The European Commission Updated FAQ on EU Sanctions, Concerning Intellectual Property

29 September 2022
Elizaveta Gromova
Legal Trainee
Boris Malakhov
Partner

On September 8, 2022 the European Commission Updated FAQ on EU Sanctions, Concerning Intellectual Property.

According to the FAQ the following measures apply to designated persons:

  • EU State authorities cannot authorize use of exclusive rights of designated persons (and its affiliates) under both international and national applications (e.g. registering contracts for the disposition of rights)

  • Provision of funds and other economic resources (e.g., royalty payments) to designated persons is prohibited; in turn, EU entities must not provide intellectual property to designated persons

  • IP Offices of EU and Member States can’t register intellectual property rights of designated persons (and its affiliates);

  • IP Offices of EU and Member States should publish information that intellectual property rights are under sanctions and “frozen”, but information about these intellectual property rights remains on the register;

  • Registration actions in respect of the intellectual property rights are suspended and “frozen”;

  • Patent search reports or written communications to designated persons should not be sent;

  • Publication of applications for trademarks of designated persons should not be made;

  • Suspension of requests for changes to the registry and trademark certificates of designated persons, if such request result in receiving funds, goods or services;

  • IP Office must refuse an international trademark application within time period applicable under Article 5(2) of the Madrid Protocol;

  • Exclusive rights may be renewed if they remain “frozen”. Payment for renewal of registration is out of the list of prohibited transactions;

  • Protection of intellectual property rights in courts and IP Offices is allowed, but due to prohibited of money transfers compensations should not be paid to the designated persons;

  • EU citizens and legal entities can pay fees to the IP Offices in Russia and Belarus, as these offices are not yet subject to sanctions;

  • Restrictions also apply to applications for registration of geographical indications.

Therefore, EU sanctions make registration of new intellectual property rights merely impossible and suspend registration actions with respect to existing intellectual property rights, while maintenance and protection of existing intellectual property rights is still possible.