Registration of marksi Inherent registrability
Approximate time frames for trademark registration procedure 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 six to seven months of the date of filing the application (an examiner’s objections, if any, may increase the term to between two and three 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.
There are no specific additional 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 materials, the examiner may request submission of this document and that may have a negative impact on the registration terms. 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 can 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 Convention, but within three months of the date of filing the Convention application with the PTO. This term cannot be extended. Split priority is not foreseen in Russia.
Formal examination (in one class) is 2,450 roubles and 700 roubles for each additional class over five. Substantive examination (in one class) is 8,050 roubles and 1,750 roubles for each additional class after the first. In the case of non-electronic filing, the official fees increase by 30 per cent. The official fee for registration is 11,200 roubles and 700 roubles for each additional class over five, and the official fee for issuance of the certificate is 1,400 roubles.
Currently, the PTO is working very hard towards minimisation of the term of the examination procedure; this can take about six to seven months from the filing date, but it is now possible to expedite the procedure by up to two months. For an expedited examination, it is necessary to arrange for a trademark search in all 45 ICGS classes, even if the application does not cover all these classes, and to file the search result either together with the application request or afterwards with the expedited request. The cost of the expedited process is 94,400 roubles.
Examination in Russia consists of a formal and a substantive stage. A formal examination of a trademark application is conducted within one month of the application being filed. During the formal expert examination, the necessary application documents and their compliance with established requirements are verified. The outcome of the formal examination will be that either the application is accepted for consideration or a decision is taken to refuse acceptance for consideration.
The aim of the substantive examination stage is to determine whether the filed designation conforms to the registrability requirements. A trademark application may be rejected on either absolute or relative grounds, or both.
Absolute grounds are those that relate to the substance of the mark itself and include: lack of distinctiveness; risk of misleading and capability of 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.
Relative grounds for refusal include:
- identity with or similarity to the extent of confusion with prior trademarks (both registrations and applications) owned by third parties in relation to similar goods or services;
- identity with or similarity to the extent of confusion with well-known marks; and
- identity with 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 making a decision about the results of the examination of an application, notification of the results of the checks for compliance of the applied designation with the requirements is sent to the applicant. The applicant may then submit arguments in response. Those arguments shall be taken into account when a decision is made on the results of the examination, provided they are submitted within six months of the notification being issued.
If a prior trademark is considered similar to a pending application and cited by the examiner as an obstacle, a letter of consent provided by the prior trademark right holder may be taken into consideration by the examiner during the examination procedure.
Article 1483.6 provides that registration of a trademark in respect of similar goods or services may be allowed if the prior trademark right holder grants consent, and provided that registration of the trademark would not result in consumers being misled. However, if a letter of consent is granted by the prior trademark right holder, the examiner has no any obligation to accept it unconditionally; acceptance would depend on the degree of similarity between the trademarks, which means that, in cases of very close similarity between trademarks, the consent could not be taken into consideration, even if provided.
The PTO has strict requirements regarding letters of consent, one of which is for an indication in the body of the letter that once granted consent cannot be revoked and is not limited in time. An additional provision in letters of consent to the effect that the prior trademark right holder believes that registration of the trademark would not result in confusion on the market nor in consumers being misled is also now required.
The substantive examination is followed by the examiner’s decision, which may be in the form of a registration decision in full, a registration decision for a part of the applied goods or services (and, consequently, refusal for the rest of the goods) or a refusal decision affecting all the goods or services.
Provided the applicant agrees with the decision, the registration fee should be paid within the prescribed period.ii Prior rights
Russia is a first-to-file jurisdiction. Legal entities or entrepreneurs who first apply for registration of a trademark have a priority right to obtain trademark registration. Russian trademark legislation does not recognise prior use rights (as a general rule, the exclusive right to use a trademark in Russia arises as a result of state registration).iii Inter partes proceedings
There is no opposition system with respect to pending applications; however, recent amendments to the Civil Code provide that:
- the PTO should publish information on filed trademark applications;
- third persons have the right to review all trademark documents on file, and not only those comprising the filing of original trademark applications; and
- third persons have the right to submit in writing to the PTO 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. Observation letters may be used as an effective tool to ensure that prior rights are taken into consideration by the examiners.
Russian legislation foresees another instrument for raising objections based on prior rights against a trademark. Within five years of information on a registration being published in the official bulletin of the PTO (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 Chamber of Patent Disputes of the PTO. In the event of an invalidation action, the trademark owner is notified and both parties are invited to a hearing for the matter to be discussed. The PTO then makes a decision to reject the invalidation action and leave the trademark in force, to invalidate the mark in full, or to partially invalidate the mark.
An invalidation action or a cancellation action against a trademark registration on other grounds already provided for by legislation may be filed during the entire term of validity of the trademark.iv Appeals
If a decision is not acceptable, the applicant may appeal to the Chamber of Patent Disputes of the PTO within four months of the date the decision is issued. The decision that results from consideration of the appeal by the Chamber of Patent Disputes may be further appealed to the IP Court.