IP in Crimea: an update

Few readers of this weblog can have read the unfolding drama of recent events in the East of Ukraine and in the Crimea without a sense of deep concern and foreboding.  News and commentary on the political and military dimensions of these events are extensively covered elsewhere, on both the traditional and the social media. There is also an intellectual property aspect to the annexation of any territory by a foreign power, and it is that which weblog is best able to convey to its readers.

In this context the following information, lightly edited, has been circulated by the IPKat's friends in the leading Ukraine law practice of Arzinger:

"IP IN THE LIGHT OF THE UKRAINE/RUSSIA CONFRONTATION 

...  On 5 May 2014 the Federal Service for Intellectual Property (Rospatent) stated the following: IPR objects that are protected in Ukraine will obtain protection in Russia only where the rightholders of those IPR objects file an application to the Federal Service for Intellectual Property (Rospatent) on recognition of the exclusive IPR to the IPR object within the Russian Federation. The essential conditions thereof are the following: 

• an applicant shall be a resident of Crimea or have a permanent location there;
• a certificate of IPR to the trademark or a patent must be valid as of 18 March 2014 and a duly translated version of such protection document shall be attached to the application. 

Taking into consideration the fact that trademarks are high-usage IPR objects elsewhere, we would like to present the outlook for the consequences of such an initiative for “Crimean trademarks”. 

...  the category of widely known trademarks such as “Inkerman”, “Novyy Svet”, “Magarach”, “Massandra”, “Koktebel” of wine makers or “Oreanda”, “Intourist Yalta” in the sphere of hotel business, are under protection in the Russian Federation. Besides, lots of local cafes, supermarket chains, hotels and even petrol stations are used to operate exclusively within the territory of Crimea without any designs to work up the Russian market. Thus, there has not been any need to obtain relevant protection in the Russian Federation. However, now the rightholders of such trademarks must file an application for recognition of the exclusive IPR to the IPR object within the Russian Federation. 

Despite this, there will be a lot of pitfalls even in the case of re-registration. The most prominent one is a “clash of trademarks”. The risks are rather high that the “Crimean trademark” will be considered as identical or similar to those trademarks which are also protected in the Russian Federation and consequently challenged before the court of the Russian Federation. Here are possible variants of obtaining trademarks protection in such cases: 

• to establish the right of prior use in the courts of Russia;
• to conclude license agreements with right holder. For implementation of the present solution the government of the Russian Federation may set forth preferential terms of obtaining such license which, for instance, could be valid only on the territory of Crimea. 

In addition, those Crimeans who desire to obtain protection in the Russian Federation for a new trademark should bear in mind that in the Russian Federation a trademark can be registered only in the name of natural person-entrepreneurs and legal entities. We cannot consider this matter to be good or ill. Anyway, we assume that trademarks with a natural persons as an applicant will be invalid in Crimea as well as in Russia. 

On April 15, 2014 the Parliament of Ukraine adopted a law “On legal guarantees of people’s rights and freedoms on the temporarily occupied territories of Ukraine”. Pursuant to the provisions of the Law the temporarily occupied territory is an integral part of the territory of Ukraine and subject to the Constitution of Ukraine as well as Ukrainian legislation. 

Nevertheless, we should take into consideration the current situation and be guided exclusively by a need to protect the IPR. Nowadays the trademark protection obtained in Ukraine is not enough for trademark protection in Crimea in practice. Thus, the rightholders from the continent part of Ukraine who intend to continue running business in Crimea are walking on a razor's edge, because at any time Russian rightholders may prohibit the use of confusingly similar trademarks of Ukrainian rightholders in Crimea if the trademark is not protected in Russia. Therefore, the relevant solution is to apply for protection in Russia either through national or international procedure of trademark registration. 

Taking into account the abovementioned we may conclude that now the rightholders from Crimea shall be doubly attentive to protection of their IPR. Otherwise, the consequences can cost them a lot of time, money as well as the other resources for IPR enforcement and protection".

The IPKat thanks Arzinger for this information. Readers who require more than this are advised to approach Arzinger or any other appropriately IP-sensitive legal practice in Ukraine for further guidance.  This Kat has not yet received any information, corroborative or otherwise, from any IP practice in the Russian Federation.

Merpel adds that, where politics, conflicting nationalisms and military conflict cause waves of uncertainty, even something as ostensibly trivial as the stability of brand names can provide a degree of comfort and security for those poor souls who did not cause the troubles, who have no personal means of resolving them and who are often most adversely affected by them.