Features of protection of rights of Russian holders of rights to objects of industrial property in the EU

The material is prepared with use of legal acts as of 14 March 2011
Bar association Customs & Corporate Lawyers

Like all objects of intellectual property, industrial property rights inherent in the territorial nature of the protection of the rights of these assets (territoriality principle). In accordance with the principle of legal protection of intellectual property is only within national jurisdiction, and the state has the right not to recognize the intellectual property rights that have arisen within the legal order of another state. Thus, it was under the protection of industrial property territorial nature of action is most severely, since the right to industrial property arises by virtue of the registration process and special protection document, not by virtue of creating an object, as provided in the Copyright Act. Therefore, to industrial property to be protected in the territory of another state, it is necessary to carry out the registration process is in the state where it will be used.

It should be noted that due to the progressive increase in the integration processes at the regional level, as well as the emergence of international agreements of universal nature, the principle of territoriality has been used in various forms. Now you can talk about the extension of the principle of territoriality is not only one state, but for a whole group of states is a single subject of international law (European Union). Therefore, in this case, the principle of territoriality appears in regional protection of intellectual property.

The legal framework of the European Union (EU) to protect the rights of legal owners of intellectual property are: the universality of the international agreements (Paris Convention for the Protection of Industrial Property, the Madrid Agreement Concerning the International Registration of Marks et al.), The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), as well as supranational EU legislation and national law states of the European Union.

Protection of the rights of intellectual property can be expressed in several ways to provide protection to the objects under consideration. Firstly, the primary control in the sphere of protection of intellectual property by the customs authorities when goods cross the customs territory of the State (if any import). Subsequent control carried out on the domestic market of the State in order to detect signs of violation of the legislation in the field of intellectual property, which is carried out by authorized state bodies (customs, police, bodies of market surveillance, and others.).

In order to get the appropriate legal protection of an object of industrial property in the European Union, Russian copyright holders need to pass a certain procedure of registration of rights to intellectual property. Due to the fact that the Russian Federation is a party to most international agreements in the field of intellectual property are several possible options.

In the case of registration of the trademark, the Russian owner can take advantage of the Madrid System for the International Registration of Marks, based on the Madrid Agreement Concerning the International Registration of Marks of 1891 and the Madrid Protocol in 1989. The above-mentioned international agreements, the Madrid Union, which includes 85 states and the territory of which the holder may obtain legal protection of a trademark by filing a single international application through the national office to the International Bureau of WIPO. Such a system certainly has a number of advantages. Firstly, it is possible to obtain trademark protection in a large number of states on the basis of a single application, but not to file separate applications with individual national offices of the various languages. There is no need to pay a fee in each State, the payment occurs at the same time, when filing an international application. Also worth noting is that the changes in the registration data holder may make by filing a single application. Thus, it is possible to obtain protection in all four countries of the European Union, quoting the subject of international law in the application or select individual countries within the EU.

The European Union has created a unified regional system of protection of trade marks - a single brand of the European Union (community trade mark). Registration of a trademark of the European Union shall be effected by filing a single registrar - Office for Harmonization in the Internal Market (The Office for Harmonization in the Internal Market). In this case, a registered trademark receives legal protection throughout the EU. However, using the European unitary system of registration, the applicant must be prepared for a possible denial of legal protection of the mark throughout the EU, if one of the national authorities refuse to provide protection.

Consequently, the applicant is invited to make a choice between the systems of international and regional trademark registration, while also remains the possibility of treatment in each of the national authorities for the registration of trademarks in particular. The choice in favor of a system may depend on the personal preference of the applicant and he needs to scale territorial validity of protection to an object of intellectual property, as well as the size of the prescribed fees for carrying out the registration procedure.

In the area of patent protection also created special unified filing system at the international and regional levels. In 1970 he was awarded the international Patent Cooperation Treaty (PCT), which creates a simplified and more cost-effective system for obtaining protection for inventions in several states. PCT allows to seek patent protection for an invention simultaneously in each of a large number of countries by filing a single application instead of filing several separate national or regional patent applications. In the case of filing an international patent application under the PCT conducted an international search and preliminary examination of the application in order to establish the potential patentability of the invention. However, the granting of patents remains under the control of national or regional patent offices, that is, the decision to issue the national or regional patent taken Patent Office with the existing features of national procedures (appointment of local attorneys, payment of fees, etc..).

