Adalyat Molotova Translator
January 2019
The present article written by Adalyat Molotova (Bolotov & Partners LLP, Republic of Kazakhstan, Almaty, Amolotova@bolotovIP.com) highlights general language requirements for filing documents with national patent offices for registration of trademarks, patents and licensing agreements in the CIS countries.
Keywords: Commonwealth of Independent States (CIS), national patent office, intellectual property object, trademark, language of document.
After the collapse of the USSR, the national patent offices of the CIS countries started to apply their own rules for the examination and registration of intellectual property objects and introduced their own requirements for the language of applications, drafting documents of title, assignment and license agreements, as well as for the language of correspondence with patent offices. Previously Russian language was widely used in all republics of the USSR. Paperwork in many CIS countries is still in Russian, however significance of national state languages is also growing.
In Kazakhstan, any documentation is prepared and correspondence is conducted in Kazakh or Russian, the differences concern only the deadlines for submission of translations from other languages. For example an application for registration of a trademark is submitted in Kazakh or Russian languages. At the same time, the list of goods and services that is submitted by a foreign company when applying for registration of a trademark can be submitted in English language and the translation should be forwarded to the Patent Office of the Republic of Kazakhstan within a month period. A power of attorney for filing an application for registration of a trademark can be filed in any foreign language and a certified translation into Kazakh or Russian is submitted within two months after filing of an application for registration of a trademark.
In order to renew the validity of a trademark certificate it is necessary to file a request in the Russian or Kazakh languages with the patent office. In case if such request filed through a patent attorney, a power of attorney in Russian or Kazakh is required. The translation of the power of attorney from any other foreign language, except Russian should be submitted to the Patent Office with a certified translation into Russian or Kazakh within 20 days from the date of filing the application.
The application to amend the address or name of a trademark owner is filed in Russian or Kazakh languages. A special document confirming the change of address is not required in Kazakhstan, it is sufficient to indicate a new address in the power of attorney; the patent office should be notified of a change in the name of an owner in the title document by a relevant extract from the State Register of Legal Entities. A certified copy of the first priority application of the country party to the Paris Convention for the Protection of Industrial Property is filed in Kazakh or Russian, translation of the first application from foreign companies can be forwarded within two months from the date of application.
Until recently all licensing agreements were drawn up in two languages: Kazakh and Russian. When Kazakhstan joined the Singapore Treaty on the Law of Trademarks this requirement became void. Presently these documents can be drafted in Russian or Kazakh languages.
Complex Business License Agreement (franchising) should be prepared in two languages. At the same time, a power of attorney from foreign companies to register this agreement through patent attorneys or representatives can be submitted in the original language with a mandatory translation which is submitted together with the application for registration. In order not to miss deadlines, it is recommended to prepare a translation of the power of attorney taking into account these requirements. It should be underlined that despite the legislative requirement to draft an agreement in two languages, its preparation only in Russian does not entail the invalidity of the agreement.
All correspondence of the Patent Office: Responses, inquiries, notifications of renewal, amendments and registrations is conducted in Kazakh or Russian depending on the language of the applicant. However, sometimes it is possible to receive a response in Kazakh language to a letter written in Russian. If the government forwards the letter first, there is an equal likelihood that the language of this letter will be either Russian or Kazakh, however lately the latter option becomes prevailing.
I would like to draw attention to procedure when filing of documents in Russian and Kazakh languages is required. Namely these documents are the oppositions to expert opinions related to trademark registrations in the Board of Appeals of the Ministry of Justice of the Republic of Kazakhstan. Opposition, power of attorney and materials of opposition should be submitted in Russian and Kazakh languages. Certainly professional translation applying the most precise terms relevant to each industry, even the most specific is one of the guarantees for the quick and obstacle free registration of trademarks and other intellectual property objects.
Peculiarities and features of document management in other countries of the post-Soviet zone. It should be noted that in addition to Kazakhstan, the Republic of Armenia, the Republic of Belarus, the Kyrgyz Republic, the Russian Federation, Tajikistan and Ukraine joined the Singapore Treaty as of 2018. This Treaty significantly simplified the requirements to the procedures, deadlines and languages for filing documents with patent offices of these countries and created more favorable conditions for applicants and trademark owners. Applications for trademark registration may be filed in the Russian or in the national language in Belarus, Kyrgyzstan, Tajikistan and Uzbekistan. In Azerbaijan, Armenia, Georgia, Moldova, Turkmenistan and Ukraine, applications for trademark registration are filed exclusively in national languages. In Russia, an application can be filed in any language of the Russian Federation (for example, Tatar or Chechen) with a mandatory translation into the Russian language. In Tajikistan and Turkmenistan, applications are filed in English, in addition to national and Russian languages.
