1. Governing Law and Types of Trade Marks
1.1 Governing Law
Russian domestic trade mark legislation includes:
- the Constitution of the Russian Federation, which names protection of intellectual property (IP) in the provisions on rights and freedoms;
- the Russian Civil Code, in particular Part IV, which is a codified set of legal norms for prosecution, enforcement and transactions for trade marks;
- Federal Law No 135-FZ of 26 July 2006 ‘On competition protection’, which has provisions on unfair competition issues involving trade marks;
- Federal Law No 38-FZ of 13 March 2006 ‘On advertising’, dealing with certain aspects of using trade marks in advertising;
- Resolution of the Government of Russia No 1151 of 23 September 2017, which provides for the amount of state duties paid during trade mark prosecution;
- Resolution of the Government of Russia No 1416 of 24 December 2015, which provides general rules for recording trade mark related transactions – detailed procedural issues relating to such records are approved in Order of the Russian Ministry of Economic Development No 371 of 10 June 2016;
- Orders of the Russian Ministry of Economic Development Nos 482 and 483 of 20 July 2015, which regulate the detail of all trade mark prosecution procedures; and
- Order of the Russian Ministry of Education and Science No 644, of Ministry of Economic Development No 261 of 30 April 2020, which regulate procedure for considering trade mark invalidation actions in the PTO.
The most relevant international treaties of Russia for trade mark matters are:
- the Madrid Agreement concerning the International Registration of Marks 1891–1967;
- the Protocol relating to the Madrid Agreement concerning the International Registration of Marks of 1989;
- the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Union) 1957–1977;
- the Paris Convention for the Protection of Industrial Property;
- the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (the TRIPS Agreement);
- the Nairobi Treaty on the Protection of the Olympic Symbol 1981;
- the Trademark Law Treaty 1994; and
- the Singapore Treaty on the Law of Trademarks 2006.
1.2 Types of Trade Marks
According to the Russian trade mark legislation, a trade mark is “a designation serving for individualising goods of legal entities or individual entrepreneurs”. Therefore, any protectable word, design, slogan, sound, symbol, etc, could serve as a trade mark that identifies goods or services. Furthermore, the list of signs that may function as trade marks is open, which allows for registration of non-traditional marks. Collective marks are also recognised in Russia and defined as signs in the name of association of entities (whether producers, distributors, etc) that is intended to be used on goods (produced or offered for sale by those entities) that possess common qualities or other common features.
Furthermore, the Russian law allows for trade marks to be "recognised well-known" in Russia through a special administrative procedure. A mark can be recognised well-known if it has become renowned in Russia among the respective range of consumers of goods proposed by the brand owner as a result of its intensive use.
Certification marks have nothing to do with IP objects; therefore, their registration can be implemented by filing an application with the Russian Federal Service for State Standardisation. On 27 July 2020, the amendments to the Russian trade mark legislation came into force and it is now possible for individuals, legal entities and associations to register geographical indications. Further, it should be noted that common law rights are not recognised in Russia.
1.3 Statutory Marks
In Russia, official symbols of certain international organisations such as the IOC or FIFA can enjoy a special regime of protection, regardless of whether these are protected as trade marks or not by virtue of international law (Russia is a party to the Nairobi Treaty on the Protection of the Olympic Symbol) or Russian statutes (such as Federal Law "On the preparation and holding in the Russian Federation of the 2018 FIFA World Cup, the 2017 FIFA Confederations Cup, the 2020 UEFA European Football Championship and amending certain legislative acts of the Russian Federation”, Russian federal law on physical culture and sports, Russian federal law on the preparation and holding of the Olympic games in Sochi) that specifically regulate use of such symbols.
1.4 Well-Known Foreign Marks
Marks that are well-known in other countries are not protected on Russian territory. However, legislation foresees the procedure of recognition of a well-known trade mark in Russia. The main requirement for a trade mark to be recognised as well-known in Russia is that it must be famous in Russia through intensive use.
1.5 Term of Protection
The term of registration is ten years from the date of filing the application and it may be renewed indefinitely for further ten-year periods.
1.6 Exhaustion of Trade Mark Rights
Russia sticks to the regional exhaustion of rights principle due to the operation of the Eurasian Economic Union. That means that in Russia exhaustion of trade mark rights take place under the following conditions: the trade marked goods were put into commerce on the territory of the member of the Eurasian Economic Union (Armenia, Belarus, Kazakhstan, Kyrgyz Republic, Russia) by the trade mark owner or at their consent.