European Patent Organization was established on the basis of the European Patent Convention of 5 October 1973. In accordance with the above-mentioned Convention was established unified regional procedure for applying for a European patent. The application is filed in a single registration center - the European Patent Office, in which shall be considered. Based on the above European Patent Convention may be requested for one or several states. At the same time issued a European patent has the same effect and is subject to the same conditions as a national patent. That is, on the basis of the above, an obvious effect on the level of a regional patent two parallel systems, which in a certain way complementary. However, the intermediate position in the development of patent law is preceded by a large-scale reform, which should result in approval of the project regulation in the adoption of a single EU patent, which in turn will have an absolute effect on the entire territory of the European Union.

At the moment, the Russian owner may use the procedure for grant of the European patent, stating the countries in which protection is sought, or use a separate application to the national patent offices. It is worth noting that when applying to the European Patent Office, the applicant does not have a permanent residence or principal place of business in a Member State must submit their rights through a European patent attorney that can directly touch the Russian citizens.

Also worth considering is the fact that all countries - members of the European Patent Convention are both members of the Patent Cooperation Treaty, therefore, a European patent may be sought through the above procedure PCT. However, there are several problems associated with the use and protection of the rights protected by the European patent. Thus, according to the European Patent Convention, the production of the European Patent Office is conducted in one of the three official languages (English, French and German), which leads to the grant of a patent and publication of the granted patent is also one of the official languages of the above. Hence the right holder to the European patent was valid in the territory of States not having as official languages of the above, it is necessary to carry out the translation of the patent into the official language of the State where it will be protection, which is associated with additional material costs.

Also in accordance with the Convention under consideration resolution of patent disputes conducted in the national proceedings of the Member States, as the system of European patent courts have not been established. This situation gives rise to conflicting jurisprudence in homogeneous cases, as well as to situations where individuals and legal entities have to defend its intellectual property rights in several EU member states simultaneously.

At the moment, realize the protection of rights to use industrial designs Russian applicants can only one way - by filing separate applications for registration of industrial designs directly to each patent office or the interests of the state of integration association (the European Union). Consequently, to obtain legal protection for industrial design in the EU, the applicant must submit an application to the Office for Harmonization in the Internal Market, which itself carries out the entire registration procedure. This situation is due to the lack of participation of the Russian Federation in the Hague system of international registration of industrial designs, which gives the owner of an industrial design the possibility of obtaining protection in several countries by simply filing an application with the International Bureau of WIPO, in one language, and pay one set of fees.

TRIPS Agreement sets out the basic terms and sets minimum standards for the protection of the rights of intellectual property, which allows you to draw certain conclusions about the degree of protection of rights holders in the EU. The TRIPS Agreement provides full protection of all major industrial property, as well as establishes the basic principles for States to apply the necessary procedures (civil, administrative) and judicial remedies for the protection of the rights of intellectual property, which should be timely, fast, efficient, and also equal for all and fair.

For subsequent systemic regulation of the TRIPS Agreement in the European Union 29 April 2004 adopted Directive of the European Parliament and Council Directive 2004/48 / EC on the Enforcement of Intellectual Property Rights.

In this Directive a number of individuals who are eligible to apply for the use of protective measures and measures of responsibility. These include: the rights holders and other persons having the right to use intellectual property rights, collective organizations managing intellectual property rights, organizations engaged in professional protection of intellectual property rights. Also directive specifies the possibility of applying protective measures at the request of another person having a direct interest or "legal relationship".

Important provisions laid down in the directive in question is a legal consolidation of a certain kind of security measures that apply before the start of court proceedings and may have a detailed description of the counterfeit goods (with the withdrawal of samples with or without) and seizure of such goods. Also included in the directive to rule on preliminary and preventive measures, which allow the court to issue a judicial act, aimed at preventing infringement of intellectual property or termination of rights violations continue. This judicial act may also include a prescription similar to the Russian Institute of security for the claim, which the court may require the provision of certain guarantees for the payment of compensation to the right holder. Moreover, the directive laid out a mechanism for preventing the use of provisional measures in order to unfair competition. So, if within a reasonable time after the application of interim measures the applicant did not initiate filing a case in court, which should resolve the issue of infringement of intellectual property on the merits, according to the second side of such measures expire.

Also in this Directive and in the TRIPS Agreement established the advantage of using civil remedies and criminal liability for infringement may be provided in the national legislation of States and should be used only for deliberate acts committed on a commercial scale, where the protection of civil rights legal order is difficult.

Thus, we can conclude that in the framework of the European Union established and properly functioning modern legal system to protect the rights of intellectual property, which can be fully available to the Russian holder, with proper registration of their rights on the same territory of the European Union and in some states - its members.
Bar association Customs & Corporate Lawyers