Counterfeits in the frames of Eurasian Economic Union: what to expect?
Protection of intellectual property is a priority in EAEU and its policy is aimed on development and unification of the legislation in the corresponding field and effective defense of the interest of IP rights owners. As there are no custom borders inside the union, essential problems may arise regarding the import of counterfeit goods through the EAEU customs border in the result of increase in the costs of products, distribution of the counterfeit products through the Internet sales and international mail, insufficiently effective customs control, etc.
The reason of the problem derives from significant difference in the number of registered objects which results to different level of IP protections in the EAEU countries.
In this regard, it is necessary to point out that the Customs Code of the EAEU, which entered into force in 2018, provides for the establishment of the unified customs IP register. The main advantage of this register is to avoid unnecessary actions and to centralize registrations of trademarks, service marks, appellations of origin and copyright in the unified customs IP register in one body—the Eurasian Economic Commission. The rights holders will be able to file an application for registration directly to the Eurasian Economic Commission, which will forward the information to the customs authorities of each member state. The main point here is that the trademark should be registered in all EAEU member states, otherwise, the application will be rejected. In addition, it should be noted that in December, 2018 members of the Board of the Eurasian Economic Commission of the EAEU signed an agreement on trademarks, service marks, and appellations of origin of goods of the EAEU. The agreement will provide an opportunity to register ‘union trademarks’ and ‘the Union’s appellation of origin of goods’, that are protected in the territories of all the member states of the EAEU and will eliminate redundant administrative barriers. Among the most important provisions of the Agreement are the following:
- One application for a Union trademarks (the Union’s appellation of origin of goods) filed with any of the member states’ patent offices. If at least one of the national patent offices refuse to register the designation, registration of the Union trademark will be denied.
- Resolution of disputes concerning Union trademark infringements taking place on a member state territory in accordance with that state’s legislation (by national courts).
- Official fees for the Union trademark registration will be set independently by each member state.
Thus, both the unified customs IP register and the Union trademark, that should become active in 2020, will improve the level of IP protection in the EAEU.
Another important issue is the gradual introduction of a product marking system for prevention of IP infringements in the EAEU. An agreement on marking of goods by identification devices in the Eurasian Economic Union was signed by the member states of the EAEU in 2018 and should help to increase control over the circulation of goods in the territories of member states, ensure transaction transparency and avoid the sales of counterfeit goods in the EAEU. New rules apply to manufacturers, wholesalers and retailers, as well as importers of goods that will need to be marked according to the law.
The functional and technological parameters of the information system for marking of goods will create a digital system of traceability of goods, covering most categories of goods, which in turn will help to avoid the sales of counterfeit goods in the EAEU.
The above possible instruments, in case of its balanced and consistent applying, can be quite efficient for protection of IP rights, depending on the aims of the rights holders, and form a unified law enforcement practice in the frames of the EAEU.
Author: Gurgen Grigoryan, Associate
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