Russian PTO Issues Clarification on Revocation Procedures for Non-Use of Trademarks

Jul 21 2009 - 14:19

Due to the lack of clear criteria, see our May article, the Russian PTO has recently issued a list of guidelines in order to clarify what constitutes sufficient interest for filing a request for trademark revocation due to non-use.

According to the current Russian IP legislation, only interested third parties may file a revocation request against a registered trademark that has not been used in Russia for the goods or services it was registered for.

The Russian PTO determines sufficient and legitimate interest on a case-by-case basis, examining all presented evidence according to the following criteria.

  1. Only persons that can legally apply for a trademark can file revocation requests. The following can register trademarks in Russia: legal entities (both commercial and non-commercial), and self-employed persons.

  2. Patent attorneys, lawyers and any physical persons providing legal services or authorized to act on behalf of third parties are not considered to have legitimate interest.

  3. The mere fact of filing a revocation request and paying corresponding official fees is not considered a proof of legitimate interest.

  4. The mere fact that the applicant filed a trademark application that is confusingly similar to the trademark that is being revoked is not considered a sufficient proof of legitimate interest.

  5. The purpose of the mandatory use of trademarks is to protect those who have expended time, effort, ingenuity and money to disseminate a mark and build up goodwill in relation to it. Accordingly, the following categories of persons may be considered to hold legitimate interest:

• Producers of goods and services labeled with the trademark that is being
revoked, provided that they have a bona fide intention to use the mark in
Russia.

• Holders of the company’s name (commercial and non-commercial
organizations), which is identical or confusingly similar to the mark that is
being revoked, if these companies provide the same services or produce and
commercialize identical or similar goods to the goods and services covered
by the trademark that is being revoked.

• Legal entities and self-employed persons that are proprietors of commercial
designations that are confusingly similar or identical to the mark that is being
revoked, provided that those persons undertake their commercial activities in
relation to the goods and services that are identical or similar to the goods
and services protected by the trademark that is being revoked.

• Owners of the similar or confusingly similar trademarks registered for similar
or identical goods and services in other countries, provided that they intend
to expand geographical scope of the protection of their marks to the territory
of the Russian Federation.

The Russian Chamber of Patent Disputes (CPD) will analyze submitted documents to determine whether parties exhibit sufficient interest. If the party filing a revocation request fails to submit sufficient proof of legitimate interest, the revocation request will be rejected by the CPD.

For more information, please contact Alissia Shchichka in our Brussels office.

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