Russian Trademark FAQ: 2020 Cheat Sheet

Aug 3 2020 - 13:16

PETOŠEVIĆ Russia team member, Trademark Attorney Pavel Seleznev compiled a list of the most frequently asked questions regarding trademark protection in Russia, and completed it with a set of concise and useful answers covering everything from the registration process to appeals and invalidations.

Are trademarks protected in Russia by use or by registration, and how do I get my marks protected?

Trademark protection is obtained through a registration procedure. The use of the trademark in trade is not a prerequisite for its registration. Russia is a first-to-register jurisdiction. There is no requirement of “intent to use”, like in the US.

What can be registered as a trademark?

Almost any distinctive sign can be registered, including words, images, colors, 3D shapes, sounds, scents and any distinctive combinations thereof.

Are multi-class applications allowed?

Yes, a trademark may hypothetically be filed in respect of all 45 classes of the Nice Classification of goods and services.

Is joint ownership of trademarks possible?

Joint ownership is unfortunately not available in Russia. There are only two ways to establish the joint ownership and each has its pros and cons:

  1. Joint ownership of a collective mark

Russian trademark legislation allows for the conversion of a trademark into a collective mark at any time throughout its validity term. A collective mark may be owned by an established association of producers of goods and the holder of the original trademark must be a member of this association. The association must elaborate the collective mark bylaws specifying the list of enterprises entitled to use the mark, the purpose of trademark’s registration, list of goods and services covered, a description of common characteristics in terms of quality, conditions of trademark use, the methods to control this use, a description of conformity to the rules, and the sanctions for violation of these rules. The bylaws must be filed with the IPO, which then considers the application for conversion of the trademark into a collective mark.

Owning a collective trademark has its downsides and in fact may be regarded as quite burdensome. First, a collective mark cannot be assigned or licensed to a third party. Next, the owner association cannot grant consent for the registration of similar marks by third parties. Finally, any amendments to the bylaws must be recorded with the IPO.

  1. Joint ownership of a legal entity

This may be a more attractive option and it offers more freedom in terms of the disposal of trademark rights. In this case, the intended co-owners form a third entity in any jurisdiction in the world (some restrictions may apply), together as shareholders or partners of another kind, and assign the trademark to this entity. This allows the co-owners to evenly spread the shares as they like in any proportion. Furthermore, because the trademark remains a regular mark, it can be assigned or licensed – any kind of disposal is possible.

Is a trademark search necessary?

It is advisable to conduct a trademark search to learn about the possible obstacles to the registration in terms of third parties’ prior rights.

How does the registration procedure work?

A trademark application passes a two-stage examination. Once the application materials and the paid examination fee amounts are approved during the formal examination, the substantive examination is conducted, including the search of prior registered trademarks and prior applications. It usually takes 6-7 months to obtain a grant decision.

What kind of a Power of Attorney is needed for trademark prosecution?

A simply signed form will suffice. Actually, the IPO does not request the submission of a Power of Attorney along with the application, but it may be requested in the course of the examination. Responding to office actions relating to international trademarks, informal observations against third party’s marks, as well as recordations and any sort of appeals always require a simply signed PoA.

Examination

What is the difference between the absolute and relative grounds for refusal to register a trademark?

Absolute grounds for refusal relate to the essence of the mark and general legal framework for trademarks in Russia, while the relative grounds relate to the potentially conflicting prior exclusive rights of other parties.

I have received a watch notice and would like to oppose a third party’s application. Is it possible?

The Russian IPO publishes new applications for information purposes only and not for opposition purposes, but this does not mean that opposing a new trademark application is impossible. There is the option of addressing the examiner in charge with a letter informing them of a possible conflict and filing a subsequent invalidation action. These letters are known as “informal observations”. Even though the examiner is not bound by them, they often serve the purpose of impeding undesired marks.

I have received a provisional refusal from the Russian IPO – what should I do?

The response to an office action or a provisional refusal must be filed within six months from the date the document was issued. The failure to submit a response will result in the final decision on the application taken without considering the applicant’s opinion. The response to an office action or a provisional refusal can only be filed through a licensed Russian trademark attorney.

I have received a provisional refusal requesting a disclaimer which I do not mind. Do I have to respond to it?

