Category: News

Many trademarks may include non-protectable elements, which describe the type of goods these marks are used for, their characteristic or purpose. In Russia, it is possible to disclaim such elements, excluding them from overall protection of the mark. But what of marks that consist entirely or almost entirely of description of goods? The Russian legislation offers a solution in view of a “protectable combination” of unprotectable elements, which specifies that in some cases such elements can form a unique composition that can be distinctive for consumers.

One of the most common examples of combination of unprotectable elements is a label, which often includes many necessary indications of the goods it is intended for. Usually, distinctive color choice and presence of some original elements is enough for the Russian Patent and Trademark Office (Rospatent) to recognize the label as protectable, but is some cases the process of obtaining protection can become more tricky.

In one such case, the Russian PTO refused the registration of the combined trademark under trademark application No. 2021731850 submitted by “Savencia SA” for goods categorized as “cheeses.” According to Rospatent, certain elements of the trademark — including the verbal elements “Supreme,” “French soft cheese,” and “Incredibly creamy taste,” as well as a realistic depiction of cheese — indicate the product’s origin, the manufacturer’s location, and the nature and quality of the goods. Thus, these elements, including those that are laudatory, do not warrant protection. Since the non-protectable components dominate the trademark, registration was deemed unfeasible.

However, “Savencia SA” was set on defending its rights, first appealing the refusal decision at the Chamber for Patent Disputes, and then, in turn, at the IP Court.

While the applicant did not contest the unprotectability of the verbal element “Supreme,” the company argued that the distinctive font style, its angular placement within the trademark, and specific color choices allow it to be recognized as a distinctive composite element, qualifying it for potential exclusion from protection. The company also concurred with Rospatent’s assessment that the verbal elements “French soft cheese” and “Incredibly creamy taste” lack distinctiveness.

At the same time, “Savencia SA” emphasized that the trademark functions as a label — a particular category of trademark defined by its overall composition, which can exhibit distinctiveness even if it comprises several or all unprotected elements individually. Consequently, the company requested legal protection for the trademark in its entirety, omitting the verbal elements from protection.

The first instance court supported the Rospatent’s decision, but ultimately, the Presidium of the Court of Intellectual Property Rights ordered Rospatent to register the trademark under trademark application No. 2021731850, excluding the depiction resembling the flag of France, and recognizing the verbal elements “Supreme,” “Incredibly creamy taste,” “French soft cheese,” and the cheese image as unprotectable. In this scenario, the oval shape, font style, stylized depiction of a crown, the arrangement of elements, the color palette, and the portrayal of cheese as a partially sliced product collectively create a distinctive impression and form a unique composition.

The example of the label filed in the name of “Savencia SA”, which is currently registered in Russia under No. 1037204, shows the worth of fighting for protection even when Rospatent is insisting on the refusal. Local lawyers armed with solid knowledge of the legal foundation and up-to-date practice will be the best companions on this journey.

Mongolia stands out as a rapidly developing market, representing significant opportunities for both East Asian and Western Pacific regions. With an annual economic growth rate exceeding 5%, the country’s economy is primarily driven by mining and agriculture.

Strategically located near major markets like China and Russia, Mongolia benefits from ongoing railway development that is poised to reshape its economic and industrial landscape. This infrastructure will connect Mongolia to the seaports of the Yellow Sea in China, granting the nation access to global markets.

As Mongolia continues to attract foreign investment and expand its industrial base, protecting intellectual property in this jurisdiction is becoming increasingly important. The country offers a straightforward and cost-effective IP registration system, with relatively low official fees.

Early registration of intellectual property rights empowers businesses to avert unauthorized use, deter counterfeiting and establish legal grounds for enforcement in case of infringement.

For businesses in sectors such as mining, renewable energy, agriculture and technology, Mongolia presents growing opportunities, making IP protection a key step in securing long-term market presence.

For any inquiries related to IP in Mongolia, please do not hesitate to reach out to us at info@patentica.com.

Sega Corporation, a well-known Japanese video game producer has entered in an agreement with a Russian businessman Pavel Baskakov to settle a series of lawsuits for non-use cancellation of the Corporation trademarks, protected under both national and international registrations. Baskakov had sought to challenge the status of the famous “Sega” logo trademark (RU 199647), as well as related trademarks of the Corporation and its affiliated entities, such as Sega Racing Classic, SegaPrize, and others.

