Russia Elaborates Procedure for Informal Observations Regarding Company and Trade Names
The possibility of tackling a newly filed application in Russia has been and still remains the subject of many queries as there is no proper opposition procedure available before the Russian IPO against pending trademark applications. IP practitioners have always been advised to challenge pending applications with informal observations, which are not binding, but nevertheless often serve the purpose of impeding undesirable filings.
With a recent memorandum of the Russian IPO dated June 10, 2020, informal observations have become slightly more formalized if the newly filed trademark is similar to an existing company name or trade name. While Russian trademark legislation provides for challenging a trademark on the grounds of similarity with a prior company name, IPO examiners have never paid much attention to this provision. Also, the Russian IPO does not conduct searches for conflicting company and trade names during the examination process. The recent memorandum now elaborates the means of challenging a pending trademark application under the existing provisions.
Unlike invalidation actions, which can only be lodged by interested parties before the IPO’s Chamber of Patent Disputes (CPD), the memorandum explicitly states that informal observations can be filed by any person. The observations must be filed during the conflicting application’s examination, i.e. before the examiner reaches a final decision.
The principles of determining the similarity of a company name to a trademark are the same as those which generally apply during the trademark examination process. Only the distinctive part of the company name will be taken into account, and all other indications, such as a “limited liability company”, will be disregarded.
As provided by Articles 2 and 8 of the Paris Convention, “nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals”. This means that both Russian and foreign companies will have the right to challenge trademark applications if the trademarks are similar to their company names in Russia – according to Article 8 of the Paris Convention, “a trade name shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark”.
It is important for the company name to have been registered before the priority date of the challenged application, which must be proven by a company certificate, company register extract, or another relevant document, depending on the company’s jurisdiction. The company must also legally exist on the observation filing date.
The company name must be used in Russia in connection with a business activity similar to the goods or services listed in the conflicting trademark application. The nominal or putative use of a company name will not be considered as a reason to cite the company name as an obstacle to registering a trademark.
The rights holder must provide evidence of the company’s relevant activities in Russia. However, this may not be needed in case the company name is known worldwide, which must be proven.
The same conditions apply to trade names that are not subject to registration but are used to individualize businesses and may also be represented graphically or as combined designations.
Observations however remain informal – the memorandum stipulates that the examiner is not bound by the information provided in the observation and will not request additional documents if the observation is not convincing or if it lacks evidence. The examiner is even free to leave the observation unanswered — however this rarely happens.
Informal observations are becoming an attractive option when challenging pending trademarks, particularly compared to invalidation actions filed before the CPD, which tend to support examiners’ decisions and thus make it difficult to successfully challenge registered trademarks. IPO examiners in charge of applications often appear more flexible, which increases the probability of successfully challenging a trademark application during the examination process.
By: Pavel Seleznev
For more information, please contact Pavel Seleznev at our Russia office.
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