It is possible to leave this provisional refusal unanswered. The ex-officio disclaimer will follow after six months and the mark will be protected as a whole, with the disclaimer indicated. However, to expedite the procedure it is useful to file a response. In this case the final decision will be issued within 30-45 days from filing the response.

Does the Russian IPO accept letters of consent from the owners of prior registered similar marks?

Consent letters are accepted in general, however the examiner is not bound by them and the final decision is still at his/her discretion. Consent letters are not accepted in respect of identical marks and collective marks.

I have filed a word mark in standard characters and the IPO has cited a prior registered combined mark containing the same word. Can this citation be overcome by arguments of dissimilarity?

The Russian IPO considers word elements of combined marks as dominant, because they form the essence of the mark’s distinctiveness, so if the word elements coincide or if the degree of their similarity is relatively high, the newly filed mark will most likely be rejected. However, there is no uniform rule and it is possible to argue dissimilarity.

Can a personal name be registered as a trademark?

Personal names can be registered as trademarks unless they contain the names of famous persons or characters. In such cases the IPO may request a permission from that person or their lawful heirs, or from a copyright holder in the case of a famous character.

I have registered my trademark in many countries – can this be an argument to overcome citations in Russia?

The Russian IPO will not accept multiple registrations in other countries as an argument for the mark’s registrability in case of existing prior rights of others. The same applies to descriptive or otherwise unregistrable marks – the local rules will always prevail.

Appeals and Invalidations

Can I file an appeal to the examiner’s decision to reject my application?

It is possible to appeal the examiner’s decision with the Chamber of Patent Disputes (CPD) of the Russian IPO within four months from the date the decision was issued.

I don’t have a registered trademark in Russia, but I became aware that someone registered the same mark. Are there any options to oppose it?

Russian legislation provides for invalidation of bad-faith registrations.

It is also possible to oppose a trademark that was obtained in the name of the trademark holder’s agent in one of the Paris Convention member states.

I own a registered trademark in Russia and would like to oppose a similar newly registered third party’s mark. What should I do?

The Russian law allows for an invalidation procedure before the CPD within the first five years from the conflicting trademark’s publication date in case of relative grounds, and at any time throughout its validity term in case of absolute grounds. Invalidation is also possible on unfair competition grounds – these cases can be brought before the specialized IP Court or the Federal Antimonopoly Service at any time throughout the contested mark’s validity term.

Non-Use of Marks

Can a trademark be cancelled for non-use?

There is a three-year grace period for the owner of a trademark to begin its use in Russia. Failure to do so would allow “interested parties” to challenge the mark for non-use. The procedure involves a two-month mandatory cooling-off period that must be initiated by the potential plaintiff by sending a warning pre-trial letter to the trademark owner. After this, a cancellation action can be filed with the IP court.

How do I prove that someone has not used their mark for three years?

The burden of proof is on the owner of the contested mark. The plaintiff does not have to produce any proof of non-use.

How do I qualify as an “interested party” in a non-use case?

Proving the legitimate interest of the plaintiff in a non-use cancellation action is a substantial part of the proceedings, and the adverse party may try to disqualify the plaintiff on the lack of interest grounds (lack of standing). Running a business in respect of similar goods and services as well as having filed an application for a similar trademark almost always fit the requirements for an “interested party”.

Will the contested mark be cancelled partially or in whole in case no proof of use is produced?

The mark can be cancelled partially (or in whole), depending on the goods and services of the plaintiff’s interest, as well as in respect of similar goods and services.

Can a non-use cancellation result in a boomerang bad faith claim?

The plaintiff must qualify as an “interested party”, so this automatically disallows any bad faith claims.

Recordations

I have moved to a new address. Do I have to record a change of address?

Under Russian legislation, trademark owners are obliged to record changes of name and/or address, but it is not specified when exactly this needs to be done.

The recordation of a change of name or address will require the documents that can prove this change. It is easier for trademark holders from Singapore Treaty member states – only a fresh Power of Attorney is needed.

I’ve had enough, I now want to sell my trademarks and forget all that! Do I have to register the transfer of rights?

Any disposal of exclusive rights, be it assignment, license or franchise, must be registered with the IPO and comes into effect only upon registration. Therefore, the answer is yes – contact your Russian attorney to find out which documents will be needed in your particular case, and only then book your tickets and fly to your paradise island.

For more information, please contact Pavel Seleznev at our Russia office.

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