How to Register a Trademark in Russia – a Quick Guide
Although Russia has gone through numerous political crises throughout its history, it still remains a desired market for many. Indeed, post-Soviet times have forged several generations of avid consumers who make the Russian market appear as deep and fertile as a Siberian oil well. This phenomenon makes Russia attractive to many producers in a vast variety of businesses.
So, what does it take to register a trademark in Russia?
It takes time. However, it must be admitted that the Russian Intellectual Property Office has improved in this regard during the last several years and that now applicants do not have to wait for more than a year for the examination to complete — most applications are processed within six or seven months from their filing dates. Formal examination has become rather quick and may result in an official acceptance within a month, given that all the fees have been paid. Substantive examination is less predictable in terms of time frames, but improvements have been noticed recently.
It takes money. That said, the official fees in Russia are relatively low compared to neighboring countries of the former Soviet Union. A single class application costs less than EUR 500 (USD 565) from filing to registration, which is inexpensive indeed.
It also takes patience and understanding of how the examination process goes in Russia, which is where we would like to slow down for a little more detail.
The Russian IPO is a “full-service” office, which means that the focus is not only on absolute grounds for refusal; a search of prior registered marks is conducted and conflicting marks can be cited.
The IPO does publish new applications, usually within a week from the filing date, but for information purposes only and not for opposition. This however does not mean that opposing a new trademark application is completely impossible. There is an option to address the examiner in charge in a letter informing them of a possible conflict and the subsequent invalidation action, and asking them to consider rejecting the application. These letters are called informal observations, and even though examiners are not bound to act on them, they often serve the purpose of impeding undesired marks.
The first thing that any business or counsel has to bear in mind while considering trademark protection in Russia is the specificity of the common Russian consumer. In general, Russians do not speak English or other foreign languages. The overall level of English is ranked in the 48th in the world, right behind Guatemala and Belarus, and it ranks in the 28th place among 33 countries in Europe. This means that in most cases applicants may need to protect the Russian equivalent of the trademark as well. Deciding what exactly this equivalent should be can be rather tricky. Prima facie, a translation would work, but what to do with marks that cannot be translated? And why protect translations if semantically they represent the same word? This requires a brief explanation.
There are obvious cases when the basic mark is so simple and comprehensive that it is not necessary to protect its Russian equivalent – certain words are international due to their origin (be it Latin, ancient Greek, or else) or extensive use. In such cases, the basic mark would suffice and provide the brand with the full scope of protection.
When will a simple translation not work or not be obvious? First of all, there are many polysemic words that have multiple meanings and that therefore can be translated in multiple ways. It is convenient if the correct meaning can be inferred from the trademark’s context, but often it cannot. It is even more complicated with complex words and personal names. This is why some applicants chose to protect as many Russian versions of the trademark as they can.
There is no one solution, and the approach to this problem varies from case to case. However, in general, the applicants may want to choose equivalents that cover the Russian phonetics and at the same time steer clear of any unnecessary connotations. Your Russian attorneys should know how to deal with this issue, and it should be actually considered when conducting trademark searches.
Getting back to the examination – the western world may view the Russian IPO as rather old-fashioned because of its trademark examination process, and this is not surprising since most of the world tends to let the public and the market decide which trademarks should exist and which should not. The rigorous evaluation of all the factors and grounds for refusal often creates the impression that the Russian IPO was designed to reject rather than to accept. The grounds for refusal can be:
- Basic lack of distinctiveness;
- Similarity to official and/or recognized names, images, signs, emblems and other symbols;
- Contradiction to accepted moral principles;
- Contradiction to public interest; and
- Relative grounds related to third-party rights.
The first four refusal grounds are common in every modern trademark law. It is just important to note that abbreviations are often refused, especially if they consist of consonants only – in such cases, the acquired distinctiveness will most likely have to be proven.
What is interesting is the IPO’s approach to morality and public interest. Most rejections on this basis are related to marks for alcoholic beverages. Although Russia is the second largest alcohol market in the world, the Russian IPO seems to be very critical when examining trademarks intended for alcoholic drinks – a simple star device mark was once refused for being contrary to public interest because of its possible association with Kremlin stars, installed in the 1930s on five towers of the Moscow Kremlin. The examiner even mentioned the Kremlin being on the UNESCO World Heritage List to emphasize that a star device mark would be contrary to public interest and would require a special permission from the Kremlin administration.
Contradiction to public interest is also often used to justify the refusal of applications for trademarks intended for cryptocurrencies. Although the status of cryptocurrencies in Russia is still uncertain, they seem to be outlawed by the Russian IPO – all recent applications for such trademarks have been refused.
Relative grounds for refusal include objections concerning third-party rights. Some of these third party rights are within the scope of the examination and some go beyond. For example, it is unlikely for an examiner to cite a trade name or company name as grounds for refusal, even though they are within the scope of relative grounds for refusal according to the law, unless the examiner is notified by the holder of such rights. Also, the citation of a company name as an obstacle to a similar trademark registration may be overcome if the examiner does not provide the full scope of relevant arguments, including the company’s registration data and additional information about the business.
Russian legislation also provides for a special status of a well-known trademark. Trademarks are recognized as well known through a special procedure before the IPO’s Chamber of Patent Disputes (CPD). We know it is a somewhat misleading name, but this is how it is commonly referred to. Although Russian trademark legislation allows for broader protection of well-known trademarks (not only in respect of the goods for which they are well known), during the examination they will most likely be cited only in respect of such goods.
Any examiner’s decision may be appealed before the CPD, but the CPD rarely overturns examiner’s decisions. Only a few appeals were successful in 2020, while dozens have been considered.
It is also possible to challenge a registered trademark – Russian law allows for an invalidation action on relative grounds within the first five years from the trademark’s publication date and on absolute grounds at any time throughout its validity term. Invalidation actions based on relative and absolute grounds can be lodged with the CPD. A trademark can also be invalidated on unfair competition grounds – such cases can be brought before the specialized IP Court or the Federal Antimonopoly Service at any time throughout the trademark’s validity term.
The CPD also tends to keep the examiners’ decisions in force in case of invalidation actions, so it may be more effective to tackle conflicting marks with informal observations at the examination stage. However, this current tendency of the CPD has evolved over time and it may be expected to change in the future.
Finally, there is a three-year grace period for the trademark owner to begin using the trademark in Russia. Before bringing a non-use action to court, there is a mandatory two-month cooling-off period that must be initiated by the potential plaintiff by sending a warning pre-trial letter to the trademark owner. The plaintiff also has to qualify as an interested party in respect of certain goods or services, and this would allow them to cancel the challenged mark only in respect of those goods and/or services, as well as similar ones, while the rest of the trademark’s scope of protection may remain valid.
By: Pavel Seleznev
For more information, please contact Pavel Seleznev at our Russia office.
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