PETOŠEVIĆ

April 2021

Eurasian Industrial Design System Expected to Launch on June 1, 2021

On April 14, 2021, the Eurasian Patent Office announced that it will start accepting Eurasian industrial design applications on June 1, 2021, when the Eurasian design protection system under the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention is expected to become operational, allowing applicants to obtain protection simultaneously within the territory of the states where the Protocol entered into force – Armenia, Azerbaijan, Kazakhstan, Kyrgyzstan and Russia.

The three remaining EAPO member states – Belarus, Tajikistan and Turkmenistan – have yet to complete their ratification procedures. According to Article 22 of the Protocol, Eurasian design patents will have legal effect in the EAPO member states in which the Protocol was in force on the application filing date.

Definition and Scope of Protection

An industrial design is defined as the design of the external appearance of an industrial or handicraft product resulting from the features defining its aesthetic character, in particular, shape, configuration, ornamentation, combination of colors, combination of lines, contours, texture or materials. In this definition, product refers to packaging, labels, assembled products, parts of products, sets of products and typographic typefaces.

The scope of legal protection will be determined by a set of essential features that are reflected in product’s images.

A design should be new and original. A design will be considered new if its set of essential features that are reflected in the product’s images has not been made available to the public before the application filing date or, if priority is claimed, before the priority date.

A design will be considered original if its set of essential features is determined by the creative character produced by the distinct aesthetic aspects of the product, in particular if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the application filing date or, if priority is claimed, before the priority date.

The disclosure of a design by its creator, their successor in title, the applicant or a third party who received this information from them directly or indirectly will not be taken into consideration for the purpose of assessing the design’s novelty and originality, if the application is filed within 12 months from the disclosure date.

What Cannot Be Registered as a Design?

The following cannot be registered as a Eurasian design:

• Designs that are contrary to public policy or to principles of morality in at least one of the Contracting Parties; 
• Designs that include, reproduce, or imitate official symbols or the abbreviated or full names of international and intergovernmental organizations without the consent of the respective competent authorities of the states or organizations whose interests are affected by such designs;
• Designs that include, reproduce, or imitate official names or images of cultural heritage (including ethnic or religious heritage), or recognizable parts thereof without the consent of the respective competent authorities of the Contracting Parties whose interests are affected by such designs;
• Designs whose essential features are dictated solely by the product’s technical function;
• Designs that are identical or confusingly similar to the trademarks protected or applied for and published by at least one Contracting Party and having an earlier priority date than the design application;
• Designs that are identical or confusingly similar to the titles of scientific, literary or artistic works known in at least one Contracting Party, to the names of their characters or citations therefrom, if the copyright of such works has an earlier priority date than the design application and there is no consent from the respective copyright holders;
• Designs that can mislead consumers as to their manufacturer, place of origin, or the nature of the product for which such a design can be used as packaging or a label.

Filing an Application

The Eurasian design application can be filed by one or several applicants. It should refer to one or more industrial designs with the maximum of 100 industrial designs. All the industrial designs in one application should belong to the same Locarno class. The procedural fee will depend on the number of industrial designs indicated in the application.

The official fees are the following:

• Filing a design application –  EUR 231 (USD 279)
• Each additional design in the same application (up to 10) – EUR 116 (USD 140)
• Each additional design in the same application (over 10) – EUR 58 (USD 70)

According to the Protocol, an application is to be filed in written or electronic form in Russian, while supporting documents can be filed in Russian or other languages along with a Russian translation. An application can be filed with the Eurasian Patent Office either directly or through the national patent office of the Contracting Party (“the receiving office”), and applicants will pay a uniform procedural fee.

Applicants who are not permanent residents or who are not permanently located in the territory of any of the contracting states must be represented by a Eurasian Design Attorney. It is expected that the first exam allowing national design attorneys to obtain this license will be held after May 15, 2021.

The application must contain the following:

• Statement that an application is filed in accordance with the Protocol;
• Name and address of applicant(s);
• Name and address of creator(s);
• Contact information of the applicant(s) or the Eurasian Design Attorney;
• Title of the design;
• Indication of the products in which the design is intended to be incorporated or to which it is intended to be applied;
• Locarno class;
• Set of reproductions of the design.

If something is missing in the design application, the filing date will be the date on which the correction of this irregularity is submitted to the receiving office.

The application may contain a description of the design, but it is not necessary.

Priority

Applicants can claim priority based on the filing date of an earlier application filed in any member country of the Paris Convention or the World Trade Organization, if the Eurasian application is filed within six months from the priority date. A certified document confirming the priority date should be submitted to the receiving office no later than three months after the Eurasian application’s filing date. The Eurasian Patent Office can further request a Russian translation of the document. 