1.7 Symbols to Denote Trade Marks
Under Russian law, there is no obligation for the trade mark owner to denote that a trade mark is registered. However, the trade mark owner may choose to put “R”, the ® symbol or the Russian words for “trade mark” or “registered trade mark”.
Those designations are allowed only for registered trade marks and are not allowed for pending trade mark applications. Otherwise, that may cause risks from advertising, consumer law and fair competition provisions.
The “TM” symbol is not indicated in Russian law so will have no legal meaning.
2. Assignment and Licensing
2.1 Assignment Requirements or Restrictions
Trade mark assignment may take place for the whole list of goods/services or only for part of them.
Assignment of the trade mark is subject to state recordation by the Russian Patent Office.
It is necessary to:
- file a registration application (in the case of non-Russian companies representation shall be made by the registered trade mark attorney with the relevant power of attorney from one of the parties);
- provide the Patent Office with evidence of assignment (the full agreement, extract from it or a bilateral notification of assignment signed by both parties) in the Russian language; and
- pay state duty (RUB13,500 for one trade mark; RUB11,500 for each additional)
Registration takes place for around two months.
The Russian Patent Office checks formal requirements relating to the deal. In case of inconsistences (for example, the address of the trade mark owner in the trade mark register does not match the address indicated in the deal documents), the Russian Patent Office may issue an office action, asking to rectify or explain the issues within the given deadline.
Russian Patent Office also checks whether there are risks that assignment may cause consumers being misled as result of assignment. Examples of such cases are:
- the company name of the assignor has the same element as the assigned trade mark;
- the trade mark contains indication of goods origin (location), while assignee is located in the other region; and
- the remaining goods/services are similar (homogeneous) to the assigned goods/services.
2.2 Licensing Requirements or Restrictions
Trade mark licensing may take place for the whole list of goods/services or only for part of them. Listing the specific list of goods is mandatory.
Russian law recognises:
- exclusive licence – in this case the trade mark owner cannot license to the other parties and, unless otherwise indicated in the licence deal, cannot use the trade mark themselves;
- non-exclusive licence – in this case the trade mark owner may grant similar licences to the other parties.
Licence of the trade mark is subject to state recordation by the Russian Patent Office.
It is necessary to:
Registration takes around two months to complete.
The Russian Patent Office checks formal requirements relating to the deal. In case of inconsistences – for example, the address of the trade mark owner in the trade mark register does not match the address indicated in the deal documents – the Russian Patent Office may issue an office action, asking to rectify or explain the issues within the given deadline.
The parties may stipulate either the specific term or indicate that a licence is granted for the whole term of the exclusive right to the trade mark. In case the specific term is indicated, the parties need to ensure that a licence renewal application is filed to the Russian Patent Office before expiration of the specific licence term.
In case the specific term is not indicated in the licence deal, the licence is deemed to be effective for five years.
2.3 Registration or Recording of the Assignment
Trade mark assignment or licence requires registration at the Russian Patent Office.
In case the parties do not comply with the registration requirement, then for third parties the deal will be treated as non-existing (void). In addition, a number of risks may emerge, starting from tax law risks up to difficulties in proving use by a non-recorded licensee in case of trade mark non-use cancellation cases.
While law does not provide the specific time frame between signing the deal and submitting it for registration, the parties needs to be guided by the “as soon as possible” principle, without incurring significant delay in submitting the deal for registration.
2.4 Other Requirements for Licences or Assignments to be Valid
Between commercial entities (and sole traders) licence or assignment needs to provide mutual consideration (typically, a sum of money).
While the licensee is obliged by law to ensure the quality of the licensed goods as compared with the goods of the trade mark owner, the trade mark owner is entitled to check such compliance.
Licensing of the trade mark, containing as a non-protected element the geographical indication or indication of origin, is permissible only on condition that the licensee has exclusive right to such geographical indication or indication of origin.
2.5 Assigning or Licensing Applications
From a terminology standpoint, a designation under pending trade mark application is not yet a “trade mark” under Russian law – so it cannot be assigned or licensed as a trade mark.
However, Russian law recognises that it is possible to transfer a right to obtain a trade mark under the filed application (that is similar to “assignment”), which requires filing a motion to the Russian Patent Office.
