Countermeasures against EU sanctions in the field of intellectual property

Proposals of the Intellectual Property Commission of the Association of Lawyers of Russia(AYUR) on countermeasures against EU sanctions in the field of intellectual property included in the 14th package of anti-Russian sanctions dated 06/24/2024

(Minutes of the meeting No. 8 dated June 25, 2024)

On June 24, 2024, the 14th package of EU sanctions entered into force, including new discriminatory measures in the field of intellectual property.

Previously, the application of the sanctions regime assumed that the European Patent Office (EPO), the EU Intellectual Property Office (EUIPO), the national intellectual property (IP) offices of the EU countries "freeze" all categories of patent applications from Russian individuals and legal entities that are included in the sanction’s lists, and organizations controlled by them from the moment of their inclusion to these lists.

 In the new package, the previously introduced sanctions measures in the field of intellectual property are significantly expanded and assume that Russian persons (individuals and legal entities and their beneficiaries in Russia and abroad) are deprived of the opportunity to receive protection of intellectual property objects (hereinafter - IPOs) in the EU under the national procedure and international registration systems, register the transfer / granting rights to already registered IPOs, receiving payments under contracts for the use of IPOs. At the same time, measures are proposed by the EU states to block the acceptance by the World Intellectual Property Organization (WIPO) of new applications for the legal protection of IPOs from Russian persons.

The measures taken by the EU are not provided for by international law and grossly violate the principles and norms of the main international treaties in the field of intellectual property, to which the EU countries are currently parties, for which the contracting parties cannot establish and require compliance with additional conditions other than those provided for in international treaties, including:

- The Paris Convention for the Protection of Industrial Property dated 03/20/1883, as amended. dated 02.10.1979 (art. 2 – national regime, art. 4.quater - patents, art. 6.quinquies – marks, art. 24 – territories and art. 25 – application within the national framework) and in accordance with art. 10.bis can be classified as unfair competition as "any act of competition contrary to honest customs in industrial and commercial affairs";

- Patent Cooperation Agreement (PCT) (on the establishment of the International Patent Cooperation Union) dated 06/19/1970 with amendments and additions. dated 03.10.2001 (art. 9 – applicant, art. 11 - date and consequences of filing an international application, art. 27 - requirements of national legislation), according to which States can apply measures to restrict the right to file international applications to ensure national security, or, based on basic economic interests, only apply to their own citizens or persons residing in this state;

- The Geneva Act of the Hague Agreement on the International Registration of Industrial Designs dated 07/02/1999 (Article 3 - the right to file an international application, Article 4 – the procedure for filing an international application, Article 10 - international registration, Article 17 – extension of international registration; Article 22 – international bureau);

- Singapore Treaty on Trademark Laws dated 03/27/2006 (art. 15 - obligation to comply with the Paris Convention, art. 17 and art. 18 - applications for registration and license modification, art. 24 – International Bureau);

- Protocol to the Madrid Agreement on the International Registration of Marks dated 06/27/1989 with amendments and additions 12.11.2007 (art. 2 - obtaining protection by international registration, art. 4 and art. 4bis – effect of international registration, art. 11 – international Bureau);

- Agreement on Trade-Related Aspects of Intellectual Property Rights" (TRIPS) dated 04/15/1994 with amendments. dated 06.12.2005 (Article 2 - conventions in the field of intellectual property, Article 3 – national regime, Article 4 – most favored nation regime).

The application of such sanctions measures is a gross violation of the national and most-favored nation regime, according to which a State party to an international treaty "provides citizens of other States parties with a regime no less favorable for the protection of intellectual property than that provided to its own citizens", and "any advantage, privilege, privilege or immunity that provided by the State to the citizens of any other country, immediately and, of course, provided to the citizens of all other members."

The application of sanctions measures discriminates not only against certain categories of applicants, but also countries participating in international treaties in the field of intellectual property, creates legal uncertainty not only for Russian applicants and copyright holders, but also for other users of national, regional and international systems of legal protection of IPOs.

These sanctions measures actually involve regulation by the EU authorities of the work of the International Bureau of WIPO, the misappropriation of its powers, which go beyond the competence of EU institutions and grossly violates the norms of Article 9 of the Convention establishing WIPO (dated 07/14/1967 as amended on 10/22/1979), and Article 15 of the Paris Convention for the Protection of Industrial Property.

In these circumstances, the AYUR Intellectual Property Commission proposes to consider the following proposals as differentiated countermeasures against EU sanctions included in the 14th package of anti-Russian sanctions dated June 24, 2024:

1. To inform the United Nations, the International Bureau of WIPO, the WTO about the gross violation by the bodies of the European Union of the principles and norms of international law in the field of intellectual property, exceeding their powers and another substitution of the application of international law by «an order, based on rules», established unilaterally in the interests of the countries of the «collective West».
2. To initiate, for consideration within the framework of the agenda of the 65th WIPO General Assembly (July 2024) and a closed meeting of experts within the framework of the Partnership Dialogue between WIPO and Non-Governmental Organizations (July 11, 2024), the issue of responsibility of EU authorities and EU countries (collective and personal) for gross violation of international law in the field of intellectual property property within the framework of the adoption and introduction of the 14th package of anti-Russian sanctions dated June 24, 2024.
3. To consider the expediency of a permanent transition to an international regime of exhaustion of exclusive rights in respect of all IPOs, taking into account the fact that international agreements to which the EAEU and CIS countries are parties do not restrict states in choosing the regime of exhaustion of exclusive rights. The introduction of a regime of international exhaustion of exclusive rights to IPOs used in imported goods that are essential for the internal market of the EAEU is a necessary and justified decision in order to ensure national competitiveness within the framework of Eurasian integration.
4. To support the measures proposed within the framework of eurasian integration to expand the list of objects of unified registration systems at the Eurasian Patent Office (EPO) (in addition to inventions and industrial designs – a single Eurasian utility model and trademark) and the composition of participants – subjects of the EAPO (Republic of Uzbekistan).
5. Considering the successful practice of establishing and operating in the Russian Federation and the CIS, respectively, since 2009-2017, the national and interstate technical committees for standardization "Intellectual Property" (TC 481 / MTK 550) with a secretariat based on the RNIIIS, on the basis of which the world's first national system of standards "Intellectual property" was created for the development of the economy and the intellectual property market, it is necessary to consider it necessary creation of the International Technical Committee (TC) "Intellectual Property" in ISO with the active participation of the CIS and BRICS countries in cooperation with WIPO.

In order to maintain the stable functioning of the WIPO global system, the granting of legal protection to intellectual property objects should be strictly based on the norms of international law, excluding any attempts to ignore these norms and encroach on the powers of the governing bodies of WIPO.