The Intellectual Property Court in Russia accepted Baskakov’s withdrawal of three lawsuits against Sega Corporation and Sega Sammy Corporation on November 13, 2024. The parties reached an out-of-court agreement to wind up all legal actions. It is not unusual for parties in cases of this kind to reach a consensus during actual litigation. While most are settled through pre-trial negotiations, due to a strictly timed procedure of filing a non-use cancellation lawsuit, these negotiations often continue during litigations and end in settlement agreements, approved and published by the IP Court. In this particular case, both parties considered each other’s interests and chose to resolve the issue outside of court.

Disputes over trademark cancellations can be complex if the owner decides to stand its ground, which is quite common for notable trademarks and their prominent owners. Concerning the case in question it must be noted that even if Baskakov had succeeded in canceling trademarks of the Corporation, there was no guarantee that he would have been able to register these or alike trademarks for himself. The Russian Patent Office could have rejected his trademark applications on the grounds of consumer confusion. This is most possibly the main reason behind the agreement, which demonstrates a willingness to find a peaceful resolution to the legal disputes, avoiding the costs associated with prolonged and multiple litigations. Within such a complex and multi-layered discipline as intellectual property, where much depends on assessing actual circumstances and opinions, one can seldom be absolutely sure in his claims or objections, especially with regards to trademarks. Hence, a mediation or other out-of-court settlement option should be always considered by a wise litigant.

At the end of 2024, as the year comes to a close, it is time to reflect on the past year, analyze the results achieved, and make plans for the upcoming year.

Patentica company expresses gratitude to each of its clients for their trust, valuable experience, and challenging tasks that contribute to our growth. We are thankful for the feedback and recommendations to colleagues, which are highly valued by us. We are committed to making your experience working with us productive, comfortable, and seamless, and we strive to exceed your expectations in the coming year.

Looking ahead to 2025, we anticipate further advancements in artificial intelligence, cloud technologies, and their integration into our daily lives. With the increasing volume of data and the need for rapid processing and deriving insights from it, these technologies play a crucial role. Similarly, the development of artificial intelligence, blockchain, and the metaverse presents complex challenges related to the protection and ownership of digital assets and innovations, necessitating legislative changes. As intellectual property specialists, we remain at the forefront of such developments to address these challenges and provide solutions for our clients.

Furthermore, we foresee a surge in innovations focused on renewable energy, waste reduction, and eco-friendly solutions, as the world shifts towards sustainability. We are excited about the potential for positive change and progress in the new year.

Patentica extends heartfelt wishes for a joyous New Year to all. May the coming year be filled with discoveries, the realization of dreams, positive experiences, and personal growth, both spiritually and materially.

In 1995, the Eurasian Patent Convention (EAPC) was established to create a unified patent space, simplifying and reducing the cost for inventors to obtain a patent across multiple countries simultaneously. Under the EAPC, a regional system for legal protection of inventions has been now developed, based on prosecution of applications in the Eurasian Patent Office.

Presently, there are 8 countries that are signatories to the Eurasian Patent Convention: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russia, Tajikistan, and Turkmenistan, that have a total population of more than 210 million that are covered by EA patents for inventions. Besides inventions EAPO now also granting patents for industrial designs, and starting 2025 Turkmenistan will join other seven EAPC countries in acceptance of the EA patent for industrial designs.

Notably, five of the EAPC countries: Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia are also member states of the Eurasian Economic and Customs Unions, which provides a direct link between IP protection in the region and economic and customs regulations.

As regards obtaining EA patent for an invention, the core of the Eurasian Patent System lies in the issuance of a regional patent, based on just one application filed with the Eurasian Patent Office (EAPO), which holds validity in all member countries’ territories simply upon payment of renewal fees.

As of 2023, the processing times for Eurasian patent applications have continued to decrease: the average time for a first action stands at 8.91 months (compared to 10.94 months in 2022), while the average duration of application review by the Examiner is 3.19 months (down from 5.32 months in 2022).