Further, Russian law does not impose a ban on the parties to enter into agreement as per which they agree on terms on using a certain designation (that will be similar to “licensing”), also taking account that some designations may be also treated as copyright objects (eg, graphic works or a character which may be simultaneously used as a copyright object and a subsequent trade mark if it registered as trade mark). Nevertheless, in such a case, once the designation under application matures into a trade mark, it is recommended that the parties enter into a trade mark licence agreement.
In case the licence deal does not indicate the specific territory within Russia, the licence deal will be deemed to cover all Russia.
2.6 Trade Marks as Security
Exclusive right to a trade mark may: be featured as an asset in other transactions, including security (pledge); be part of inheritance, contributed to the charter capital of the companies; be sold in auction in case of not complying with pledge obligations. It is important to note that pledge deals with trade marks are subject to recordation by the Russian Patent Office.
3.1 Trade Mark Registration
Russia is a first-to-file jurisdiction. Legal entities or entrepreneurs who first apply for registration of a trade mark enjoy priority right to obtain trade mark registration. Russian trade mark legislation does not recognise prior use rights (as a general rule the exclusive right to use a trade mark arises as a result of state registration). According to Russian legislation, rights for a trade mark appear from the moment of its state registration and no rights derive from the use of an unregistered trade mark. All types of marks should conform to the registrability requirements based on absolute and relative grounds for refusal in order to be registered.
A trade mark which is not inherently distinctive (eg, due to its descriptive nature) can still be granted protection subject to acquired distinctiveness/secondary meaning associated with the mark as a result of its intensive and longstanding use in Russia.
3.2 Trade Mark Register
In Russia, there is the state register of national trade marks, which is publicly available. Also, the Russian PTO database includes all pending national applications as well as registrations. Before filing of a trade mark application, it is recommended to conduct a trade mark clearance search among both the national and international marks designating Russia to make sure there are no conflicting marks that could pose an obstacle.
3.3 Term of Registration
The term of registration is ten years from the date of filing the application and it can be renewed indefinitely for further ten-year periods. The grace period for renewal is six months, with an extra fee to be paid by a trade mark owner.
3.4 Updating or Refreshing Registrations
In accordance with the Russian use requirements, a trade mark has to be used as registered, or in a slightly different manner that does not affect distinctive features of the mark. Therefore, when it comes to a cancellation action for non-use, it is necessary to prove the use of a trade mark in accordance with the issued certificate of registration or with immaterial alterations. Accordingly, in case the trade mark is used in a form different from the one that was registered, the fact whether this change is essential or not will be a matter of dispute.
Thus, when it comes to rebranding, it is recommended to amend existing registration, if possible. However, if the change is essential, it would be advisable to file a new application for a new version of the trade mark, as such amendments may not be allowed for the existing registration.
4. Applying for a Trade Mark Registration
4.1 Application Requirements
The following documents and information are required for filing a trade mark application in Russia:
The trade mark legislation provides that verbal, pictorial, three-dimensional and other indications or their combinations may be registered as trade marks. A trade mark may be registered in any colour or colour combination. The wording “other indications” confirms that the law is quite liberal in this regard, and other non-traditional marks such as sound, scent and motion marks may be registered.
4.2 Use in Commerce Prior to Registration
Russia is a first-to-file jurisdiction; therefore, there is no requirement to use the mark before filing.
4.3 Series Mark Registrations
The registration of series marks is not allowed.
4.4 Consideration of Prior Rights in Registration
The examination in Russia consists of the formal and substantial stages. The substantial examination stage is conducted in order to establish whether the filed designation conforms to the registrability requirements. A trade mark application may be rejected based on either absolute or relative grounds, or both of these grounds.
Absolute grounds for refusal include the following:
The relative grounds for refusal include the following:
If a prior trade mark is considered similar to a pending application and cited by the examiner as an obstacle, a letter of consent provided by the prior trade mark right owner may be taken into consideration by the examiner during the examination procedure. However, if a letter of consent is provided by the owner, the examiner is not obligated to accept it unconditionally, since such acceptance depends on the risk of confusion between the trade marks – which means that, in cases of very close similarity between trade marks, the consent could not be taken into consideration, even if provided.
Regarding the assignment/assignment-back procedure according to the Russian trade mark legislation, assignment of a trade mark cannot be completed in case it may result in misleading of consumers. According to the practice, such situation may occur if the trade mark holder would like to assign a trade mark to a third party but remains a holder of another identical or confusingly similar mark protected for similar goods /services.