The missed deadline for claiming priority can be reinstated upon the applicant’s request if the request is filed within two months from the missed deadline and if the Eurasian Patent Office finds that the applicant missed the deadline unintentionally. The official fee for a late priority claim is EUR 185 (USD 223).

Multiple priorities may be claimed even if priority claims have been made in different jurisdictions.

Examination and Publication

Each Eurasian design application will undergo preliminary and substantive examinations. If formal requirements are met, a decision establishing the application’s filing and priority dates should follow, and the application will be published by the Eurasian Patent Office within one month from notifying the applicant of the positive result of the preliminary examination. Deferred publication is not stipulated by the Protocol. The Office will then conduct substantive examination and issue its decision. The Eurasian Patent Office’s regulations concerning the time frames and examination procedures are yet to be adopted.

Published applications will enjoy provisional protection, the scope of which is limited to the essential features reflected in the published drawings. Right holders can claim damages for the use of their design starting from the publication date, provided that the design patent is finally granted.

Oppositions

After the application is published, the patent offices of the Contracting Parties and any interested person may file an opposition with the Eurasian Patent Office within two months of the publication date. The Eurasian Patent Office should notify the applicant and publish information about the filed opposition within seven days from the expiration of the opposition period. The applicant has one month to file their arguments against the opposition. In case the parties request mediation, the Eurasian Patent Office will suspend the examination of the application for a period not exceeding six months. The official fee for filing an opposition against a Eurasian design application is EUR 231 (USD 279).

Registration

Once a grant decision has been issued and the applicant has paid the registration fees, the Eurasian Patent Office will register the design in the Register of Eurasian Industrial Designs. The design should be published in the Official Bulletin within the following two months, and the design certificate will be sent to the right holder after publication in the Official Bulletin.

The applicant must pay the registration fees within two months of the grant decision date; this term can be extended for another two months upon payment of an additional fee.

The official fees are the following:

• Granting and publishing a design – EUR 173 (USD 209)

• Each additional design in the same application (up to 10) – EUR 87 (USD 105)
• Each additional design in the same application (over 10) – EUR 43 (USD 52)

Objections and Appeals

If an applicant disagrees with a refusal decision, they may file an objection within three months from the decision date. The objection should be considered within four months from being filed.

An objection decision can be further appealed within four months from the decision date by submitting an appeal to the President of the Eurasian Patent Office.

The official fee for filing an objection against a refusal decision is EUR 231 (USD 279), and the official fee for filing an appeal following the objection is EUR 405 (USD 489).

Divisional Applications

A divisional application can be filed if, on its filing date, the parent application is not abandoned or revoked, no design patent is granted for the parent application, or, in case the parent application has been refused, there is still a possibility to appeal the refusal. 

Conversion of a Eurasian Design Application into a National Application

A Eurasian application may be converted into a national application by filing a request before the Eurasian Patent Office. The conversion request should indicate the Contracting States where the applicant wishes to obtain a design patent (register an industrial design) under the national procedure. Such request may be filed within six months from the date of the decision to refuse the grant of a Eurasian design patent or the decision to refuse the opposition filed against such a decision.

In each of the designated states in respect of which such a decision has been reached and which is the subject of the request, the Eurasian application is to be considered a properly prepared national application filed with the national patent office, with the same filing date and priority date (if applicable). It should be further processed by the national office upon payment of the relevant national fees.

Validity Term and Renewal

Once granted, Eurasian designs will be valid for five years counting from the application filing date, and will be renewable in the territory of all the Contracting Parties in which the Eurasian design has legal effect 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.

The relevant official fees (per design in the same registration) are the following:

• Renewal for years of validity 6-10 (per design) – EUR 81 (USD 98)
• Renewal for years of validity 11-15 (per design) – EUR 110 (USD 133)
• Renewal for years of validity 16-20 (per design) – EUR 139 (USD 168)
• Renewal for years of validity 20-15 (per design) – EUR 168 (USD 203)

Exclusion of Overlapping Protection

The Protocol envisages the exclusion of overlapping protection – in a Contracting Party, the rights arising from a Eurasian application or registration with an earlier filing or priority date have priority over the rights arising from a subsequent national application or design registration filed before the Eurasian application publication date on the same basis, and vice versa.

Recordals

Requests to record an assignment, merger or pledge of rights should be filed with the Eurasian Patent Office. Request to record a license should be filed with the patent office of the Contracting Party where the license agreement is made and where it is valid.

Invalidation

A granted and published Eurasian design can be invalidated if an action is filed with the Eurasian Patent Office within six months from the publication date. The invalidation action should be considered and decided on within the following six months. The parties may attend the hearing and submit their arguments.

A decision on the invalidation action can be further appealed by submitting arguments to the President of the Eurasian Patent Office. The appeal should be filed within four months from the decision date.

