The problems of rights to objects of intellectual property in the Customs Union – a new stage.
Author: Oksana Kurochkina, barrister
Rights on intellectual property, methods of guarding and protection, as well as the limits and the need for such protection have long been a stumbling block and a subject of intense discussions in the Russian legal community. After the integration of Russia, Belarus and Kazakhstan in the Customs Union and a Common economic space the discussion has only increased. And this is not surprising, because earlier existing problems within national jurisdictions have increased in global barriers which impediment to the free movement of goods in a Common economic space, as well as the growth of competitiveness of the economies of countries of the Customs Union. At the same time the permanent legislative initiatives and different interpretation of the CU law by arbitration courts in many ways only adding «fuel to the fire» to fierce debates.
Of course, progress in case of the further integration of the economies of the countries-members of the Customs Union and the CES is in the minimizing and eliminating the impact of such factors and barriers. And here the major complexity for the legislator is in to find a balance of interests of owners, countries – members of the Customs Union and common consumers.
The first step to removing barriers for the proper functioning of the CES should be systematization and analysis of the barriers, as the successful overcoming them is possible only with the knowledge about them. Useful in this aspect is the acquaintance with the international experience, and first of all with the experience of the European community, since the United Europe had confronted with similar problems, and has worked out its own strategy to overcome them and compile information on the effectiveness of one or another of the strategy adopted. Returning to the topic of barriers within the Customs Union in the sphere of protection of intellectual property rights, such obstacles can be attributed the difficulties in using retrospective, or the so-called «Soviet» trademarks. After the collapse of the USSR in the countries of the Customs Union are made products with the same name, for example, candy «Mishka na severe», «Mishka kosolapii», «Krasnaya Shapochka», «Lastochka», etc. These trademarks were registered in the national registry of objects of intellectual property countries-members of CU by different manufacturers. However, the unsettledness of the question of the historical trademarks in fact leads to the restriction of imports of goods within the Customs Union, which is contrary to article 3 of the Treaty on the creation of a common customs territory of the formation of the Customs Union on October 6, 2007.
For example, enterprises that produce in Kazakhstan and Belarus, candies under the historical trademarks may not currently legally deliver them to the Russian Federation. This is due to the fact that, in accordance with article 1487 of the Civil code of the Russian Federation the infringement of the exclusive right to a trademark is the use of that trademark by other persons without the consent of the right holder. Of course, the owners of retrospective trademarks in Russia do not allow using them by producers of other countries of the Customs Union.
The same situation is observed in Belarus and Kazakhstan, in which analogs of the provisions of the civil code of RF are, respectively, the law of the Republic of Belarus «On trademarks and service marks» of February 1993. № 2181-XII (article 3) and the law of the Republic of Kazakhstan «On trademarks, service marks and appellations of places of origin of goods» dated July 26, 1999 N 456 (article 4).
The above provisions of national laws are in contradiction with article 13 of the Agreement on 9 December 2010, «On the uniform principles of regulation in the sphere of guarding and protection of intellectual property rights», according to which is not an infringement of the exclusive right to a trademark the use of that trademark in relation to goods which have been lawfully introduced into civil circulation on the territory of the state Parties directly by the right holder or other person with his consent.
At the same time the producers of the goods from the countries of the CU, using retrospective trademarks, do not benefit from the expansion on the market at the expense of creation of a common market. In the Russian Federation consumers also do not benefit from the growth of a variety of goods and lower prices.
In the experience of the European Union had not revealed cases, fully coinciding with the problem because of reasons of a historical nature. Nevertheless, there was a similar precedent the case in the practice of the Court of the EU, namely, the import of goods from the country in which the use of this trademark is allowed, to the country in which it is forbidden to use as «confusing» the consumer.
According to the results of the consideration of the case by the Court of the EU had made the following conclusion: it is impossible to prohibit the import of the trademark in the country, where it is prohibited, if it is imported from the countries in which it lawfully sold, because it is analogous to a quantitative restriction on imports.
