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Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Russia is a first-to-file country. Legal entities or individual entrepreneurs who first apply for registration of a trademark enjoy the priority right to obtain trademark registration. Therefore, it is essential to file trademark applications in Russia without delay.
It is not necessary to use the mark before applying for registration, and proof of use is not required when the trademark application is filed.
What legal protections are available to unregistered trademarks?
Trademark rights stem from registration in Russia. Unregistered marks or marks-in-use are not protected, unless they have obtained an official 'well-known' status under a special procedure through RUPTO.
In certain instances, unregistered marks (eg, trade dresses, logos, three-dimensional marks) can enjoy unfair competition and/or copyright protection. Trade names (known as ‘commercial designations’) can also be protected and enforced in Russia.
How are rights in unregistered marks established?
No exclusive rights are given to unregistered mark users. Rights available against unfair competition or copyright infringement are usually established through prior, long-standing use, consumers’ association and reputation. Trade names must be distinctive and known amongst customers within a certain territory of use.
Are any special rights and protections afforded to owners of well-known and famous marks?
There is a special procedure for the recognition of trademarks as well known. Unlike in many other countries, in Russia a trademark is not granted well-known status as a result of court proceedings and litigation. In order for the mark to be considered a well-known trademark, a request must be filed with RUPTO.
A well-known trademark will generally be granted the same legal protection as an ordinary trademark. Nevertheless, a well-known trademark also provides its owner with the following important advantages:
- the legal protection of the mark is not time-limited;
- protection extends to goods or services other than those for which the mark is recognised as well known if the third party use is likely to be associated by consumers with the owner of the well-known trademark, and may affect the owner’s legitimate interests;
- protection of a well-known mark may start from the period that predates the filing of the request for recognition of the mark as well known; and
- the commercial value of a well-known trademark is higher than that of an ordinary trademark.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Foreign national trademark registrations are not recognised in Russia. However, as a signatory to the Madrid Agreement and the Madrid Protocol, Russia grants protection to trademarks registered under the Madrid system.
What legal rights and protections are accorded to registered trademarks?
As Russia is a first-to-file jurisdiction, trademark registration is of the utmost importance for its owner. Generally, trademark registration provides the registrant (trademark owner) with the legal capacity of trademark use, disposal (eg, licensing) and enforcement. Trademark registration can afford other benefits, such as customs recordal. Trademark registration may prevent a similar/identical mark from being registered in the name of a third party.
Who may register trademarks?
Legal entities or individual entrepreneurs may register trademarks.
What marks are registrable (including any non-traditional marks)?
Any designations, including – but not limited to – verbal, pictorial, combined, three-dimensional ones, and other marks or their combinations, may be registered as trademarks. A trademark may be registered in any colour or colour combination, or just in black and white.
In addition, colour marks (either as individual colours or colour combinations), sound marks, texture marks, olfactory marks, position marks, hologram marks, motion/animation marks, taste marks and other non-traditional marks may be registered in Russia, but their registrability depends on their distinctiveness, which may be:
- inherent, deriving from the distinctive features of the mark; or
- acquired, through intensive use in Russia.
Can a mark acquire distinctiveness through use?
Registration of a mark that is lacking distinctiveness is not permitted. However, it is possible to obtain trademark registration based on the acquired distinctiveness of the mark through its intensive (pre-filing) use in Russia.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
Examination of trademark applications consists of a formal examination and, thereafter, a substantive examination based on absolute and relative grounds allowing to determine whether the mark filed is inherently registrable, and whether it is confusingly similar to third parties’ pending applications and/or registrations.
Are collective and certification marks registrable? If so, under what conditions?
The law provides for registration of collective marks. A ‘collective mark’ is defined as a mark of a union, business association or other voluntary association of enterprises capable of distinguishing goods manufactured or commercialised by the union/association having common characteristics as to quality or otherwise.
When filing an application for registration of a collective mark, it is imperative to submit by-laws of the collective mark containing the rules for the use of the collective mark. These rules must indicate the name of the association entitled to register the mark in its name, the list of enterprises entitled to use the mark, the purpose of registration of the mark, the list of goods and description of their common characteristics (relating to quality or otherwise), the conditions of use of the mark and the sanctions for violation of such rules.
The names of the enterprises entitled to use the mark and an extract from the rules relating to the common characteristics of the goods for which the mark is registered will be mentioned in the publication of registration of the collective mark in the RUPTO’s Official Bulletin.
The registration holder must inform the RUPTO of any amendment to the rules of use of the mark. Any interested person may apply to the Russian IP Court for the total or partial cancellation of the registration of a collective mark if the mark is used in relation to goods not having common qualitative or other common characteristics.
Collective marks cannot be assigned or licensed to third parties.
Collective marks and applications for the registration of a collective mark may be converted respectively into trademarks or trademark applications.
Certification marks may also be registered. However, the registration procedure for this type of marks is quite different from that used for trademarks.
In particular, a legal entity that created its own voluntary system of certification is entitled to get registered both the system and the certification mark identifying this system. The registration can be implemented by way of filing an application with the Russian Federal Service for State Standardisation.
Under the existing rules, a certification mark must be distinctive and visually perceivable. Trademarks may not be used as certification marks. However, a certification mark can be registered as a trademark if it meets the general registrability requirements and is not in conflict with third parties’ rights.
Registered certification marks are entered into a special state register, which exists separately from the RUPTO Register of Trademarks.
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