVSKAYA ZEMLYANIKA (KLUBNIKA) — Wild Strawberry (Strawberry)
357 (GI) — MORSHANSKOYE PIVO — Light Beer
358 (GI) — SOL’ BURLINSKAYA — Table Salt
359 (GI) — SOS’VINSKAYA SEL’D’ (TUGUN) — Tugun and fish products made from tugun
360 (GI) — YAKUTSKIYE BRILLIANTY — Diamonds
361 (GI) — BAYDARSKIY MYOD — Honey
362 (GI) — KAREL’SKAYA ZEMLYANIKA (KLUBNIKA) — Wild Strawberry (Strawberry)
363 (GI) — MORDOVSKAYA YUVELIRNAYA YOLOCHNAYA IGRUSHKA — Christmas tree decorations
364 (GI) — BAKCHARSKAYA ZHIMOLOST’ — Honeysuckle
365 (GI) — VOL’GINSKIY KOLOKOLETS — Bells
366 (GI) — MIKHAYLOVSKAYA KUKLA-KOKLYUSHKA — Koklushka doll
367 (GI) — PLESHKOVSKAYA IGRUSHKA — Clay toy
368 (GI) — DONETSKIYE NOSKI — Socks
369 (GI) — TYUMENSKAYA VODKA — Vodka
370 (GI) — BASHKIRSKIY PALAS (AÇALY BALAÇ) — Hand-woven carpet
Intellectual Property News of the Eurasian Economic Union and Neighboring Countries
1. Eurasian Patent Organization
Two meetings of the Administrative Council of EAPO were held
OOn September 9-10, 2024, the 45th (31st regular) meeting of the Administrative Council of the Eurasian Patent Organization (EAPO) was held in Moscow. It was attended by authorized representatives of the states participating in the Eurasian Patent Convention: Azerbaijan, Armenia, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, and Turkmenistan. Russia was represented by the head of Rospatent, Yuri Zubov.
The Administrative Council adopted amendments to the Regulations on Fees. The amounts of many fees were increased by 10 to 130 %, but the fees levied for actions performed in the EAPO under the Patent Cooperation Treaty remained unchanged. Amendments were also made to the Patent Instructions. Regarding inventions, the changes are aimed at clarifying the norms relating to the requirement for sufficient disclosure of the invention in the application materials, and regarding industrial designs — at improving and expanding the scope of application of the mediation procedure when considering disputes about patentability.
The Administrative Council also adopted the EAPO budget for 2025.
On December 24, 2024, the 46th (15th extraordinary) meeting of the EAPO Administrative Council was held in Moscow. The Administrative Council decided to recommend that the President of the EAPO appoint Vladimir Ryabovolov, General Director of the Patent Office of the Republic of Belarus, as Vice-President of the EAPO.
The results of the EAPO’s activities in 2024 were summarized
In 2024, the EAPO received 3252 applications for the issuance of Eurasian patents for inventions and issued 2908 patents for inventions. The most popular areas are pharmaceuticals, biotechnology, fine organic chemistry, and medical equipment. As in previous years, applicants from the USA showed the greatest activity — 29.4 % of all applications for inventions filed with the EAPO. At the same time, China’s interest in the Eurasian patent increased significantly — almost 10 % more applications for inventions were filed and twice as many applications for industrial designs. As a result, China entered the top three leaders along with the USA and Russia.
In 2024, the EAPO received 562 Eurasian applications for industrial designs. This is 52 % more compared to 2023; 402 Eurasian patents were issued for 961 industrial designs.
This is 28.4 % more compared to the previous year.
In 2024, patents for industrial designs were received by applicants from 17 states. For the first time — from the Netherlands, the UAE, and the Republic of Korea.
2. Belarus
Consideration of intellectual property disputes in the Supreme Court of the Republic of Belarus for 2024
The Judicial Panel for Intellectual Property Cases considered 82 cases in 2024, of which 63 cases were disputes in the field of copyright and related rights; 19 cases — disputes in the field of industrial property law, of which 4 cases were appeals against decisions of the Appeals Council under the patent office.
52 cases were considered with a decision, and 30 cases were decided by orders.
Of the 52 resolved cases, the claims were fully satisfied in 26 cases, partially satisfied in 15 cases, and denied in 11 cases.
In the field of industrial property in 2024, 15 cases were considered with a decision. Claims were fully or partially satisfied in 6 cases, and denied in 8 cases. The main category of cases consists of claims for compensation in connection with the infringement of exclusive rights to a trademark, appeals against decisions of the Appeals Council under the patent office, and claims for premature termination of trademark protection.
In disputes in the field of copyright, 38 cases were considered with a decision. Claims were fully or partially satisfied in 35 cases, and denied in 3 cases. The main category of cases consists of claims for the recovery of copyright remuneration and license fees.
Patent fees changed from January 1, 2025
Due to the fact that from January 1, 2025, the base value was set at 42 Belarusian rubles, the amounts of all patent fees have changed, in particular, for maintaining Eurasian patents for inventions in force on the territory of the Republic of Belarus.
The amounts of patent fees for maintaining patents for inventions, utility models, and industrial designs in force have been increased, starting from the sixth year of the patent’s validity; as well as for extending the term of registration of a trademark and a collective mark.
3. Uzbekistan
Uzbekistan joined the Hague System for the International Registration of Industrial Designs
On October 10, 2024, the Government of Uzbekistan submitted a document to the WIPO Director General on accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
Accession is carried out with a number of declarations:
- the fee for designation is replaced by an individual fee for the designation of the Republic of Uzbekistan;
- postponement of the publication of information about the industrial design is not provided for;
- the requirement of unity of design is applied to the designs included in one application;
- no entry in the international register regarding a change of right holder shall have effect until the Uzbek patent office receives documents on the transfer of rights;
- the term of protection is 5 years and can be repeatedly extended for five years, but not more than 15 years from the date of international registration;
- the period for sending the application by the office to WIPO will be not one, but 6 months;
- the deadline for the office to prepare a notification of refusal to grant protection will be 12 months;
- the effect of international registration on the territory of Uzbekistan begins from the date the office sends the notification of granting protection to WIPO.
The Geneva Act of the Hague Agreement entered into force with respect to Uzbekistan on January 10, 2025. From this date, Uzbekistan can be indicated in the application for international registration of an industrial design.
Uzbekistan acceded to the Singapore Treaty on the Law of Trademarks (STLT)
On October 10, 2024, the Government of Uzbekistan deposited with the Director General of WIPO the instrument of ratification of the Singapore Treaty on the Law of Trademarks — a treaty that sets out the maximum requirements that member states may establish in trademark registration procedures.
The instrument contains a reservation that in Uzbekistan, registration of a license is required as a condition for granting the licensee the right to participate in proceedings in connection with the infringement of rights initiated at the initiative of the trademark owner, or to obtain compensation through such proceedings for damage caused as a result of such infringement of the right to a mark that is the subject of the license.
The Treaty entered into force for Uzbekistan on January 10, 2025.
4. Turkmenistan
Turkmenistan joined the Eurasian system for the protection of industrial designs
The Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention entered into force in respect of Turkmenistan on January 4, 2025. Now, a Eurasian patent for an industrial design can operate simultaneously in all eight participating states (Azerbaijan, Armenia, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, and Turkmenistan).