4.5 Consideration of Third-Party Rights in Registration
In Russia there is no opposition procedure in respect of pending applications, and only in respect of registered trade marks can an official invalidation action based on prior rights or absolute grounds such as misleading be filed. However, before the decisions in respect of pending applications are issued, it is possible to file observation letters with the Russian PTO. The purpose of such letters is to bring the examiner’s attention to prior rights for similar marks registered in respect of similar goods/services and to make sure that the prior marks are cited as obstacles to try to prevent the opposed application from being accepted. The observation letter can be filed by any person.
4.6 Revocation, Change, Amendment or Correction of an Application
It is possible to amend an application’s materials before the decision is issued. Specifically, an applicant is able to (i) amend the filed designation provided the change is not significant, and (ii) amend a list of filed goods/services provided such amendment does not extend the scope of protection. Also, it is possible to amend the name and address of an applicant based on a change of name/address or assignment before a trade mark is registered.
4.7 Dividing a Trade Mark Application
There is a possibility to file a divisional application for a part of the applied goods/services before the decision in respect of pending application is issued. Also, it is possible to file a divisional application for a part of the applied goods/services at the stage of appealing the refusal decision with the Chamber of Patent Disputes. The main requirement is that goods/services covered by divisional applications must not be similar to goods/services to be retained in the original applications.
4.8 Incorrect Information in an Application
Any incorrect information (name of the applicant, address of the applicant, etc) may be damaging in the long run. Requests for appropriate amendments have to be filed with the Russian PTO.
4.9 Refusal of Registration
During examination procedure, if a trade mark does not conform to the registrability requirements it can be refused registration based on absolute grounds, which are as listed under absolute grounds for refusal in 4.4 Consideration of Prior Rights in Registration.
Based on the results of examination, the examiner issues an official notification of the check results of compliance of the applied designation with the law requirements and the applicant may then submit arguments in response. Arguments of the applicant are taken into consideration if they are submitted within six months from the date of issuance of the notification.
If the mark is considered to be lacking in distinctiveness, it is possible to try to overcome such objection by arguing that the mark has acquired distinctiveness/secondary meaning and by submitting documents confirming extensive and longstanding use of the mark in Russia before the date of filing the application in support.
4.10 Remedies against the Trade Mark Office
An appeal against the refusal of registration may be filed with the Chamber of Patent Disputes of the Russian PTO within four months from the date of its issuance. The appeal deadline, if missed, can be reinstated within six months since the due date, subject to indication of a reason for the delay in filing appeal. The decision that results from consideration of the appeal with the Chamber of Patent Disputes may be further disputed with the IP Court within three months since the date of its issuance.
4.11 The Madrid System
Russia is party to the Madrid Agreement and to the Protocol Relating to the Madrid Agreement. Examination standards for international applications are the same as for national applications.
5. Opposition Procedure
5.1 Timeframes for Filing an Opposition
In Russia, there is no opposition procedure in respect of pending applications, and only in respect of registered trade marks can an official invalidation action based on prior rights or other grounds (eg, misleading) be filed with the Chamber of Patent Disputes of the Russian PTO.
The official invalidation action, based on prior rights or other grounds, such as misleading the Chamber of Patent Disputes of the Russian PTO, can be filed only if the mark is registered.
The time limits are as follows:
5.2 Legal Grounds for Filing an Opposition
An invalidation action against a trade mark has to be filed with the Chamber of Patent Disputes of the Russian PTO. Such invalidation may be filed based on either absolute grounds or relative grounds; see 4.4 Consideration of Prior Rights in Registration.
Dilution is not officially recognised by the Russian law as a ground for opposition/invalidity action.
5.3 Ability to File an Opposition
Invalidation actions against a trade mark registration have to be filed by an interested party (including a holder of an earlier right). If the opposition is based on an earlier right in a trade mark, the opponent must have a valid trade mark application/registration in Russia. In other cases it depends on particular grounds for opposition. If the opponent is a foreign entity it must be represented by a Russian trade mark attorney. The average office fee is RUB13,500, while attorneys’ fees depend on the circumstances of the case.
5.4 Opposition Procedure
An invalidation action against a trade mark has to be filed with the Chamber of Patent Disputes of the Russian PTO (no discovery procedure is foreseen). The Chamber of Patent Disputes schedules a hearing of a case within one month after the filing, and an invalidation action is resolved through a hearing with participation of interested parties and a panel consisting of three examiners.
