Registration and useOwnership of marks
Who may apply for registration?
The Russian Civil Code says that a trademark may belong to a legal entity or an individual entrepreneur. Also, the legislation foresees the possibility of registering a collective mark. Collective marks are defined as trademarks owned by an amalgamation of entities used to designate goods that are produced or sold by the members of this amalgamation, provided those goods possess common characteristics of quality or other characteristics.Scope of trademark
What may and may not be protected and registered as a trademark?
According to the Civil Code a trademark is ‘a designation serving for individualising goods of legal entities or individual entrepreneurs’ (article 1,477 of the Civil Code). Any protectable word, design, slogan, sound, symbol, etc, could serve as a trademark that identifies goods or services. The list of signs that may function as trademarks is open, which allows for registration of non-traditional marks. Article 1,482 of the Civil Code provides that verbal, pictorial, three-dimensional and other indications or their combinations may be registered as trademarks. A trademark may be registered in any colour or colour combination. The wording ‘other indications’ confirms that the law is quite liberal in this regard.
In Russia, registration of marks that are lacking in distinctiveness is not allowed. In spite of the fact that the legislation lists the designations that should be recognised as lacking in distinctiveness, in some situations the criteria of distinctiveness are arguable and remain at the discretion of the trademark office. Furthermore, Russian legislation provides for the possibility of registration of marks based on their acquired distinctiveness.
Colour marks (either colours per se or colour combinations), sound marks, texture marks, olfactory marks, position marks, hologram marks, motion marks, taste marks, etc, may be registered in Russia, but their inherent registrability depends on distinctiveness: either distinctive features of the mark per se or acquired distinctiveness trough intensive use.Unregistered trademarks
Can trademark rights be established without registration?
Russia is a first-to-file jurisdiction. The legal entities or entrepreneurs who first apply for registration of a trademark have priority in obtaining trademark registration. Russian trademark legislation does not recognise prior use rights (as a general rule the exclusive right to use a trademark in Russia country arises as a result of state registration).
According to Russian legislation, the rights to a trademark appear from the moment of its state registration and no rights derive from the use of an unregistered trademark. However, since January 2008, when Part IV of the Russian Civil Code came into force, a new subject matter of intellectual property appeared: ‘commercial designation’. This is close to a trademark in its nature, but the right to use this designation arose based on the use of a commercial designation within a particular territory without its obligatory registration before an administrative body, such as the Russian Patent and Trademark Office (RPTO).Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
In Russia a trademark can enjoy protection as a well-known mark that may not necessarily be a registered designation. Russian legislation foresees the procedure of recognition of a well-known trademark. In Russia, unlike in many other countries, a trademark is not granted well-known status as a result of court proceedings or litigation. According to Russian trademark legislation, in order for a trademark to be recognised as well known, the appropriate request should be filed with the RPTO.
A well-known trademark shall be granted the same legal protection as is provided for an ordinary trademark. Nonetheless, a well-known trademark provides its owner with certain important advantages:
- the legal protection of a well-known trademark is not time limited;
- protection extends to goods or services of a different kind from those for which it is recognised as wellknown, if use of the mark by another person is likely to be associated by consumers with the owner of the well-known trademark and may impair its lawful interests;
- protection of a well-known mark may start at the period that predates the filing date of the respective request to recognise the trademark as wellknown; and
- the commercial value of a well known trademark is higher than that of an ordinary trademark.
The well-known status should be evidenced by numerous documents and materials confirming the intensive use of the mark and its reputation among consumers in association with the goods or services for which it is requested to be recognised as wellknown, and in association with the trademark owner. In seeking to have its trademark recognised as well known, the applicant should indicate the goods or services for which the mark has become wellknown, and the date from which the trademark became wellknown.
Along with a petition for the recognition of a well-known trademark the following information may be submitted:
- the results of a consumer survey regarding the goods at issue, revealing consumer knowledge of the trademark and performed by a specialist organisation;
- examples of intensive use of the trademark, especially in Russia;
- a list of countries where the trademark has acquired a well-known reputation;
- examples of advertising costs incurred relating to the trademark and examples of advertising;
- details of the value of the trademark;
- publications in Russian periodicals; and
- documents containing information about supplies of goods to Russia, etc.
It is not compulsory to submit all of the above-listed evidence. Trademark legislation does not contain a list of obligatory documents that must be submitted along with a petition for the recognition of a trademark as well-known.
Practice shows that it is recommended that evidence of use of the trademark in Russia be submitted in support of the petition recognising a trademark as well-known. Special attention should be paid to the opinion poll results. Such polls must be carried out in at least six of Russia’s largest cities, including Moscow and St Petersburg. Other cities may be chosen by the applicant, depending on the sphere of activity and the regions of trademark use.