The official fee for filing an invalidation action with the Eurasian Patent Office is EUR 347 (USD 419), and the fee for filing an appeal following the invalidation action decision is EUR 520 (USD 628).

The decisions of the Eurasian Patent Office and its President are valid within the territories of all Contracting Parties.

An invalidation action can also be filed with the administrative or judicial bodies of a particular Contracting Party. In case of invalidation by one Contracting Party, a Eurasian design remains valid in other Contracting Parties.

Enforcement

The enforcement of Eurasian design rights should be carried out under the substantive and procedural law of the Contracting Party where the infringement took place.

By: Anastasia Khioni and Tatyana Kulikova

For more information, please contact Tatyana Kulikova or Anastasia Khioni at our Belarus office.

EAEU Trademark Agreement Enters into Force

The Agreement on the Eurasian Economic Union Trademarks, Service Marks and Appellations of Origin, signed on February 3, 2020 by all five EAEU member countries –Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia, entered into force on April 26, 2021, following the recent ratification by all member states.

The EAEU Trademaek Agreement is a fundamental document contributing to the formation of a regional, unified trademark system. As announced on the Eurasian Economic Commission (EEC) website, a set of instructions outlining procedural rules for the implementation of various provisions of the agreement will be approved in the nearest future.

Under the unified system, right holders will soon 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: Ainur Zhussipova

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

Replacement Procedure Under the Madrid Protocol in the Post-Brexit Era, Rule 21 of the Regulations Amended

Although the replacement mechanism (replacing a national/regional trademark with an international registration) has existed for a long time, it has not been widely used by right holders. To clarify the replacement details and to remove any doubts about the procedure, Rule 21 of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks has been recently amended and entered into force on February 1, 2021.

What are the rules for replacing a national or regional registration under the Madrid Protocol?

According to Article 4bis of the Madrid Protocol, when a mark is the subject of a national/regional (for example EU) trademark registration, and simultaneously the subject of an international registration (IR), the IR is deemed to replace the national/regional registration provided that conditions listed in the Protocol and in Rule 21 of the Regulations under the Protocol are met.

For the replacement to occur, the following criteria must be met:

• The protection of the IR must extend to the Contracting Party in question;
• The national/regional registration and the IR that is replacing it must be for the same mark and in the name of the same person;
• The IR must cover all the goods and services protected by the national/regional registration; and
• The designation of the given Contracting Party must take effect after the date of the said national/regional registration.

The replacement is effective without any further action on the right holder’s side. However, the right holder may request the national IPO to note in its Register that a national/regional registration has been replaced by an IR. After this, the national IPO will notify WIPO’s International Bureau, which will record the information on the national registration in the International Register.

How has Rule 21 been amended?

The amendments to Rule 21 of the Regulations specify the principles governing replacement, acknowledging that both the national/regional registration and the IR that has replaced it may coexist. The right holder may choose to allow the national registration to lapse, while the priority date and protection of the lapsed national registration will still be conserved by the IR.

How to benefit from this procedure in terms of UK trademarks?

As of January 1, 2021, the EU trademark law no longer applies in the UK. As a result, all registered EUTMs were automatically converted into equivalent national UK trademarks, and the same procedure was applied in cases where the EU was designated in an IR.

As a result, right holders are now obliged to manage these converted trademarks directly with the UK IPO. This might be more burdensome than to just manage one IR portfolio because renewals, maintenance and recordal of eventual changes of ownership must be handled separately, there are more deadlines to comply with, and hiring local trademark attorneys might also be necessary.

A solution to this problem can be to designate the UK in an IR, in which case the national UK registration will be automatically replaced by the IR, and then request the UK IPO to take note of the IR in its Register. The UK IPO will then notify WIPO’s International Bureau, which will publish the details of the national registration in the WIPO Gazette of International Marks.

The cost of this procedure includes the fee for the subsequent designation of the UK in an IR, which has to be compared with the UK IPO’s renewal fees in case the UK registration is to be maintained and replacement not applied. In addition to potential costs savings, the convenience of handling a UK trademark as part of an IR and not as a separate national registration might make the replacement mechanism more popular in the context of the impact of Brexit. Trademark owners therefore might find it useful to explore the possibility of including the UK in new IRs or subsequent designations.

By: Tímea Torzsás

For more information, please contact Tímea Torzsás at our Hungary office.

UA-DRP Becomes Applicable to New Domain Zones

As of May 6, 2021, the .UA Domain Name Dispute Resolution Policy (UA-DRP) will become applicable to the following Ukrainian district-specific third-level domain zones: <.KYIV.UA>, <.KIEV.UA>, <.IVANO-FRANKIVSK.UA>, <.IF.UA>, <.POLTAVA.UA>, <.PL.UA>, <.UZHGOROD.UA> and <.UZ.UA>. 