5.5 Legal Remedies against the Decision of the Trade Mark Office
If the decision of the examiner is not favourable, it is possible to appeal it with the Chamber of Patent Disputes of the Russian PTO within four months from the date of its issuance. The Chamber of Patent Disputes schedules a hearing of a case within one month after the filing and an appeal is resolved through a hearing with the applicant and a panel consisting of three examiners. If arguments in favour of registration are accepted, the Chamber of Patent Disputes rules to overturn the examiner’s decision and accept the mark for registration. If arguments are not accepted, the Chamber of Patent Disputes confirms the examiner’s refusal decision.
6. Revocation/Cancellation Procedure
6.1 Timeframes for Filing Revocation/Cancellation Proceedings
For a non-use cancellation action, the interested party may file a non-use action to the Intellectual Rights Court against the trade mark owner within 30 days after expiration of two months since the interested party filed to the trade mark owner an offer either to abandon or assign the trade mark (or asking for a letter of consent for their own trade mark registration as an additional tool).
In case the interested party fails to comply with this 30-day filing term, it is necessary to again forward an offer and wait two months.
An invalidation action against a trade mark registration based on prior rights (similar trade marks with earlier priority) can be filed with the Chamber of Patent Disputes of the Russian PTO within five years after publication of such trade mark.
Russian law also recognises the procedure of holding trade mark registration as unfair competition – this may be done via the federal anti-trust authority or court.
During infringement proceedings, in case the defendant manages to prove that registration of the trade mark was made in bad faith, a court ruling establishing bad-faith may also serve as the ground for registration revocation.
6.2 Legal Grounds for Filing a Revocation/Cancellation Proceeding
For a non-use cancellation action, the interested party may claim full or partial cancellation of the trade mark before the Intellectual Rights Court on conditions that:
For unfair competition cases resulting in trade mark revocation, it is necessary to prove the competing relations between the trade mark owner and the applicant asserting unfair competition, as well as to establish that registration and use of the trade mark contradicts law, business customs and requirements of honesty, reason and justice and that it may cause or has caused harm to the competing entity.
For bad faith arguments during the infringement proceedings, it is necessary to prove that the activity of the plaintiff is solely aimed at causing harm to the defendant without having legitimate interest.
Invalidation actions with the Chamber of Patent Disputes of the Russian PTO can be filed against a trade mark registration based on relative grounds (such as prior rights) or absolute grounds (such as unprotectability).
6.3 Ability to File a Revocation/Cancellation Proceeding
Non-use cancellation action may be initiated by an interested party. Typically, it is a business who filed the trade mark application for the similar designation and proves their legitimate intention to use the similar designation in the given industry.
Invalidation actions with the Chamber of Patent Disputes of the Russian PTO based on different grounds must be filed by an interested party.
Unfair competition cases may be initiated by the direct competitor in the given industry.
Bad faith arguments may be raised by the defendant in the infringement proceedings.
6.4 Revocation/Cancellation Procedure
Revocation actions (invalidation actions) based on absolute or relative grounds are filed before the Trademark Office.
Non-use cancellation actions are brought before the Intellectual Rights Court only.
Unfair competition cases may be brought before the federal anti-trust authority and court. Bad faith arguments concerning trade mark registration are raised before court.
6.5 Partial Revocation/Cancellation
Partial non-use cancellation is possible if the trade mark owner does not prove effective use in commerce for the relevant goods/services within three years preceding the date of the offer of the interested party asking to abandon or assign the trade mark (or asking for a letter of consent for their own trade mark registration as an additional tool).
Partial invalidation actions against a trade mark registration directed only to certain classes of goods/services are possible.
6.6 Amendment in Revocation/Cancellation Proceedings
In case of the non-use cancellation, the defendant (trade mark owner) may consider terminating of legal protection for some of the unused goods/services.
In case of invalidation actions, it is not possible to change or add grounds after the filing.
6.7 Combining Revocation/Cancellation and Infringement
Actions involving revocation/cancellation and infringement are heard separately. The exception is the situation where, in case of the infringement proceedings, it is revealed that the trade mark was registered in bad faith – in which case, such conclusion of the court may form the ground for the trade mark revocation.
As such, each action has its own timing and=they may not always coincide. In this regard, infringement action may be stayed pending the adjudication of the revocation/cancellation action.