Other benefits of obtaining a Eurasian patent through this procedure, as opposed to pursuing national patents in individual EAPC countries, include:

– The need for single patent application to obtain a Eurasian patent across the eight member states, eliminating the requirement for multiple national filings and independent examinations in each country;

– The harmonization of the patenting process within the unified patent space established by the Eurasian Patent Convention, removing the need to navigate specific legislations of member countries;

– Cost competitiveness as compared to multiple national filings;

– Utilization of a single language for all submitted documents;

– The option to submit a Eurasian application in electronic format;

– The same Eurasian patent attorney can represent the applicant throughout the patent prosecution procedure;

– The EAPO offers expedited examination services for Eurasian applications, allowing for a quicker issuance of a Eurasian patent for an invention.

If you have any questions or need our assistance in obtaining IP protection through EAPO, please do not hesitate to contact us at info@patentica.com.

Olga Gribanova and Eduard Shablin of Patentica were in attendance at the 76th Asian Patent Attorneys Association Council Meeting (APAA 2024) in Manila, Philippines from November 18 to 21, 2024.

The event brought together intellectual property professionals from various industries and sectors around the world, offering a valuable platform for collaboration, knowledge exchange, and networking. It showcased the shared expertise and dedication to advancing the field of intellectual property.

One of the conference’s highlights was the opportunity to stay updated on regulatory changes and procedural advancements, including strategies for expediting examination processes across multiple jurisdictions. These insights underscored the importance of adaptability and proficiency in navigating the rapidly evolving global IP landscape.

The Asian Patent Attorneys Association (APAA) is a non-governmental organization committed to promoting and strengthening intellectual property protection in the Asian region with over 2,500 members.

Attending such events enables our specialists to gain invaluable insights into numerous legal aspects of business protection across different countries.

Dear colleagues, we would like to inform you about the weekends and holidays in 2025 that will impact the workflow at the Eurasian and Russian Patent Offices.

When submitting applications and communicating with the Patent Offices, it is crucial to consider non-working days and any corresponding transfers to ensure accurate deadline calculations and prevent missing important dates:

– if deadlines fall on weekends or non-working days, they will be transferred to the first following business day;

– if Saturday is considered a business day and a deadline falls on that day, documents shall be submitted on Saturday without any transfers.

It is important to note that certain missed deadlines cannot be restored or may require the payment of additional fees for restoration. Thus, it is advisable to meet all deadlines, but if any are missed, please contact us to determine if restoration is possible.

The non-working days in 2025 that will impact the Eurasian and Russian Patent Offices are:

January 1-8 (New Year holidays from December 29 to January 8)

May 1-4

May 8-11

June 12-15

November 2-4

December 31

Additionally, there will be shortened pre-holiday business days on:

March 7 (Friday)

April 30 (Wednesday)

June 11 (Wednesday)

November 1 (Saturday)

We recommend considering these dates when preparing and submitting applications, responses to Office Actions, and other actions related to safeguarding your intellectual property.

We monitor and remind our clients of impending deadlines to ensure they are not overlooked.

Maria Nilova and Nikolai Kovkov from Patentica recently participated in the AIPLA 2024 Annual Meeting at the Gaylord National Resort and Convention Center in National Harbor, MD. This three-day event included Committee Business Meetings, CLE (Continuing Legal Education) panels, Skills Workshops, and social events focused on promoting learning, networking, and collaboration among IP professionals worldwide.

The meeting featured discussions on various aspects of IP law, such as:

– Updates on the Unified Patent Court;

– Trademark Counterfeit Enforcement;

– March-In Rights Under the Bayh-Dole Act;

– Copyright preemption / Website and social media scraping;

– Design Patent law;

– Harmonization, Patent Litigation, and DEI in IP.

The American Intellectual Property Law Association (AIPLA) is a national bar association made up primarily of practitioners in private and corporate practice, government service, and the academic community. AIPLA represents individuals, companies, and institutions involved in patent, trademark, copyright, and unfair competition law, as well as other fields affecting intellectual property.

Maria Nilova and Nikolai Kovkov from Patentica recently took part in the LES USA-Canada Annual Meeting from October 20 to October 23, 2024. This event is a key gathering for professionals working in the fields of intellectual property, licensing, and technology transfer. This year’s meeting brought together more than 500 attendees from all corners of the globe.

The four-day conference showcased over 30 panel sessions and 15 roundtable discussions. The topics covered a wide range of issues, including utilizing the International Trade Commission for IP enforcement, branding, IP ownership in Life Sciences, Life Sciences spinouts, data usage in complex SEP licensing, the U.S. manufacturing requirement of the Bayh-Dole Act, utilizing Big Data for R&D improvements, negotiation strategies, common licensing pitfalls, content tailored for Emerging Leaders, career guidance for newcomers to the licensing field, and cutting-edge topics in AI, cross-industry partnerships, brand valuation trends, litigation finance, and the latest legal and legislative updates from both the U.S. and Europe.