There are around 40,000 domain name registrations in the <.KYIV.UA> and <.KIEV.UA> zones, making them the most popular Ukrainian regional domain zones. The number of domain name registrations in the domain zones relating to the cities and districts of Ivano-Frankivsk, Poltava and Uzhgorod is around 6,000.

The UA-DRP is a domain name resolution mechanism similar to the UDRP (Uniform Domain-Name Dispute-Resolution Policy). The proceedings are administered by the WIPO Arbitration and Mediation Center. For a complaint to be successful, the following must be proven:

• The complainant’s trademark is identical or confusingly similar to the domain name;
• The domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
• The domain name is registered and/or used in bad faith.

The remedies available to the complainant are the domain name cancellation or its transfer to the complainant.

The UA-DRP procedure cost is equal to the UDRP procedure cost and ranges from EUR 1,315 (USD 1,500) to EUR 4,385 (USD 5,000). The UDRP procedure usually lasts 60-75 days.

When it entered into force on March 19, 2019, the UA-DRP was only applicable to second-level domain names in the .UA country-code top-level domain (ccTLD). On December 19, 2019, the UA-DRP became applicable to domain name registrations in the most popular Ukrainian domain zone, <.COM.UA>. The upcoming extension of the policy on May 6, 2021 confirms plans for the UA-DRP’s gradual extension to other Ukrainian domain zones.

Since the UA-DRP became effective, the WIPO Arbitration and Mediation Center considered almost 40 cases, and there are three pending cases at the moment.

By: Igor Alfiorov

For more information, please contact Igor Alfiorov at our Ukraine office.

Belarus Joins the Hague System

On April 19, 2021, the Government of Belarus deposited its instrument of accession to the Geneva Act of the Hague Agreement with the World Intellectual Property Organization (WIPO). This latest accession brings the total number of countries covered by the Hague System to 92.

On July 19, 2021, when the Geneva Act of the Hague Agreement enters into force with regard to Belarus, Belarus residents will be able to start using the system by filing a single application to register their designs in as many as 92 countries covered by the system. In parallel, non-residents seeking design protection in Belarus will be able to designate the newest contracting state in their international applications.

Prepared by: Anastasia Khioni

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

EUIPO and OECD Study: Counterfeits Arriving by Sea Carry 56% of the Total Value of Detained Goods

The European Union Intellectual Property Office (EUIPO) and the Organization for Economic Co-operation and Development (OECD) recently published a study on the misuse of containerized maritime shipping in the global trade of counterfeits. The study shows that one of the main channels for the transport of counterfeit goods is container shipping – 56% of the total value of all detained counterfeits in the EU between 2014 and 2016 was transported in container ships.

Although 57% of all counterfeit items detained between 2014 and 2016 were discovered in parcels sent through postal services and only 10% concerned maritime shipping, counterfeits arriving via container ships dominate in terms of the value of the detained goods. While X-ray or gamma ray scanning can detect illegal drugs and weapons, detecting fake goods requires physical searches in order to effectively determine if a container is used for smuggling counterfeits. However, in the EU only about 2% of incoming containers are inspected this way.

According to the report, 79% of the total value of counterfeits detained in maritime containers worldwide originated from China. More than 50% of containers transported in 2016 by ships from the top provenance economies for counterfeit goods entered the EU through Germany, Netherlands and the United Kingdom.

The study also shows that in 2016, counterfeit products worth approximately EUR 121 billion (USD 146 billion) flowed into the EU, contributing to 6.8% of all imports. This caused EUR 83 billion (USD 100 billion) worth of losses to EU companies and EUR 15 billion (USD 18 billion) worth of losses to EU countries, while it also resulted in 610,000 jobs lost.

Prepared by: Erika Farkas

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

Legal 500 Recognizes PETOŠEVIĆ Offices and Practitioners in Four Jurisdictions

The Legal 500 EMEA 2021 guide, one of the major sources listing notable law firms and practitioners from all over the world, recently recognized PETOŠEVIĆ offices and practitioners in four jurisdictions.

PETOŠEVIĆ was ranked as follows:

Bosnia and Herzegovina - Intellectual Property - Tier 1
Serbia - Intellectual Property - Tier 1
Croatia - Intellectual Property - Tier 2
Ukraine - Intellectual Property - Tier 2

Three lawyers were listed as Leading Individuals:

Mihajlo Zatezalo, Regional Manager – Western Balkans

Tarik Prolaz, Head of Office – PETOŠEVIĆ Bosnia and Herzegovina

Mirjana Živković, Head of Office – PETOŠEVIĆ Serbia

PETOŠEVIĆ Croatia Head of Office Ivan Kos and PETOŠEVIĆ Serbia Senior Associate Ivan Matić were listed as a Next Generation Partner and a Rising Star, respectively.

For more information, please visit our Rankings page.