6.8 Measures to Address Fraudulent Marks
In case the mark was filed fraudulently (in bad faith), it is possible to provide objections during the infringement proceedings or consider separate proceedings before the federal anti-trust authority arguing unfair competition by the owner of the fraudulently filed trade mark.
7. Initiating a Lawsuit
7.1 Timeframes for Filing Infringement Lawsuits
In Russia, there is a limitation term for filing infringement lawsuit – it is three years since the plaintiff learnt or should have learnt about the infringement and due defendant (infringer).
7.2 Legal Grounds for Filing Infringement Lawsuits
In terms of enforcement, only registered trade marks are enforceable. Use of the designations under pending applications is not treated as trade mark infringement (in this case, the applicant may consider unfair competition issues and trespassing defences).
The following enforcement routes are available.
“Dilution claims” in Russia are typically combined with unfair competition considerations and, as the case might be, “dilution” arguments may be considered.
“Cybersquatting” issues, depending on the type of the situation, may be fought by various remedies, including shut-down request to information intermediaries, abuse-reaction groups of websites administration, police action.
Strategy in each situation shall be developed individually.
7.3 Parties to an Action for Infringement
The typical parties to the infringement action are as follows.
Since a “trade mark” in Russia is only what is registered, in case the other side uses the designation under the filed application, the applicant may consider unfair competition arguments, including trespassing, depending on the case.
7.4 Representative or Collective Actions
Russian law provides for cases on protecting rights of group of entities (class action) if/when:
Based on the current practice – class actions are not widespread; trade mark owners prefer to individually enforce their rights.
7.5 Prerequisites and Restrictions to Filing a Lawsuit
Registration of the trade mark is a necessary requirement to have trade mark enforcement action.
A pre-trial letter is mandatory in case financial claims are made against the defendant. In this case, the lawsuit may be filed upon expiration of 30 days since the pre-trial letter was sent to the defendant.
7.6 Initial Pleading Standards
The initial pleadings standards in trade mark commercial litigation procedures require clear description of facts with reference to the documentary evidence and providing of legal arguments with reference to the legislation. It is allowed for the plaintiff to supplement additional arguments, including by filing additional briefs. Given the nature of the trade mark infringement disputes, the defendant may counter-argue (eg, bad-faith) or file a separate lawsuit on unfair competition. Revocation and non-use cancellation actions are heard separately.
7.7 Lawsuit Procedure
The following courts have jurisdiction in commercial trade mark infringement disputes:
- commercial courts of first instance located at the residence of the defendant (such courts exist in every constituent part of Russia);
- commercial appeal courts – second instance;
- the Intellectual Rights Court – third instance (hearing the appeal on the existing case record);
- the Supreme Court.
Before filing the lawsuit, the plaintiff may typically face costs on evidence preparation (eg, notarisation, sample purchase, investigation on the activity and financial position of the defendant).
Russian commercial procedure litigation requires that the trade mark owner needs to be either represented by themselves (eg, CEO) or by a qualified lawyer (in-house or outside counsel) with their legal diploma submitted to court, or a PhD in law, or by a registered trade mark attorney.
7.8 Effect of Trade Mark Office Decisions
While courts have absolute discretion in establishing similarity for designations and goods/services, decisions of the Trademark Office relating to the specific enforced trade mark may be taken into account by courts.
In case the Trademark Office recognises the trade mark is invalid (ie, revokes the trade mark), then the enforcement action will be closed, unless the decision of the Trademark Office is reversed by the Intellectual Rights Court.
7.9 Declaratory Judgment Proceedings and Other Protections for Potential Defendants
Declaratory judgment proceeding are not practised for trade mark infringement cases. The defendant needs either to raise objections during the litigation or consider trade mark invalidity disputes in case there are relevant grounds for it.
There are special provisions in law applied widely in case of counterfeit goods – such as seizure and destruction, police raids and criminal actions, customs seizures.
8. Litigating Trade Mark Claims
8.1 Special Procedural Provisions for Trade Mark Proceedings
Hearing of trade mark infringement disputes are subject to the general provisions of the Russian Commercial Procedure Code on the hearing of litigation disputes. In the first instance, the case is heard by a judge. The parties cannot select a specific judge, since case distribution among judges in a commercial court is done automatically.
8.2 Requirement to Establish Use of a Sign as a Trade Mark
It is necessary to establish that the defendant has used the sign as a trade mark to establish trade mark infringement.
