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.
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.