To resolve the above barrier on the Common economic space Federal antimonopoly service of Russia has offered to introduce amendments to part 1 of article 12 of the Agreement «On uniform principles of regulation in the sphere of guarding and protection of intellectual property rights», with a summary of it in the following wording: «the Owner of a trademark has the exclusive right to use a trademark and to dispose of it, as well as the right to prohibit the use of the trademark by other persons within the scope defined by the norms of legislation of the Customs Union».
At the same time it is proposed to amend article 13 of the Agreement on unified principles of regulation in the sphere of guarding and protection of intellectual property rights, stating it in the following wording: «From the date of entry into force of the present amendments to the article 13 of Agreement, the Parties shall introduce following principle of exhaustion of exclusive rights to a trademark: is not a violation of the exclusive right to a trademark the use of that trademark in relation to goods which have been lawfully introduced into civil turnover directly to the right holder or other person with his consent,» i.e., exclude the words «in the territory of the state Parties».
Deserves attention and a proposal on the registration of the retrospective trademarks as collective trademarks of the Customs Union in the name of voluntary associations of manufacturers of the country-members of the Customs Union.
Experts do not exclude also the possibility of conversion of the retrospective trademarks used before 1 January 1992, within the same trademarks of the Customs Union. The producers traditionally engaged in producing goods marked with such trademarks, will retain the right to continue their production without the necessity of obtaining pecuniary sanction from the part of third persons. Issue of permits for the use of a common trademark of the Customs Union shall be carried out by an authorized the Eurasian economic commission body under the condition of compliance with the manufacturer’s requirements to the quality of products corresponding to the established common standards.
Now is actively discussed and another proposal to legislate the responsibility of the owners of retrospective trademarks to grant a non-exclusive royalty free license for these trademarks producers (or their successors), making up to January 1, 1992, of similar products with the same name. In this case, all of the traditional producers in countries-members of the Customs Union will be able to continue using the retrospective trademarks freely, provided the production, the quality of which may not be lower than the quality of the products of the trademark owner, or the unified standards. Otherwise, the license contract shall be subject to termination in the general order established by the civil legislation.
Serious barrier on the way of further integration and formation of the Common economic space is also the non-recognition of the countries-members of the CU of the national trademarks of each other.
National trademarks registered in the national registry of intellectual property, are not recognized on the entire territory of the Customs Union, but only within the boundaries of the respective countries. For example, according to article 1479 of the CC of the Russian Federation on the territory of the Russian Federation operates exclusive right to a trademark, registered by the federal executive authority on intellectual property, as well as in cases, stipulated by the international treaty of the Russian Federation. Thus, to ensure the guarding and the protection of trademark simultaneously in all the countries of the Customs Union, the right holder registration is required in each national authority on intellectual property.
As a result, producers have to bear the additional costs for the protection of their rights. In case of registration only in the national register of the intellectual property rights the exporter must pass a similar procedure in another country, which leads to the growth of temporary and financial costs.
If we turn to the experience of the EU, in the opinion of experts, a significant factor that led to the beginning of the processes of unification and harmonization of intellectual property rights in the EU had become a practical necessity. The necessity for this is confirmed by the fact that the Court of EU had to consider the disputes in the sphere of intellectual property rights. It is the practice of the European Court of justice in many respects posed the direction of the process of unification and harmonization of intellectual property rights. The European Commission is mainly gone on the way of harmonization of the national legislation (in the sphere of design, patents for biotechnological inventions and copyright law). In other cases, the European Commission created a single right at Community level (the trademark of the EU and the newly emerging General legislation in respect of design).
Directly the process of unification and harmonization in the sphere of intellectual property dealt with the European Commission. There are two forms of this process. In the first case the speech goes about the rapprochement of the national legislations of the countries-members of the EU (for example, in the field of copyright and related rights). In the second case the matter concerns the development and implementation of common tools of legal protection of intellectual property, acting on the entire territory of the EU. As such instrument may be mentioned, for example, a European trademark.