As indicated by the Russian Supreme Court (Section 157 of the Resolution No 10 of 23 April 2019), the use of words (including common names) registered as verbal trade marks is not the use of a trade mark if it is carried out in a common sense way, and not for the purpose of individualisation of a particular product, work or service – for example, in written publications or in speech.
8.3 Factors in Determining Infringement
Under Section 3 Article 1484 of the Russian Civil Code, no one has the right to use, without the permission of the trade mark owner, designations similar to the trade mark in relation to goods for the individualisation of which the trade mark is registered, or similar goods, if as a result of such use there is a possibility of confusion.
The key factors in considering trade mark infringement are set by the Russian Supreme Court in Section 162 of the Ruling No 10 of 23 April 2019.
To establish the fact of a violation, danger of confusion by ordinary consumers of the relevant goods suffices.
Confusion is possible if, in general, despite some differences, consumers can perceive the disputed designation as the corresponding trade mark or if the consumer may believe that the designation is used by the trade mark owner.
The probability of confusion is determined based on the degree of similarity of the designations and the degree of similarity of the goods for these persons.
The similarity of goods is established on the basis of the substantial possibility of an ordinary consumer of the corresponding product having an idea that the goods emerge from the same source.
In this case, the court takes into account the type of goods, their purpose, the type of material from which they are made, the conditions of sale of goods, the circle of consumers, complementarity or interchangeability and other circumstances.
The establishment of similarity is carried out by the court based on the results of comparing the trade mark and designation (including by graphic, sound and semantic criteria), taking into account the evidence presented by the parties.
At the same time, the court takes into account in respect of which elements there is a similarity – the strong or weak elements of the trade mark and designation. The similarity of only unprotected elements is not taken into account.
Special knowledge is not required to establish the degree of similarity of designations and similarity of goods.
In the presence of relevant evidence, the court, determining the likelihood of confusion of the trade mark and the disputed designation, evaluates other circumstances, including:
- whether the trade mark is used by the holder in relation to specific goods;
- duration and scope of use of the trade mark by the holder;
- the degree of fame, recognition of the trade mark;
- the degree of consumer care (depending, among other things, on the category of goods and their price);
- whether the holder has a series of trade marks united by a common element with the disputed designation.
When determining the probability of confusion, evidence of the actual mixing of the designation and trade mark, including opinion polls of ordinary consumers of the relevant product, provided by the persons participating in the case, may also be taken into account.
The court takes into account the influence of the degree of similarity of designations, the degree of uniformity of goods, other circumstances on the likelihood of confusion, and not each of the relevant circumstances on each other.
8.4 Elements of Other Trade Mark Claims
Please note that Russian law does not define the concept of “dilution”. In this regard, the plaintiff may consider adoption of the arguments on dilution by blurring or tarnishment by using the general “unfair competition” arguments, namely arguing that the activities of the defendants threaten to decrease the distinctiveness and reputation of the plaintiff’s trade mark.
Nevertheless, as per the current practice, those argument are additional to the confusion arguments detailed in 8.3 Factors in Determining Infringement, which are the key in trade mark infringement cases.
The arguments relating to “cybersquatting”, including the arguments that the other side is engaged in regular inappropriate on-line use of trade marks as domain names, may be used in court to demonstrate the bad faith of the defendant. While for .RU domain names, litigation is currently the main option (UDRP out-of-court arbitration is not used for .RU domain names), the court regularly use UDRP-related principles in trade mark versus domain name disputes
8.5 Effect of Registration
Since registration is a mandatory condition for trade mark protection, registration is not a benefit, but a necessity for having enforcement action.
8.6 Defences against Infringement
The defendant may consider such defences as:
- whether the trade mark is used by the holder in relation to specific goods;
- duration and scope of use of the trade mark by the holder;
- the degree of fame, recognition of the trade mark;
- the degree of consumer care (depending, among other things, on the category of goods and their price);
- whether the holder has a series of trade marks united by a common element with the disputed designation.
8.7 Obtaining Information and Evidence
In Russia the plaintiff may file a motion to court asking the court to oblige the defendant or other side to provide the requested evidence (eg, sales amount). To obtain such disclosure the plaintiff needs to demonstrate that they took efforts by obtaining such evidence themselves – for example, by filing an attorney request to the other side.
8.8 Role of Experts and/or Surveys
The Supreme Court indicates that no special knowledge is required in establishing similarity of the goods and similarity of the designations. However, courts give serious weight to social opinion polls as evidence of actual confusion.
