As the year 2020, which turned out to be the year of trouble for the whole world, is coming to an end, we are taking stock of principal changes that have taken place in the Russian IP legislation in 2020.
Generally, the Russian IP legislation is developing in accordance with international standards. There are several priorities for Rospatent:
-
Accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications
-
Creation of a Eurasian system of legal protection of industrial designs on the territory of the EAEU and of a Eurasian system of legal protection of trademarks on the territory of the EAEU
-
Promotion of the Russian language in the Madrid System for the international registration of trademarks and the Hague System for the international registration of industrial designs
Among changes that affect the IP legislation are:
✅“Green corridor” for patent applications related to the prevention, treatment and diagnosis of COVID-19
✅Protection of geographical indications
✅Electronic registration certificates and patent letters
✅Mandatory labelling of products
✅New rules for consideration of disputes at Rospatent
✅Ratification of the EAEU (Eurasian economic union) Trademark Agreement
This list is not exhaustive and contains only the changes that, in our opinion, are significant. Here is a brief overview of these changes.
“Green corridor” for patent applications related to the prevention, treatment, and diagnosis of COVID-19
In spring 2020, the Russian Government introduced a priority procedure for considering applications for registration of means of treatment, prevention, and diagnosis of the coronavirus infection. As a result, such applications can be considered in 2 months, instead of 5-6 months.
From April to early October, the Federal Service for Intellectual Property (Rospatent) received 340 applications for the grant of patents for inventions and utility models in the field of technologies for combating viruses and associated diseases.
Protection of geographical indications
Starting July 27, 2020, geographical indications on products are now protected in Russia and it is possible to register them with the Rospatent. These changes are the result of the recent amendments to the Russian Civil Code that came into force.
Geographically related designations are already under protection in Russia as appellations of origin of goods and this mechanism will continue its operation. However, from now on, it will be easier and faster to obtain geographical indication rights rather than appellations-of-origin rights, especially for foreign producers.
The key difference between a geographical indication and an appellation of origin is as follows: to register a geographical indication, it is sufficient for the applicant to prove that at least one important stage of the product manufacturing process (i.e. a stage that has a significant impact on the product’s particular qualities) takes place at a certain geographical location.
It is expected that both domestic and foreign producers will favour the newly-introduced regime of geographical indications. Many of them will likely apply for registration with Rospatent since they will be given an additional tool for preventing sale of products misleading consumers about the place of origin.
Electronic registration certificates and patent letters
On July 15, 2020, the Russian Parliament approved a law, according to which, all IP rights applicants will first receive certificates of registration and patent letters in electronic form. Paper copies will be available only upon a separate request. Federal Law # 217-FZ was published on July 20, 2020. It will enter into force on January 17, 2021.
The following documents, confirming the exclusive right to intellectual property objects, are planned to be made electronic:
-
computer program certificates
-
database certificates
-
invention patents
-
utility model patents
-
industrial designs patents
-
integrated circuit topology certificates
-
trademark (service mark) certificates
-
certificates for a well-known trademark in the Russian Federation
-
geographical indication certificates
-
certificates for an appellation of origin of goods
Mandatory labelling of products
Russia continues introducing mandatory labelling of products. The products that have to be marked in accordance with the federal information system for monitoring circulation of products are as follows:
2016-2019:
- Fur products (from August 12, 2016)
- Tobacco products (from July 1, 2019)
- Shoes (from July 1, 2019)
2020-2021:
- Pharmaceutical products (from July 1, 2020)
- Cameras and equipment (from October 1, 2020)
- Perfumery products (from October 1, 2020)
- Tires (from November 1, 2020)
- Goods of light industry and clothing (from January 1, 2021)
- Alternative tobacco products (from July 1, 2021)
By 2024, it is planned to introduce mandatory marking for all types of products.
About mandatory labelling
Each product must have a unique identifier on its packaging, a data matrix code, containing the following information:
-
a product’s serial number
-
an expiration date
-
a consignment number
-
a manufacturer’s name
This identifier enables monitoring of each product’s circulation on its way from the manufacturer to the end consumer.
