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Crimea: Protecting IP During Political Transition

09/2014

Due to the currently controversial and politically unstable situation between Ukraine and Russia, it is understandable that many governmental officials, intergovernmental organizations as well as citizens of both these countries are preoccupied with more emerging humanitarian-related aspects of the current events. However, being IP practitioners and evaluating the potential practical consequences of these for ourselves as well as for the trademark owners, we made a brief research on the current IP-related situation in the Crimea, so that the current trademark owners, the potential ones as well as our colleagues, IP practitioners from different countries, have the possibility to understand and evaluate relevant practical expectations.

Article 6 of the Treaty between Russian Federation and the Republic of Crimea of 18 March 2014 (the “Treaty”) establishes a transitional period starting from the date of the Treaty until 1 January 2015, for resolution of the issues associated with the integration of the Republic of Crimea and the Federal City of Sebastopol into the economic, financial, credit and legal system of the Russian Federation.

At the same time, Article 9 of the Treaty says that the Laws of Russia and Federal Regulations (including Russian IP Laws and Regulations) are valid on the territory of the Republic of Crimea and the Federal City of Sebastopol starting from 18 March 2014.

Thus, it is understood that the IP-related issues associated with the current status of the Crimea should be mostly resolved within the transitional period, i.e. before 1 January 2015, and in particular it refers to the legal status of the Crimean IP owners, and their IP objects, which used to be valid and enforceable on the territory of Ukraine, including the Crimea before 18 March 2014.

As regards the current IP status, it is clear that practically starting from 18 March 2014 Russian patents and trademarks are valid and enforceable on the territory of the Crimea, while Ukrainian patents and trademarks are no longer considered as valid or enforceable there. We believe that this situation may be considered as a practical status for the foreign patent and trademark owners.

It is understood among the practitioners that the issue of the collision of exclusive rights of the Crimean IP owners with the exclusive rights of the non-Crimean IP owners in Russia could be resolved on the basis of somewhat similar to what had been used during the integration of the Eastern Germany into the Western Germany in 1990. Thus, it is expected that it may be the case that the current exclusive rights of the Crimean and the non-Crimean Russian IP owners would be valid and enforceable on the entire territory of Russia, and in case of collision with the non-Crimean originated Russian exclusive right, the Crimean-originated one would be enforceable only on the territory of the Crimea, and vice versa.

On 21 July 2014 a new Federal Law was adopted amending the Law Adopting Part IV of the Russian Civil Code (Intellectual Property) providing that the Ukrainian registered IP of the Crimean owners may be converted into registered Russian IP before 1 January 2015 by filing relevant simplified application with the Russian PTO. Crimean patent, designs, appellations of origin or trademark applications filed in Ukraine before 18 March 2014 may also be converted into the Russian ones with keeping the priority dates of the Ukrainian applications. All these types of applications are to be considered and responded by the Russian PTO without the examination and free of charge.

In addition, it is provided that the “Crimean” trademarks cannot be invalidated on the basis of the prior Russian rights.

Finally, it is stipulated that the Crimean fair users of the invention patented in Russia keep this prior use right after 18 March 2014.

It is emphasized that the courts when hearing the trademarks disputes arising with the involvement of these “Crimean” rights may rule that the parties should use the trademark(s) or appellations of origin in a way that would rule out the confusion of the customers.

In the meantime the Russian PTO is currently accepting simplified petitions for confirmation of the Crimean exclusive IP rights that had been originally registered in Ukraine. It is anticipated that now as well as in the future no automatic extension of the original Ukrainian IP rights would take place – in every case an official confirmation of the Russian PTO would be required.

Authors

Bankovskiy Anton
Anton Bankovskiy
Partner
Moscow