Consolidated FAQs on the implementation of Council Regulation No 833/2014 and Council Regulation No 269/2014 [Version of 14 March 2023]

The European Commission (EC) has published an updated consolidated version of its FAQs on the implementation of Council Regulation No 833/2014 and Council Regulation No 269/2014 in the light of the ongoing conflict in Ukraine. The consolidated version includes FAQs concerning EU sanctions „adopted following Russia’s military aggression against Ukraine“.
THE UPDATE INCLUDES THE FOLLOWING CHANGES:
Section „SECTOR SPECIFIC QUESTIONS“, topic 11 „INTELLECTUAL PROPERTY RIGHTS“:
a) Modified Question: (page 337) Should EU and Member State intellectual property offices suspend the registration or the registration of transfer of IPRs held by persons and entities designated under Annex I to Council Regulation (EU) 269/2014?
A: Economic resources of persons and entities designated under Annex I to Council Regulation (EU) 269/2014 (designated persons) must be frozen. The use of economic resources to obtain funds, goods or services in any way must be prevented. More over, it is prohibited to make available economic resources to or for the benefit of designated persons.
b) New Question: (page 338) Should applications for registration of new IPRs by persons listed in Annex Ito Council Regulation (EU) No 269/2014, or persons owned or controlled by them, be accepted by intellectual property offices?
A: No. Applications for registrations of new IPRs entail the creation of new rights for the benefit of the applicant. Hence, they qualify as making economic resources available to listed persons, or persons owned/controlled by them. As such, they should be rejected.
c) Modified Question: (page 340) With regard to applications for IPR registration filed by designated persons or entities before the date of inclusion in Annex I to Council Regulation 269/2014, should EU and Member State intellectual property offices complete the examination phase and not register the IPR, or should the examination phase be suspended immediately? In the case of patents, can the search report and written opinion be forwarded to the applicant? In the case of trademarks, is it possible to publish trademark applications for the purpose of opposition proceedings?
A: Once the IPR applicant is identified as one of the sanctioned individuals or entities listed in Annex I of Council Regulation (EU) No 269/2014, all steps of the procedure of the examination should be immediately suspended to guarantee that no economic resources are made available to, or for the benefit or persons or entity and the type of IPR involved (patent, trademark, etc.)
d) Modified Question: (page 340) Should EU and Member State intellectual property office suspend the renewal of, invalidate or revoke registered IPRs owned or controlled by persons and entities designated under Annex I to Council Regulation (EU) 269/2014?
A: PRs can be renewed, provided they remain frozen (see Question 1). They do not have to be invalidated or revoked, unless so required according to the procedures provided for in the EU or Member State law (e.g. cancellation procedure under Article 29 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 (EU Trademark Regulation). See also Question 8.
e) Modified Question: (page 342) Could a designated persons or entity initiate, participate in or continue opposition/invalidity procedures, acting as applicant?
A: EU and Member States intellectual property offices should suspend the initiation of new opposition procedures by a designated person or entity, the participation therein or the continuation of pending opposition/invalidity proceeding, unless these proceedings are necessary to preserve an already granted right.
f) Modified Question: (page 343) How should “payments” received by EU IP law firms to lodge/represent a Russian or Belorussian IPR’s owner be treated? Does it make a difference if the IPR’s owner is designated under Annex I to Council Regulation (EU)269/2014? Should the EU and Member State intellectual property office refuse fee payments for registration or renewal?
A: Council Regulation (EU) No 269/2014 prohibits EU operators from making any funds or economic resources available to persons designated under Annex I to it, directly or indirectly. In principle, and by way of example, an EU business is not allowed to sell or deliver products or services to those persons, even if in exchange for adequate payment.
g) New Question: (page 344) Is the provision of legal advisory services to Russian companies for the purpose of assisting in administrative or judiciary court proceedings on IPRs permitted pursuant to Article 5n(6) of Council Regulation (EU) 833/2014?
A: The provision of legal advisory services to Russian companies is permitted under Article 5n (6) of Council Regulation (EU) 833/2014 if this is strictly necessary to ensure the access to judicial proceedings, as well as administrative proceedings such as those initiated or pending before the EUIPO, EPO or Member States’ Intellectual Property Offices, under the conditions indicated in this Section and Section G.8, Provision of Services.
h) New Question: (page 344) Is the licensing of IPRs for the use in relation to dual use goods or advanced technology that are subject to certain restrictions under Council Regulation 833/2014 prohibited?
A: Yes. By way of example, Article 3(2)(a) of Council Regulation 833/2014 prohibits EU companies to, inter alia, provide ‘other services’ (than technical assistance and brokering services) related to goods and technology listed in Annex II, whether or not originating in the Union, to any persons in Russia or for use in Russia.
i) New Question: (page 345) Is the licensor incorporated under the jurisdiction of a Member State, responsible if its licensee uses the licensed IPRs on dual use goods or advance technology in breach of Council Regulation (EU) 833/2014?
A: According to Answer to Q.24, Section D.2 of the Russia Sanctions FAQs “it is for the EU Company to ensure that the provision of services in question is not related to the sanctioned good or to the provision, manufacture, maintenance and use of this sanctioned good.
j) New Question: (page 346) What is the impact of Article 5aa of Council Regulation 833/2014 on IPRs and IPR holders?
A: First and foremost, see in this respect Section G.5 of these Russia Sanctions FAQs. Article 5aa prohibits to directly or indirectly engage in any transaction with:
– a legal person, entity or body established in Russia, which is publicly controlled or with over 50 % public ownership, or in which Russia, its Government or Central Bank has the right to participate in profits, or with which Russia, its Government or Central Bank has other substantial economic relationship, as listed in Annex XIX;
– a legal person, entity or body established outside the Union whose proprietary rights are directly or indirectly owned for more than 50 % by an entity listed in Annex XIX; or
– a legal person, entity or body acting on behalf or at the direction of an entity referred to in point (a) or (b) of this paragraph. The term transactions must be interpreted broadly and encompasses the prohibition to engage in any trade with the targeted persons, such as paying licensing fees and grant new or renewal of licences of IPRs. It also prohibits for intellectual property offices to accept new applications, register transfer of property or licenses, register new IPRs, accept any applications for cancellation or opposition.
k) Modified Question: (page 346) Can applications for Geographical Indications (GIs) be granted if one or more applicants are designated under Annex I to Council Regulation (EU)No 269/2014 or owned/controlled by them?
A: No. As confirmed by the Court’s recent case law (judgment of 14 July 2022, Commissionv Denmark, Case C-159/20, ECLI:EU:C:2022:561, paragraph 54), protected designations of origin (PDOs) and protected geographical indications (PGIs) are protected as an intellectual property right by the relevant EU legislation, according to which a scheme for PDOs and PGIs is established in order to help producers of products linked to a geographical area by ensuring uniform protection of the names as an intellectual property right in the territory of the European Union.