Russia is a civil law country.

The whole of the Russian trademark system is built on a first-to-file system. Generally speaking Russia will not accept prior use rights (with a few exceptions i.e. unregistered well-known trademarks). The Russian law clearly sets out that trademarks rights are created when the mark is registered. However not all is a it may seem.

As in certain other civil law jurisdictions common law concepts are also arguably creeping in. With the 2008 Russian Civil Code, ‘commercial designations’ have been fully recognized. Whilst similar to a trademark, certain parties have called it unregistered ‘brand rights’ created through use of brand within a certain territory. Commercial designations are used to identify its owner vis a vis to its customers. They must however not conflict with a prior registered trademark or be misleading.

These commercial designations arguably give the owners types of common law trademark rights without having had to register them. A prior commercial designation can also be used in an opposition against a similar/identical trademark over similar/identical goods/services.

When applying for a trademark in Russia, whilst trademark searches are advised, applicants should also consider carrying out use searches to identify any similar commercial designation.

As the tale goes, you have been warned.