Determining the date from when the trademark became well-known is also crucial, and careful review of all available materials is required. The date from which the trademark became well-known should be indicated precisely.
The RPTO takes a strict approach towards petitions to recognise marks as well-known and these are denied quite often. The main difficulty encountered during proceedings is demonstrating that consumers have a strong association between the trademark and the goods or services for which the trademark is used, and with the trademark owner. Often consumers recognise the trademark, but have little knowledge about its owner. Formally, a trademark may belong to an IP-rights holding company, the name of which is not known to consumers. Furthermore, if the date from which the applicant would like to have its trademark recognised since well-known refers to a period in the past, the supporting evidence should predate the date mentioned in the request.
As of July 2019, there are 208 well-known trademarks published in Russia, including Nike, Coca-Cola, Disney, Tiffany, Intel, Gallup Institute, Adidas, Gillette, Nikon, Elle, Heinz, Casio, Red Bull, Marlboro, Nissan, Pepsi, ZARA etc.The benefits of registration
What are the benefits of registration?
Because Russia is a first-to-register jurisdiction, trademark registration is of the utmost importance for its owner and provides the registrant with the ability of trademark enforcement. In addition, trademark registration makes it possible to record the same in the Customs IP Register, thus preventing unauthorised import of the branded goods into Russia.Filing procedure and documentation
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
There are no specific documents that should be filed with the trademark application except power of attorney. Filing power of attorney is optional, but if it is absent from the application the examiner may request submission of this document, which may have a negative impact on the registration process. It should be issued by the applicant and signed by the authorised person with an indication of that person’s name and position in the company. The date and place of the signature should be indicated as well. Neither notarisation nor legalisation is required. The power of attorney may be submitted after filing the application.
In cases of a priority claim under the Paris Convention, it is necessary to submit a certified copy of the first (home) application. The filing particulars should correspond to those in the home application. The home application can be submitted after filing an application under the Paris Convention, but within three months from the date of filing the Paris Convention application with the RPTO. This term cannot be extended. Split priority is not foreseen in Russia.
According to administrative regulations, one electronic print of a trademark in high resolution (in case of device mark) should be submitted. Electronic filing is available.
A pre-filing trademark search is not obligatory. It depends on the applicant’s brand registration and protection strategy. If the applicant is going to use the mark only after obtaining registration, the search is not necessary (however, conducting of the search could give information regarding possible citations of prior marks). If the applicant is going to use the mark after the filing but before the registration, the search is strongly recommended to determine if third parties’ rights could be infringed.Official and agent's fees for official search requests from the RPTOWord mark
- one month: official fee - 4,130 roubles (1,062 roubles for each additional class); agent's fee - ordering the search - US$200 (per trademark independently of a number of classes) and commenting and advising on search results are US$320 per hour;
- two weeks: official fee - 8,260 (2,124 roubles for each additional class); agent's fee - ordering the search - US$200 (per trademark independently of a number of classes) and commenting and advising on search results are US$320 per hour;
- seven to nine days: official fee - 12,390 roubles (3,186 roubles for each additional class); agent's fee - in case of an urgent search (one or three-day search) our fee will increase by 50 per cent;
- three days: official fee - 24,780 roubles (6,372 roubles for each additional class); agent's fee - in case of an urgent search (one or three-day search) our fee will increase by 50 per cent; and
- one day: officail fee - 49,560 roubles (12,744 roubles for each additional class); agent's fee - in case of an urgent search (one or three-day search) our fee will increase by 50 per cent.
- One month: official fee - 8,260 roubles (1,770 roubles for each additional class); agent's fee - in case of an urgent search (one or three-day search) our fee will increase by 50 per cent;
- two weeks: official fee - 16,520 roubles (3,540 roubles for each additional class); agent's fee - in case of an urgent search (one or three-day search) our fee will increase by 50 per cent; and
- seven to nine days: official fee - 24,780 roubles (5,310 roubles for each additional class); agent's fee - in case of an urgent search (one or three-day search) our fee will increase by 50 per cent.
- Conducting a search (per trademark independently of a number of classes) - US$100; and
- commenting and advising on search results - US$320 per hour.
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
Approximate time frames for trademark registration in Russia are as follows:
- the official filing receipt is issued within one month of the date of filing an application or sooner;
- the official action is issued within about seven to eight months of the date of filing the application (possible examiner’s objections may increase the registration period to about one-and-a-half to two years, depending on the circumstances of the case, number of appeal stages etc); and
- where the trademark is successfully registered, the registration certificate is issued within two months of the date of payment of the official fee for registration.
