PETOŠEVIĆ

January 2021

Russia to Expand Grounds for Granting Compulsory Licenses

On December 15, 2020, the amendments to the Russian Civil Code expanding the list of grounds for granting compulsory licences were approved by the Russian State Duma, the lower house of the Russian Federal Assembly, in the first reading. While the Civil Code already allows the Russian government to grant permissions to use patented inventions in the interests of defense and national security, the amendments also allow the government to issue compulsory licenses in the interest of protecting the life and health of citizens.

The amendments were submitted to the State Duma in 2019, attracting much criticism. The opponents argued that compulsory licensing may unjustifiably interfere with the functioning of the market and potentially cause a shortage of both generic and brand-name drugs in Russia. However, due to the COVID-19 pandemic, this step taken by the Russian government may have come at an opportune time. After all, the ability of a country to issue compulsory licenses for medicines and other urgently needed items to respond to a health crisis is not a novel approach and is not prevented by international trade agreements. Under the pressure of responding to the COVID-19 crisis, countries such as Germany, Canada, France, Brasil, Ecuador and Chile are also preparing to facilitate the issuing of compulsory licenses. Israel has already issued a compulsory license allowing the country to import the Lopinavir and Ritonavir medications used in COVID-19 treatment.

In order to be implemented in practice, the Russian Civil Code amendments must still go through the second and third readings in the State Duma before being finally approved. However, in November 2020, one of the leading pharmaceutical companies in Russia, Pharmasyntez, asked the Russian government for permission to produce a generic version of Remdesivir (Veklury®), a medication produced by American pharmaceutical company Gilead which has been approved for temporary use in COVID-19 treatment in about 50 countries worldwide. It is protected in Russia by Eurasian patents until 2035. On January 5, 2021, referring to the interests of defense and national security, the Russian government issued a compulsory license for the Remdesivir patent, allowing Pharmasyntez to produce a generic version called Remdeform.

Taking into account the pending amendments to the Russian Civil Code and the current health situation, it appears that patent disputes arising from compulsory licenses may increase in Russia in the near future.

By: Natalia Osipenko

For more information, please contact Natalia Osipenko at our Russia office.

Russia and Kazakhstan Ratify Protocol on Eurasian Industrial Designs

Russia deposited its instrument of ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention on January 11, 2021 and Kazakhstan followed one day later, on January 12, 2021. The Protocol will enter into force in Russia on April 11, 2021 and in Kazakhstan on April 12, 2021.

The first three Eurasian Patent Organization (EAPO) member states that deposited their instruments of ratification were Kyrgyzstan, Azerbaijan and Armenia and the Protocol will enter into force in these three countries on March 17, 2021.

The Protocol was adopted by the EAPO states on September 9, 2019, introducing the Eurasian system of protection for industrial designs, along with the already existing regional protection for inventions. There are eight EAPO member states: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan and Turkmenistan.

Tajikistan has signed the Protocol, but has yet to ratify it, while Belarus and Turkmenistan have announced the implementation of domestic procedures necessary for their participation in the Protocol.

According to the Protocol, Eurasian industrial design applications will be filed with the Eurasian Patent Office either directly or through the national patent office of an EAPO member state. All applicants will follow uniform examination requirements, use only the official language of the EAPO – Russian, and pay a uniform procedural fee. Once granted, Eurasian design patents will be valid for five years counting from the application filing date, and will be renewable for additional five-year periods up to four more times, so that the maximum term of protection does not exceed 25 years from the application filing date.

Prepared by: Dayana Auezova and Anastasia Khioni

For more information, please contact kazakhstan@petosevic.com.

Kazakh Customs Introduces Online Customs Watch Applications

The amendments to the Kazakh customs legislation entered into force on January 16, 2021, introducing an online application system expected to significantly reduce the average timeframe for preparing and filing a Customs Watch Application (CWA).

The applicants have long been required to submit CWAs in paper form, along with a USB flash drive containing all the information included in the paper application. According to the amendments, CWAs and other related documents will soon have to be submitted exclusively via the electronic system and all communication with the customs authorities will also have be conducted electronically.

The electronic filing system and the integrated e-contract system for insurance agreements are still under development and are expected to be launched by the end of March 2021. For the time being, the customs authorities still ask for the submission of applications and insurance agreements in paper form, along with a USB flash drive.

On another important note, right holders are no longer required to submit documents confirming the illegal import of goods bearing their trademark into the Eurasian Economic Union, such as court decisions, customs detention notifications, and other documents issued by state authorities. It is also no longer necessary to file original documents; scanned copies are now sufficient.

Insurance agreements should be arranged in the form of an e-contract between the right holder and the insurance company and submitted through the electronic system, which is integrated with the National Bank of Kazakhstan’s database.

By: Ainur Zhussipova and Aliya Madiyarova

For more information, please contact Ainur Zhussipova or Aliya Madiyarova at our Kazakhstan office.

Belarus Ratifies EAEU Trademark Agreement

The Belarusian President signed the Law on Ratification of the Agreement on the Eurasian Economic Union Trademarks, Service Marks and Appellations of Origin on January 4, 2021. The law entered into force on January 18, 2021, making Belarus the second EAEU member state to ratify the EAEU Trademark Agreement, following Russia’s ratification.

