Europe - 14th EU Sanctions Package Prohibits new IP Filings by Russian Nationals and Companies
With the 14th Sanctions Package, which entered into force on June 24, 2024, the EU has introduced a prohibition on the acceptance, by EU and Member States' intellectual property offices and authorities, of applications for registration of trademarks, patents, industrial designs, utility models, protected designations of origin, and geographical indications filed by Russian nationals or natural persons residing in Russia, or by legal persons, entities or bodies established in Russia.
The prohibition also applies to applications by several applicants where one of the applicants fulfils the above criteria. It does not apply to nationals of an EU member state or of a country of the EEA or of Switzerland, or to natural persons having a temporary or permanent residence permit in an EU member state, a member state of the EEA, or Switzerland.
The new Sanctions Package also prohibits the EU and Member States' IP offices and authorities from accepting requests or submissions filed by Russian nationals or natural persons residing in Russia, or legal persons, entities or bodies established in Russia, during the registration procedure of the abovementioned IP rights.
Furthermore, the EU member states are directed to use their best efforts to ensure that the European Patent Office as well as WIPO do not accept applications for any of the above-listed IP rights by the above-defined group of persons.
However, as explained in the European Commission's FAQs on the 14th Sanctions Package, existing registered IP rights will not be cancelled.
The new Sanctions Package also expands the so-called "no-Russia clause" for Intellectual Property Rights (IPR) transfers, to ensure that industrial know-how transferred outside the Union is not used to manufacture Common High Priority (CHP) goods intended for Russia.
To this end, when selling, licensing or transferring IP rights or trade secrets or granting rights to access or re-use material or information protected by IP rights or as trade secrets related to CHP items, natural and legal persons, entities and bodies shall be obligated to contractually prohibit, as of 26 December 2024, their third-country counterparts, and require them to prohibit possible sublicensees of such IP rights or trade secrets, from using these IP rights, trade secrets or other information in connection with CHP items that are intended for sale, supply, transfer or export, directly or indirectly, to Russia or for use in Russia.