Rospatent explained how to overcome EU restrictions on registration of rights

The procedures of international intellectual property (IP) registration systems provide for automatic registration of declared objects (trademarks, industrial designs, etc.) “in the absence of feedback from EU departments,” according to the clarifications of the Federal Service for Intellectual Property (Rospatent), available in at the disposal of RBC. This is how Rospatent responded to the restrictive measures of the Council of the European Union regarding Russian applications for registration of intellectual property, introduced at the end of June.

As part of the 14th sanctions package, the European Union obliged European offices for the protection of intellectual property and national patent offices of EU member countries to stop accepting new applications for registration of intellectual property (patents, trademarks, industrial designs, utility models, geographical indications) from Russian individuals and legal entities - including when an application is submitted by foreigners together with Russians. At the same time, the EU emphasized that decisions on refusal will not be made. That is, applications will be in a “suspended” state for an indefinite period, notes Rospatent.

The World Intellectual Property Organization (WIPO, or WIPO; a UN agency -), performing the function of a “one window”, is obliged to accept all incoming applications and cannot deny Russian applicants the right to submit an application, Rospatent assures. At the same time, WIPO cannot guarantee the registration of intellectual rights in the EU, since the decision on registration is subsequently made at the level of national and regional intellectual property offices, the federal service indicates.

“The procedures of international systems for registering trademarks, industrial designs, appellations of origin and geographical indications stipulate that in the absence of feedback from the EU departments regarding the application, automatic registration of the claimed intellectual property occurs,” says Rospatent. The period for consideration of applications, after which automatic registration of intellectual rights is possible, is different in each registration system, for example, in the international Madrid system (valid for trademarks) - it is one year, in the Hague system for the international registration of industrial designs - by default six months (from possibility of extending the period up to one year).

“Thus, the offices of EU countries do not have the opportunity to ignore Russian applications submitted through WIPO, and unfounded refusals can be challenged administratively or judicially,” Rospatent believes.

“The actions of the European Union are a gross violation of international law in the field of intellectual property and are discriminatory in relation to Russian applicants, which directly contradicts the basic principles of IP protection enshrined in the Paris Convention for the Protection of Industrial Property and other fundamental international treaties,” the department believes .

The European Union justified its decision by the fact that “the Russian government and Russian courts are taking actions aimed at illegally depriving copyright holders of EU member countries of their protection in RUSSIA.” At the same time, the EU Council documents did not explain what actions were being discussed.

The Council of the EU, in a separate paragraph, decided that European countries and, where applicable, the European Union itself must make “every possible effort” to ensure that WIPO also does not accept new applications from Russian citizens and companies to register intellectual property rights. “In addition, the EU has declared its intentions to influence the process of consideration of Russian applications by the World Intellectual Property Organization,” Rospatent interprets. It is unclear from the adopted EU regulation what these actions might be.

Rospatent recommends that Russian citizens and companies, in connection with the current situation, “temporarily refuse to submit applications directly to the intellectual property offices of EU countries.” Instead, it is proposed to use the WIPO international registration systems, namely:

• Patent Cooperation Treaty (PCT) - for inventions;
• "Madrid"  - for trademarks and service marks;
• "Hague"  - for industrial designs;
• "Lisbon"  - for geographical indications and appellations of origin.

“An application for registration of intellectual property within the framework of the international WIPO systems must be submitted through Rospatent as the lead agency for interaction with this organization. This procedure will allow us to consolidate the priority of the application and secure the primacy of the filing,” Rospatent said.

Earlier, the European Commission clarified that the introduced restrictive measures do not mean that Russians will not be able to use their new trademarks or patented technologies in the EU. “They will simply not be protected from their use by EU companies,” the department said. Existing registered intellectual property rights will not be canceled. At the same time, according to Rospatent, “the possibility of extending, maintaining in force and disposing of intellectual rights in the EU is limited.”

The possibility of “silent registration”, which occurs under an international application if the national office does not refuse it within a certain period, was confirmed by Alina Akinshina, CEO of the Online Patent company. “But we don’t yet fully know how the EU restrictions will work, how exactly national departments will react to applications from Russians and domestic companies. If departments remain inactive, then the silent registration mechanism will be fully implemented, and sanctions, in fact, will not work,” notes Akinshina, adding that it is not yet clear how exactly the EU intends to implement the designated influence on the consideration of WIPO applications and how this will affect the mentioned silent registration procedure. Separate regulations for European companies amount to further tightening of EXPORT control measures for EU resident companies, recalls Akinshina.

As RBC previously reported, the EU expanded the previously introduced No Russia clause , which stipulates that contracts between EU exporters and counterparties in third countries must contain a clause prohibiting the re-export of certain sensitive goods to Russia. From December 26, agreements between European companies involving the sale, licensing or transfer of intellectual rights (trade secrets) related to the Common High Priority list of goods (certain machines, computer devices, bearings, digital cameras, diodes, transistors, electronic circuits, etc. .), must include a ban on the transfer of such rights to Russia.

RBC sent a request to WIPO.

As lawyers previously explained to RBC, among those who may suffer from EU sanctions on intellectual property, there may be those Russians and domestic companies that have previously filed applications for registration of intellectual property in this region, but have not yet received a decision on them, as well as those who are just about to apply. At the end of June, the WIPO trademark database had at least 201 applications for registration under the Madrid system under consideration, Akinshina said earlier. For example, the confectionery holding "Red October" is waiting for registration in the EU of the packaging of its "Kiwi" sweets, the drink manufacturer "Chernogolovka" - the fun+ola brand, "National Alcoholic Traditions" - Mount Water vodka, the BAM company - lightly carbonated drinks Bambucha, GC "Efko" "- plant-based MEAT "Khaimyaso", etc. However, some of these companies said that registration in the EU is no longer important for them due to changed plans for development in this market.