The Agreement was signed on February 3, 2020 by all EAEU members states – Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia. The Agreement will enter into force once all member states bring their registration procedures and official fees in line with the Agreement and deposit their instruments of ratification to the Eurasian Economic Commission (EEC).

Under the unified system, right holders will be able to obtain legal protection simultaneously in all EAEU member states by submitting one application to any of the national offices, i.e. they will be able to choose a “receiving office”. Each trademark application will undergo preliminary (formal) and substantive examination, with the entire registration procedure estimated to take approximately one year. The EAEU trademark will be kept in a single register administered by the EEC.

Prepared by: Anastasia Khioni

For more information, please contact belarus@petosevic.com.

Kazakh IPO Introduces Fast-Track Examination for COVID-19-Related Patents

In December 2020, the Kazakh Intellectual Property Office started offering a fast-track patent examination procedure for inventions in the field of diagnostics, prevention and treatment of oncological diseases and infectious diseases which lead to the introduction of restrictive measures such as quarantine.

The fast-track patent examination, which must be requested by applicants, consists of the following:

• Expedited formal examination within ten business days;
• Expedited search within two months;
• Expedited substantive examination within three months.

While the standard procedure for obtaining a patent lasts just over a year, the fast-track procedure takes six months. At the same time, when the IPO sends requests or notifications to the applicant, the term of the fast-track examination is suspended until the IPO receives the necessary documents.

Since the start of the COVID-19 pandemic, the Kazakh IPO has registered two COVID-19-related patents, for “Method of obtaining the inactivated vaccine for COVID-19 prophylaxis” and for the “SARS­CoV­2/KZ_Almaty/04.2020 strain of coronavirus used for the preparation of specific prophylaxis, laboratory diagnostics and evaluation of the effectiveness and biological safety of vaccines against coronavirus infection”.

Fast-track examination procedures are already available for inventions in the field of renewable energy, including solar and geothermal energy, hydropower, wind power, biomass, biogas and other fuels from organic waste.

By: Aliya Madiyarova and Dayana Auezova

For more information, please contact kazakhstan@petosevic.com.

Ukrainian Drug Manufacturer Fined for Unfair Competition

The Ukrainian Antimonopoly Committee has recently imposed a fine of EUR 295,000 (USD 360,000) on the Ukrainian pharmaceutical company Zdorovye LLC for violating the Ukrainian competition protection legislation by using a confusingly similar packaging design as its competitor. Ukrainan drug manufacturer Darnitsa Pharmaceutical Company PrJSC initiated the proceedings, claiming that Zdorovye designed the packaging for its Citramon-Zdorovye tablets as a copy of Darnitsa’s Citramon-Darnitsa, a well-known pain relief medicine among the average consumers in Ukraine.

During the proceedings, it was established that Darnitsa began using its packaging design earlier than Zdorovye and that Darnitsa effectively promoted their product using TV, radio, point of purchase, print and online advertising. It was noted that these factors contributed to Citramon-Darnitsa enjoying a high level of recognition and a good reputation among consumers. The Antimonopoly Committee concluded that similar packaging designs may cause a likelihood of confusion and ordered Zdorovye to stop using the deceptive packaging.

The two pharmaceutical companies were also involved in a trademark infringement battle from 2017 until December 2, 2020, when the Kyiv City Commercial Court declared the Citramon-Zdorovye trademark invalid.

Prepared by: Valentyna Martynenko

For more information, please contact ukraine@petosevic.com.

Hungarian Officials Seize Fake Furniture

The Hungarian National Tax and Customs Administration (NTCA) officials recently seized more than 100 chair and desk parts infringing the Chanel® and Versace® trademarks while inspecting a truck on the M7 motorway in western Hungary.

The seized goods, which were being transported from Bulgaria to Spain, are estimated to be worth approximately EUR 657,000 (USD 799,000).

Prepared by: Erika Farkas

For more information, please contact hungary@petosevic.com.

Serbian Customs Seize Fake Watches

On January 23, 2021, Serbian customs officials at the Gradina border crossing point with Bulgaria seized 55 men’s watches believed to infringe the Seiko®, Rolex® and TAG Heuer® trademarks.

The fake watches were discovered among more than 1,000 pieces of jewellery and watches found during the inspection of a van travelling to Germany.

Prepared by: Djurdja Krivokapić

For more information, please contact serbia@petosevic.com.

Djakhangir Aripov to Present at IP Central Asia Forum 2021

PETOŠEVIĆ Uzbekistan Head of Office Djakhangir Aripov is scheduled to speak during the IP Central Asia Forum, to be held online on April 15-16, 2021.

Mr. Aripov will act as the forum coordinator for Uzbekistan and will hold a presentation on initiating unfair competition actions with the Uzbek Antimonopoly Committee as an option for enforcing intellectual property rights.

The forum will focus on the protection and enforcement of IP rights in Central Asia and the challenges and opportunities arising in connection with digitalization.

The forum is expected to gather more than 250 IP attorneys, company executives, and government agency representatives from Kazakhstan, Kyrgyzstan, Tajikistan, Turkmenistan, Uzbekistan, Russia and Azerbaijan.

For more information, please contact Djakhangir Aripov at our Uzbekistan office.