A list of goods and services in the national language is filed with an application for the registration of a trademark in Armenia, Moldova and Russia. In Azerbaijan, Georgia and Ukraine, it is possible to attach to the application a list of goods and services in any foreign language, however translation should be submitted to the patent offices of these countries within two months. In Belarus, Kyrgyzstan and Uzbekistan it is possible to file a list of goods and services in Russian or national language. In Tajikistan and Turkmenistan, a list of goods and services is filed in Russian, English and national languages. In Turkmenistan, it is allowed to file a list in one of the languages with the mandatory submission of a translation into two other languages within two months from the date of application.
Correspondence related to trademarks with patent offices is carried out exclusively in the national language in Armenia, Georgia, Moldova, Russia, Turkmenistan and Ukraine. It should be noted that information on registration in Azerbaijan can be published by the patent office in Russian, and in Tajikistan, responses to requests from the office can be forwarded both in Russian and Tajik languages. Russian language is used along with the national language in Belarus, Kyrgyzstan and Uzbekistan.
The procedure for submitting power of attorney from foreign and local companies and deadlines for submitting translations. When applying to register trademarks in Armenia and Ukraine, power of attorney is accepted exclusively in the national language. In Georgia, Moldova, Russia and Turkmenistan power of attorney can be submitted in any language with a mandatory translation into the national language. It should be noted that in Moldova and Turkmenistan power of attorney from foreign companies are also submitted exclusively in the national language. However, a two-month period is provided in order to submit a translation into the national language. In Russia, despite the fact that the power of attorney can be filed in any language of the Russian Federation, a translation into Russian should be submitted when filing an application.
In Azerbaijan, Armenia, Belarus, Kyrgyzstan, Uzbekistan and Ukraine in addition to an application, a power of attorney in any language can be filed, however a translation into the national language should be forwarded within two months period. In Tajikistan, a power of attorney can be submitted in any language within a month period after the application is submitted and a translation should be forwarded within a two months period.
Renewal and amendment of a trademark registration. Applications for extending the validity of a trademark and applications for amending the address or name of a trademark owner are prepared in all the above countries as applications and powers of attorney for registration of trademarks with a few differences in terms of submission of translations.
In Armenia, Kyrgyzstan there is no need to submit a document confirming the change of address. The documents confirming the change of address are required in Belarus, Moldova, Russia, Turkmenistan, Uzbekistan and Ukraine. In all above countries it is necessary to submit an Extract from the State Register of Legal Entities evidencing change of name of an owner.
Registration of an assignment agreement on a transfer of rights to a trademark and a license agreement on the use of a trademark. Applications for registration of these agreements, as well as the agreements themselves are submitted in the national or Russian language in Belarus, Kyrgyzstan, Russia and Uzbekistan. In Armenia, Georgia, Moldova and Ukraine, applications and agreements are filed exclusively in the national language. An application is submitted in the national language to the Patent Office of Turkmenistan, however the agreement itself can be submitted in any language. Translation into Turkmen should be forwarded within two months from the date of application.
Given the permanent increase of trademark applications from companies around the world, quality translations remain highly required service. Exact and high-quality translation of documents ensures coordinated functioning and protection at all stages of the life cycle of an intellectual property object.
Language requirements for filing patent applications for an invention and utility model. In all countries, the application includes a statement, a description of the invention or utility model, drawings and other materials, the claims and an abstract. An application can be submitted in Russian or national language in Belarus, Kazakhstan, Kyrgyzstan, Tajikistan and Uzbekistan. Applications exclusively in the national language are accepted by the patent offices of Azerbaijan, Armenia, Georgia, Moldova, Russia, Turkmenistan and Ukraine.
A description of an invention or utility model, drawings and other materials should be submitted in the Russian language or in the national language upon filing or within two months from the filing date in Belarus, Kazakhstan, Kyrgyzstan and Uzbekistan. It should be noted that in Kyrgyzstan the translation of the name of invention or utility model and claims into the national language is obligatory. In Kazakhstan, it is also necessary to provide a translation of the name of an invention or utility model into the national language. Translations can be submitted in Georgia, Moldova, Tajikistan and Turkmenistan within three months from the filing date of an application. Documents are accepted exclusively in the national language in Azerbaijan and Ukraine. Documents in English or Russian are allowed to be submitted In Armenia, however translation into the national language is a must.