From the point of view of eliminating the identified barriers and taking into account the experience of the countries of the European Union, the attention of the proposal for the establishment of a regional trademark of the Common economic space. The establishment of such an institution will allow using a single application for a trademark obtains protection on the whole territory of the CES. Is currently discussing a draft Agreement on trademarks, service marks and appellations of places of origin of goods on the territories of the countries – members of the Customs Union and the CES, providing for the creation of a Single register of trademarks and service marks of the CES.
It is also interesting proposal on mutual recognition of trademarks previously registered in the countries-members of the Customs Union, with the spread on the trademarks provided by national laws and protection on the whole territory of the CES. In the event of a dispute between the right holders provided the opportunity to resolve disputes in a judicial procedure at the supranational level, which will exclude the possible violation of the balance of interests of all the parties.
Before the creation of the Customs Union, the right holders and official importers interested in protection of their interest’s customs authorities addressed a statement on the inclusion of trade marks in the customs register of objects of intellectual property (CROIP). Now, in accordance with the Agreement «On single customs registry of intellectual property of the countries – members of the Customs Union», in a common customs registry includes the objects of intellectual property, that subject to legal protection in each of the countries – members of the customs Union. Such innovation requires long and costly registration procedures and does not exclude conflicts in cases when objects of intellectual property in different national registers belong to different parties.
The formation of the Customs Union led to a change in perimeter of a common customs borders, increase of trade turnover and, consequently, to the increase of imports, including counterfeit products.
And here a serious barrier to the protection of the interests of the right holder upon import of the third parties of the goods on territory of the Customs Union was the lack of a simple and clear mechanism for the management of a Common customs registry of intellectual property objects.
In the Common customs register of intellectual property objects on the basis of the application of the right holder are included objects of intellectual property, subject to legal protection in each of the countries – members of the CU. However, there are no intellectual property objects at the moment registered in the register. According to some estimates the non-use of the suggested mechanism is due to the fact that right owners that have registered trademarks in only one of the countries of the CU deprived of the possibility to ensure the protection of their rights at the customs border.
The solution to this problem is possible at a more active use of the customs authorities of the principle of «ex officio», according to which customs bodies shall be entitled to suspend the release of goods containing objects of intellectual property, not included into the customs registry, in case of detection of signs of violation of intellectual property rights, and if the information on holder or his representative. Some of the right holders believe that nobody has the right to impose on the objects belonging to them any limitations, it is only necessary to notify them of the possibility of violation of rights. That is, to protect their rights, the right holder will in that case, if it considers it necessary, regardless of the opinions of the customs authorities. This point of view, of course, is convenient the copyright owner, but does not guarantee protection from counterfeit goods of the ordinary consumer.
Ensuring greater protection of the interests of the right holders it is also possible by means of creating in the framework of the Integrated information system of foreign and mutual trade of the Customs Union (the concept of creation of the integrated information system of foreign and mutual trade of the Customs Union was approved by the Decision No. 60 of the Interstate Council of the Eurasian economic community) subsystem, which allows copyright holders with the help of the developed software tools to identify facts of crossing of the customs border of goods containing belonging to them the objects of intellectual property. This will be the basis for preventive treatment of statements to the customs authorities. In addition, the detection of such facts will allow in the framework of the 3-year period of customs control, using circulation in the customs and law enforcement authorities, as well as the legislation on administrative offences, effectively curb the spread of counterfeit products on a common customs territory.
On the basis of the circle described above problems it is clear that in the sphere of intellectual property we have to solve a lot of tasks. Help with this would maximum compliance of legislation of the Customs Union norms of international law, the formation of a supranational judicial practice and the development of a well functioning of the Institute of supranational judicial bodies, which could resolve disputes of economic entities of the countries – members of the CU.
Formation of the civilized market of intellectual property is, of course, a lengthy process and now, perhaps, it is too early to speak even about the main trends. However, obviously, this process depends not only on elimination of the above-mentioned barriers and the availability of current practice on those or other questions, but also on the initiatives of all stakeholders. Including, from the initiative on the part of the legal community.