True Or False? Design Protection In Russia And Eurasia

• Published date: 23 September 2022
• Subject Matter: Intellectual Property, Copyright, Patent, Trademark
• Law Firm: Gorodissky & Partners
• Author: Mr Evgeny Alexandrov and Viacheslav Rybchak

Based on numerous publications in the media one may conclude that the IP rights of foreign companies are no longer protected in Russia and existing IP rights will be unenforceable. Of course, this is not the case and it does not correspond to reality at all.

Intellectual property in Russia is not "cancelled" and there are no restrictions for foreign applicants in connection with the filing of applications for registration of designs patents, trademarks and invention patents, or for foreign right holders to perform actions to maintain protected intellectual property rights.

Most of misconception comes from wrong translation and wrong understanding of legal acts adopted by the Russian President and Russian Government during the first half of the year. Besides, the Office of Foreign Assets Control ("OFAC") of the US Department of Treasury added fuel to the flames since it de facto prohibited certain payments (taxes, fees, etc.) in favor of the Russian Patent Office as it involves the Russian Central Bank into transactions. The sunset provision was introduced by OFAC's General License 13 issued on March 2, 2022 which authorized such payments for a limited time through 12:01 a.m. eastern daylight time, June 24, 2022.

On May 25, 2022 OFAC issued a soothing new GL13A that replaced and superseded in its entirety GL13 and prolonged the authorization for payments by eastern daylight time, September 30, 2022, which, however, still creates uncertainty by establishing the said time limits.

In the meantime, the most promising GL31 was issued on May 5, 2022 by OFAC that specifically authorized transactions related to intellectual property, namely:

1. The filing and prosecution of any application to obtain a patent, trademark, copyright, or other form of intellectual property protection;
2. The receipt of a patent, trademark, copyright, or other form of intellectual property protection;
3. The renewal or maintenance of a patent, trademark, copyright or other form of intellectual property protection; and
4. The filing and prosecution of any opposition or infringement proceeding with respect to a patent, trademark, copyright, or other form of intellectual property protection, or the entrance of a defense to any such proceeding.

This new GL31 does not establish specific time limits for payments that indicates OFAC encourages business to take all necessary actions to register, maintain and protect their intellectual property rights in Russia.

The mentioned circumstances are especially relevant for the proper registration and protection of exclusive rights to designs because failure to timely filing of an industrial design application will result, in particular, to the loss of the opportunity to claim conventional...