Many provisional refusals in Russia can be handled by the trademark owner or an experienced IR mark lawyer without assistance of a local counsel. In some countries of the IR mark system, especially in the USA, an “active disclaimer declaration” is required by the national office, i.e. a declaration of the trademark owner that no monopoly right can be derived from a descriptive word element apart from the mark as shown. In Russia – as in many other countries of the former USSR – a disclaimer is also requested, but not necessarily by a direct declaration of the trademark owner. Until 2017, the notifications from the Russian trademark office were quite clear. The office informed that a disclaimer is necessary for a certain trademark element, and that, even without response from the trademark owner, the mark will automatically be protected subject to such a disclaimer. In 2018 the content of the notification changed: Now the Russian Patent Office states that a disclaimer is required and a “submission of a response” is necessary. According to our experience, however, a reaction from the trademark owner is still not necessary. Even without response, we received several positive notifications from the Russian Patent Office approximately 9 months after the date of the office action confirming the disclaimer restriction. Our Russian local counsel also confirmed this practice.  

Practical impact:

Also under the new (quite misleading) notifications of the Russian Patent Office provisional refusals requesting disclaimer declarations can be overcome without the assistance of a Russian local counsel. This can reduce an IR mark owner’s cost quite significantly.