By Bartosz Fert (ECTA International Trade Committee Vice-Chair)

The Council of the EU has recently adopted the next set of sanctions in view of Russia’s escalating aggression against Ukraine and other actions undermining the territorial integrity, sovereignty, and independence of Ukraine.

The sanctions entered into force on 7 October 2022 and will have a direct implication on IP legal practitioners.

In particular, it is prohibited to provide, directly or indirectly, legal advisory services to legal persons, entities or bodies established in Russia (article 5n of the Council Regulation 833/2014). According to the preamble of the Council Regulation 2022/1904, these services shall be interpreted as:

‘provision of legal advice to customers in non-contentious matters, including commercial transactions, involving the application or interpretation of law; participation with or on behalf of clients in commercial transactions, negotiations and other dealings with third parties; and preparation, execution and verification of legal documents.

It does not include any representation, advice, preparation of documents or verification of documents in the context of legal representation services, namely in matters or proceedings before administrative agencies, courts or other duly constituted official tribunals, or in arbitral or mediation proceedings.’

Practitioners rendering such services are advised to consult the exceptions listed in the article 5n of the Council Regulation 833/2014 and the applicable law of the EU member state implementing this Regulation. Special attention should be given to any services rendered outside the legal representation, such as trade mark screening or drafting legal opinions in IP matters.

It appears that these new sanctions do not stop European practitioners from representing Russian entities before National Courts, IP Offices or the EUIPO in trade mark prosecution/maintenance matters, which would also include opposition or cancellation actions. However, legal opinions not directly linked to judicial or administrative matters are forbidden. In this sense, one may question the ability for IP practitioners to perform a trade mark search on behalf of a Russian entity or conduct out of court litigations or sign a coexistence agreement.

In case of doubt, it is strongly advised to refer the matter to the competent professional organization to which the practitioner is affiliated.