Founded in 1965, the Licensing Executives Society (U.S.A. and Canada), Inc. (LES) is the largest of 32 global affiliated international societies under the umbrella of LES International (LESI). LES boasts a membership of over 1,600 professionals, while LESI has more than 6,500 members who are all dedicated to the creation, development, and transfer of intellectual property rights, as well as the protection, management, and standardization of intellectual capital.

On October 9, a meeting of the Advisory Committee on Intellectual Property under the Board of the Eurasian Economic Commission (EEC) was held. The main purpose of the Eurasian Economic Commission is to ensure the conditions for the functioning and development of the Eurasian Economic Union (EAEU), to develop proposals for the further development of integration.

Ernar Bakenov, Director of the Department for the Development of Entrepreneurship of the EEC, reported that in 2023, 5.8 million counterfeit goods were identified in the Eurasian Economic Union countries. He also noted that the leading positions in counterfeiting in the EAEU member states are occupied by clothing and footwear, games and toys, car parts, food products, alcoholic beverages, household appliances and electronics, accessories.

A number of analytical documents were submitted for consideration by the Committee participants, including statistical indicators from 2019 to 2023. The documents include an analytical review for the last five years with proposals for the development of the intellectual property sphere within the Union and recommendations for improving the legal framework in the states, as well as a report on monitoring law enforcement practices in the field of protecting intellectual property rights in the EAEU countries for 2023.

These documents will be published on the official website of the EAEU.

The meeting considered the practice of providing legal protection for information constituting production secrets (“know-how”) in the EAEU countries, the specifics of implementing the Treaty on Trademarks, Service Marks and Appellations of Origin of Goods of the Union.

The Committee participants also discussed the launch of a unified customs register of intellectual property objects, the formation of coordinated approaches to combating violations of intellectual property rights on the Internet, and the creation of a search service for industrial property objects protected in the EAEU states.

The Russian Patent and Trademark Office has issued clarifications regarding some typical questions on the new Statute on Fees, effective in the Russian Federation from October 5, 2024.

1. Payment of fees for patent maintenance

Under the new Statute, patent maintenance fees are paid in five-year increments. The fee for the first five-year period shall be paid alongside the registration, publication, and issuance fees. Fees for each subsequent period are due during the last year of the previous five-year period or within an additional six-month grace period at a 50% surcharge.

This new payment procedure also applies to patents issued before October 5, 2024.

If part of the maintenance fee has been paid for an incomplete five-year period, the remaining amount shall be settled during the year of the patent’s validity for which the patent maintenance fee has already been paid, or within the additional six-month grace period.

2. Payment of fees during the transition period

Many applicants may face confusion as to whether to pay the new fees, or follow the previous rules.

Generally, the due fee amount is to be determined by the date of receipt of the relevant document (application, request, objection).

For example, a patent application filed on October 1, 2024 requires payment based on the Statute on Fees effective that day (i.e. the previous version). An electronic filing qualifies for a 30% discount. The same will be true for any patent, utility model, industrial design or trademark application filed on or before October 4, 2024.

If a request for substantive examination on a patent application is submitted on December 6, 2024, i.e. after the new Statute on Fees takes effect, the fee will follow the Statute on Fees as amended, and no discount will apply.

For the registration, publication, patent and certificate issuance with respect to inventions, utility models, industrial designs, and trademarks, the due fee amount is determined by the payment date.

However, if a payment notice specifying the required amount had been sent to the applicant before the amendments came into force, the fee shall be paid as indicated in the payment notice. Such payment notice, for example, is usually included into trademark registration decisions.

If the fee is paid incorrectly before October 5, 2024, the applicant shall make an additional payment up to the amount valid on the date of the first payment.

3. Fee Privileges for Applicants

The list of applicants eligible for fee privileges has been expanded.

For example, fee privileges are available for groups of applicants that are small businesses, accredited educational institutions, or scientific organizations.

Mixed teams of applicants (e.g., a pensioner and an individual entrepreneur) can also receive privileges, allowing the group to benefit from the maximum fee reduction applicable to any member. Previously, mixed teams were not eligible for such privileges.