Power of attorney to patent attorneys or other representatives should be attached to an application. Power of attorney is accepted in any language with obligatory translation into the national language in Azerbaijan, Armenia, Georgia, Moldova, Russia and Turkmenistan. The term for the provision of translations of power of attorney is three months. The power of attorney with a translation into the national language should be submitted at the moment of filing in Ukraine. Power of attorney can be submitted to patent offices in Russian or in the national language in Belarus, Kazakhstan, Kyrgyzstan, Tajikistan and Uzbekistan
Term for submission of translated documents in the national language can be extended subject to additional official payment. The term for submission of translations can be extended to six months in Georgia, Moldova and Kyrgyzstan. Three months are provided in Russia, Tajikistan and Turkmenistan; the applicants have two months in Azerbaijan, Kazakhstan and Ukraine.
Certified copies of convention priority applications are submitted in any language with translation into the national language in Azerbaijan within two months, and in Armenia, Moldova, Tajikistan, Turkmenistan and Uzbekistan within three months from the filing date of an application. The translation of convention priority application into Russian or the national language can be submitted in Kyrgyzstan within four months, in Belarus within six months.
In Kazakhstan convention priority application is submitted in the original language without translation within six months from the date of application. In Moldova and Ukraine, the priority application is submitted within three months, however in Ukraine, the patent office may require a translation into the Ukrainian language. In Russia, it is possible to submit a convention priority application in the original language with a translation of bibliographic data within 16 months from the filing date of the first application in the country of origin.
Application for a patent for an industrial design. An application procedure in the countries under consideration usually consists of filing of an application, a set of images or photographs and a description of an industrial design. In some countries, a list of essential features of an industrial design, a general drawing and a map are required.
Applications are filed with patent offices in Russian or in the national language in Belarus, Kazakhstan, Kyrgyzstan, Tajikistan and Uzbekistan. The patent offices of Azerbaijan, Armenia, Georgia, Moldova, Russia and Turkmenistan accept applications only in the national language. In Kazakhstan, the documents do not include a list of industrial design features. The remaining documents are submitted in Russian, Kazakh or another language, the translation should be submitted within two months from the date of filing. In Kyrgyzstan, Tajikistan and Uzbekistan, the remaining documents are submitted in Russian or national language. In Kyrgyzstan, a list of industrial design features should be translated into the Kyrgyz language.
In Russia, a set of images is required when applying. The remaining documents are submitted in any language with the translation into Russian within three months from the filing date, except for the list of essential features, which is not part of the documents. In Armenia, Georgia, and Turkmenistan, the rest of the documents are submitted in any language with a translation into the national language submitted upon filing or within three months from the filing date. In Azerbaijan, documents are also filed in any language with the presentation of translations within two months from the filing date.
In Ukraine, the remaining documents can be submitted in any language with the presentation of a translation into Ukrainian at the time of filing or within two months from the filing date of the application. In Moldova, the submission of a description and a list of features of an industrial design are not required. In Belarus, in addition to the above documents, it is also not required to present a drawing of a general view of an industrial design.
In the patent offices of Armenia, Russia, Tajikistan, Uzbekistan and Ukraine, certified copies of the convention priority applications for industrial designs are submitted with translation into the national language within three months, six months provided in Azerbaijan and four months in Turkmenistan from the filing date. A certified copy of the priority application together with a translation into Russian or Kazakh can be submitted to the patent offices of Kazakhstan within six months from the filing date. In Belarus, no translation of a certified copy of the priority application is required.
Conclusion: The Russian language is widely used in Belarus, Kazakhstan, and Uzbekistan and documentation can only be submitted in the Russian language. In Kyrgyzstan and Tajikistan, Russian is used along with national languages; however it is still necessary to submit translations of some documents exclusively in the national language.
Patent offices of Azerbaijan, Armenia, Georgia, Moldova and Ukraine accept applications and conduct paperwork exclusively in national languages. In Tajikistan and Turkmenistan, it should be taken into account that in addition to the Russian and national languages, applications and requests should be also submitted in the English language.
It should be underlined that in all countries the submission of documents and translations is carried out within the timeframes provided for by national legislations, which in most cases are set and observed very strictly by relevant patent offices.
P.S. We express our gratitude to the patent attorneys our colleagues and correspondents from the above countries for the information and advice provided.
The article is for reference only. For more information, please contact us at info@bolotovip.com.
Bibliography:
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- A.P. Kolesnikov. Handbook on Intellectual Property Issues. (Vol. 3, revised and supplemented). - Moscow: INITS of Rospatent – 2005 - 320 pages.
- Intellectual property. Tutorial - Moscow: Lawyer - 2009- 364 pages.
- S.A. Sudarikov. Intellectual Property Law. Tutorial. - Moscow: Prospect - 2010- 386 pages.