In TKM’s opinion, the labelling will not save right holders from counterfeiting, since the system has a number of drawbacks:
-
it will certainly lead to an increase in prices;
-
it has already been recorded that there are companies that sell counterfeit products in the base of the labelling operator;
-
the procedure for customs clearance of these categories of goods will become more complicated;
-
and others.
New rules for consideration of disputes at Rospatent
On September 6, 2020, new rules for Rospatent's consideration of disputes aimed at protecting intellectual rights in an administrative manner came into force.
The most important changes are related to electronic interaction with the parties to the dispute. The list of the most significant alterations is as follows:
1. Objections, statements, responses to them, clarifications, and petitions of the parties can be filed via the official websites of Rospatent and the Federal Institute of Industrial Property. It is necessary to have a Personal account to use the electronic document flow in the frame of a case.
2. The information regarding the accepted objection must be published on the official website. The parties must obtain a code identifier to have access to an electronic case.
3. It is allowed to participate in the hearing by means of videoconferencing, at the request of the dispute party.
4. An objection or statement formal verification term must be reduced from 1 month to 5 working days. The first hearing must be appointed no later than 1 month from the objection acceptance date if the fee payment is confirmed. Other objections or statements must be appointed for their hearing no later than 2 months from their acceptance date.
5. The maximum postponement deadlines are strictly fixed. The hearing can be postponed for 1 month and for 3 months if an independent expert must be involved in the case. The exhaustive grounds to postpone the hearing are listed in paragraph 29 of the new rules.
6. The procedure for providing audio and (or) video recordings of the hearing has been determined. The hearing recordings must be stored for at least 4 months from the date of their conducting. The recordings must be provided to the party at the request.
7. The filed objection party may present the new arguments to support the claimed demands in the frame of the objection consideration. Information about the additional arguments must be sent to another party within 5 working days from the date of their presentation. The party must be given the opportunity to provide its opinion on the arguments.
8. If during the objection consideration grounds to invalidate intellectual property object protection or to prohibit its registration were detected, the information regarding these grounds must be brought to the attention of the parties within 5 days from the day of the objection hearing. The time to provide their opinion must be given to the parties.
A detailed description of the new rules is available on Rospatent’s website: https://rospatent.gov.ru/ru/documents/prikaz-minobrnauki-minekonomrazvit...
The EAEU (Eurasian economic union) Trademark Agreement
On 27 October 2020, the State Duma of the Russian Federal Assembly discussed and adopted the Draft Federal Law On Ratification of the Treaty on Trademarks, Service Marks and Appellations of Origin of the Eurasian Economic Union (EAEU). The Treaty was signed in Moscow on February 3, 2020.
The document permits the filing of an application for registration of a trademark or appellation of origin of a union product with any national patent office.
Application of the agreement will give a lot of positive outcomes in future for both TKM and right holders. It will allow us to:
-
facilitate work within the framework of the cross-border strategy for protecting brands from counterfeiting in the countries where we operate — Kazakhstan, Kyrgyzstan, Armenia and Belarus
-
reduce the time for legal protection of trademarks and appellations of origin of goods of the EAEU (Eurasian economic union)
All in all, it is an excellent step that will provide a boost for development of Eurasian integration. However, it will take time to handle all the technical issues related to the organisation of the register work, as well as form international authorities, which will be responsible for the register. For instance, to have the register successfully working, it is necessary to make an applied designation examination process clear, create the specific regulations of the new system, etc.
Conclusion
Some of these newly-introduced regulations in the IP legislation are intended to minimise the presence of counterfeit and low-quality products in the market and prevent illegal trade. However, the TKM team reckon that the introduced measures are not as very effective as they should be since in the current situation the spread of counterfeit products is faster than the adoption and implementation of new laws. Therefore, it is necessary to constantly suppress the actions of violators and identify supply chains, in other words, constantly combat counterfeits.