In 2018, the RPTO introduced an accelerated trademark registration procedure as follows.Electronic filing of a trademark application (formal examination), lasting up to one month
Official fee - 2,450 roubles (700 roubles for each additional class over 5); attorney's fee - US$500.The substantive examination, lasting about seven to eight months
Official fee - 8,050 roubles (1,750 roubles for each additional class up to 5).A straightforward prosecution registration
Official fee - 11,200 roubles (700 roubles for each additional class over 5); attorney's fee - US$320.The issuing of a trademark certificate (within two months)
Official fee - 1,400 roubles; attorney's fee - US$300.
Discounted official fees are available in the case of electronic filing.
Foreign applicants (with some exceptions) are not allowed to file applications with the RPTO directly and must engage a registered Russian trademark attorney. The total registration costs would depend on the attorney’s fees for matters of this kind.Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
When filing an application to register a trademark it is necessary to state the list of goods and services for which the trademark protection is sought. The goods and services are to be identified using precise and clear-cut wordings reflecting their nature. The wordings must be classified using the Nice Classification requirements, depending on the nature of goods and services and their purpose. Several classes can be claimed in one trademark application or additional classes added during the examination of the application. The goods applied for can be transferred to new classes provided such changes to the list and re-classification do not widen the scope of the protection that was initially requested. The possibility of filing multi-class applications allows filing costs to be saved.
In Russia, the scope of trademark protection is defined by the trademark name itself and the list of goods and services covered by the trademark. It should be kept in mind that in current Russian practice the class heading simply designates the fields to which the applied goods and services may relate in general and does not cover all the goods and services listed in a given class. When filing an application, it is possible to claim the class heading, the list of specific goods or both the class heading and specific goods. The latter is the preferable option because it allows the applicant to obtain broader protection and to seek registration for those goods that are most important.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
The examination in Russia consists of formal and substantial stages. A formal examination of a trademark application is usually carried out within one month of the application being filed, or even faster. During the formal expert examination, the presence of the necessary application documents and their compliance with established requirements is verified. According to the results of the formal examination, the application will either be accepted or refused for consideration.
The substantial examination stage is carried out to establish whether the claimed designation conforms to the registrability requirements. A trademark application may be rejected either on absolute or relative grounds, or on both absolute and relative grounds.
Absolute grounds are those that concern the substance of the mark itself, and include:
- lack of distinctiveness;
- risk of misleading and capability of confusing;
- confusing similarity to or identity with state symbols and marks;
- reproduction of full or abbreviated names of international or intergovernmental organisations or their symbols; and
- reproduction of the official names or images of the most valuable objects of Russia’s and worldwide cultural heritage.
The relative grounds for refusal include:
- identity or similarity to the extent of confusion with prior trademarks (both registrations or applications) owned by third parties in relation to similar goods or services;
- identity or similarity to the extent of confusion with well-known marks; and
- identity or similarity to the extent of confusion with third parties’ industrial designs, appellations of origin, company names or commercial designations.
A trademark may also be refused protection if it incorporates protected means of individualisation of other persons (and confusingly similar signs) as well as copyrighted objects owned by third parties, names, pseudonyms (or derivatives thereof), pictures, facsimiles of famous persons or industrial designs owned by third parties as elements of the trademark.
Before taking a decision on the results of the examination of an application, notification of the result is sent to the applicant with a proposal to the applicant to provide arguments concerning the reasons mentioned in the notification. The applicant’s arguments shall be taken into account when a decision is taken on the results of the examination if they are submitted within six months after the dispatch of the said notification to the applicant.
The substantial examination is followed by the examiner’s decision, which may be in the form of a registration decision in full, a registration decision for some of the applied goods (and consequently, refusal for the rest of the goods) or a refusal decision affecting all the applied goods.
A registration decision for all the applied goods necessitates payment of the registration fee to have the mark registered. If the mark has been partially accepted for registration there are then two options for the applicant: either to pay the registration fee to have the mark registered for the accepted goods or to appeal against this decision with the Chamber of Patent Disputes (a division of the RPTO). An appeal against the rejection may be filed with the RPTO within four months of the date of dispatch of the decision to the applicant. The decision that results from consideration of the appeal at the Chamber of Patent Disputes may be further disputed with the Intellectual Property Rights (IPR) Court.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
Unlike many other jurisdictions there is no need in Russia to file a declaration of use or intention to use along with filing an application.
Foreign registrations are not granted any right of priority over domestic applicants, but applicants residing in the member states of the Paris Convention enjoy the right to file applications based on conventional priority. The priority of a trademark may be established by the filing date of the first trademark application in a member state of the Paris Convention for the Protection of Industrial Property (Paris Convention priority) if the trademark application is filed with the RPTO within six months of the said date.
Moreover, it is possible to claim the priority of a trademark placed on exhibits of the official or officially recognised international exhibitions organised on the territory of a member state of the Paris Convention if the trademark application is filed with the RPTO within six months after the said date.
The priority of a trademark may also be established by the date of its international registration in accordance with the international treaties of the Russian Federation.
Article 1,486 of the Civil Code implicitly provides for mandatory use of a registered trademark as a condition of keeping the right for such a trademark, even though the Code does not directly point out that an owner of a trademark must use the trademark. The legal protection of a trademark may be terminated in respect of all the goods and services or part of the goods and services for which the trademark has been registered owing to continuous non-use for any three years after its state registration. A lawsuit for early termination of the legal protection of a trademark owing to its non-use may be filed with the IPR Court by an interested person upon the expiry of the said three years, provided that a pretrial procedure is observed. Further to the requirements of the law, it is mandatory for a claimant to send a pretrial proposal to the rights holder asking him or her to either voluntarily abandon the trademark or assign the same with respect to all or part of the goods or services to the claimant before filing a non-use cancellation action. If the rights holder does not comply with this demand (ie, neither abandons the trademark nor assigns it to the claimant) within two months starting from the date the proposal was made, a non-use cancellation action can be filed with the IPR Court within 30 days from the expiry date of the two-month term. If a non-use cancellation action is not filed within the prescribed term, a new pretrial proposal can be made three months after the previous pretrial proposal was made.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
Under article 1,485 of the Russian Civil Code the trademark owner, for giving notice of their exclusive right to a trademark, shall have the right to use the symbol of protection, which shall be placed alongside the trademark and consist of the Latin letter R, or the Latin letter R in a circle ®, or the verbal indication ‘trademark’ or ‘registered trademark’, and that shall indicate that the sign used is the registered trademark protected on the territory of the Russian Federation. Note that it is Illegal to use such symbols with respect to non-registered designations and may entail criminal liability under paragraph 2, article 180 of the Criminal Code.
Hence, the owner of a trademark is allowed to use the trademark precautionary marking. But the trademark owner is not restricted from omitting such marking. Should the owner be interested in notifying the public that their sign is registered as the trademark he or she may use the symbol stated above. Note that Russian legislation does not include the use of ™.Appealing a denied application
Is there an appeal process if the application is denied?
There is an administrative appeal process if an application is denied. The Civil Code foresees the possibility of appealing against a rejection with the Chamber of Patent Disputes, which is a division of the RPTO. An appeal may be filed within four months of the date of dispatch of the decision to the applicant. The RPTO’s decision resulting from consideration of the appeal at the Chamber of Patent Disputes may be further disputed in the IPR Court. The appeal deadline may be missed and reinstated within six months provided the reasons for missing the deadline are explained by the applicant.Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
The Civil Code provides that:
- the RPTO should publish information on the filed trademark applications;
- third persons have the right to review all trademark documents on file and not only those comprising the original trademark application’s filing; and
- third persons have the right to submit to the RPTO their observations against pending trademark applications before official action is taken. Such written observations may be taken into account by the examiner during the examination, but this ‘quasi’ opposition process is not competitive.
Russian legislation foresees another instrument for raising objections against a trademark. Within five years after information on registration is published in the official bulletin of the RPTO (after a trademark is registered), the owners of the prior trademark rights have an opportunity to file an invalidation action against the trademark registration with the RPTO. In the event of such action, the trademark owner is notified accordingly and both parties are invited for consideration of the matter at the hearing. As a result of this consideration the RPTO makes a decision on the matter (rejecting the invalidation action and leaving the trademark in force, invalidating the mark in full or partially invalidating the mark).
An invalidation action or a cancellation action against a trademark registration on other grounds foreseen by the legislation may be filed during the entire term of trademark validity.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
A trademark registration remains in force for 10 years from the date of filing the trademark application. It may be renewed every 10 years without any limitations on the number of renewals. No evidence of use is required for maintenance of a trademark registration.Surrender
What is the procedure for surrendering a trademark registration?
The respective request should be filed with the RPTO. Appropriate power of attorney should be submitted. There is no official fee for this procedure.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
In case a trademark is a result of creative work it can be protected as a subject-matter of copyright. Also, sometimes it is possible to obtain an industrial design patent for a trademark if it meets the requirements of novelty and originality. For instance, an original shape of a product can be protected as a three-dimensional trademark or industrial design as well as a work of design protected by copyright.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
According to the Civil Code (articles 1,229 and 1,484) it is not allowed to use a trademark on the internet, including in domain names and for other means of addressing without permission of the trademark owner. Illegal use of a trademark in a domain name shall entail liability.