8.9 Trade Mark Infringement as an Administrative or Criminal Offence
Trade mark infringement may constitute administrative offence and – in case the causation of the damage is in the amount of RUB250,000 – a criminal action.
Typically, in such cases, the police are involved, acting based on the complaint filed by the trade mark owner or under the results obtained during the relevant inspections.
Upon detecting signs of the offence, the police secure evidence, conduct the necessary interrogations and examinations and submit the case to court; depending on the type of case, the court may impose fines or imprisonment or correctional works, as well as determining the destiny of the seized evidence.
The trade mark owner is entitled to file a civil lawsuit in claiming recovery of damages/compensation.
8.10 Costs of Litigating Infringement Actions
The costs – including attorney fees – for infringement cases are dependent on the complexity of the particular case in each dispute, not including disbursements such as translation, courier, notary and other related fees.
9.1 Injunctive Remedies
The trade mark owner may claim preliminary injunction (PI) at any stage of the proceedings, including even before filing the lawsuit on the merits.
For obtaining the preliminary injunctions it is necessary to justify that, shall the PI be not granted, the enforcement of the court decision will be complicated, or that non-application of the PI may cause significant damage to the plaintiff. The plaintiff will also need to argue that the PI will make it possible to keep the status quo between the parties.
The defendant may try to challenge the PI on appeal, as well as by providing a counter-bond which may be used to compensate the damage of the plaintiff in case the PI is not adopted.
As such, the typical PI practised in Russian courts for trade mark disputes include seizure of the allegedly counterfeit products pending adjudication of the dispute or court order to refrain from certain activities during the litigation procedure.
9.2 Monetary Remedies
The following monetary claims are available under Russian law for trade mark infringement:
- statutory compensation from RUB10,000 up to RUB5million – the final amount is determined by court in each individual case – applicable both for patent and design copyright; or
- twice the royalty under the recorded licence under comparable circumstances; or
- twice the price of sold goods by the defendant; or
- damages – actual damage and lost profits.
The court may order either full or partial reimbursement of attorneys’ fees incurred as result of the litigation (fees on participating in hearings, drafting, expenses to obtain evidence, etc).
After the court awards the money, it is then necessary to initiate the compulsory money-recovery procedure via the court’s bailiffs.
In assessing the monetary claims, it is necessary to prove the additional arguments – for example:
- information on expenses incurred by the owner;
- information of annual sales, if any;
- comparison of prices between the trade mark owner’s product and the defendant’s product;
- information on investments undertook;
- if available, and if the trade mark owner’s product is licensed in other jurisdictions, the amount of royalty;
- solid professional opinion from an auditor on likely losses of the trade mark owner due to the defendant’s activities;
- whether there were any customers that shift from the trade mark owner to the defendant;
- other documents that may be additionally considered.
The overwhelming majority of those arguments needs to be focused on Russia.
Those evidence shall be used to support application of criteria set for by the Supreme Court, such as:
- circumstances around the litigated trade mark (eg, public awareness);
- nature of the infringement;
- term during which unauthorised use took place;
- presence and degree of guilt of the infringer (whether the infringement is aggressive, whether it was committed more than once);
- possible monetary losses of the trade mark owner;
- whether unauthorised use of the trade mark formed a significant part of the defendant’s business.
9.3 Impoundment or Destruction of Infringing Articles
Russian law recognises the remedy of seizure and destruction of infringing products, as well as seizure and destruction of equipment and materials used for the most part to produce such infringing products.
9.4 Attorneys’ Fees and Costs
During litigation, each party carries their own expenses. As result of the proceedings, the winning party may file a motion to court asking to oblige the losing side to reimburse court expenses, including the attorney fees. The court determines the reimbursed attorney fees in each individual case, ranging from full award of attorney fees to reduction of such fees.
9.5 Ex Parte Relief
Trade mark relief requires the participation of both parties during the proceedings. An exception is consideration of the preliminary injunction motion (PI motion) – as discussed in 9.1 Injunctive Remedies – since PI motions may be heard by a judge ex parte without inviting the parties to the hearing.
9.6 Rights and Remedies for the Prevailing Defendant
The defendant may claim reimbursement of attorney fees. The arguments on non-infringement are given in the rationale part of the court decision (since there is no such notion as “declaration for non-infringement” under Russian procedural terms).
9.7 Customs Seizures of Counterfeits or Criminal Imports
The Russian legal system provides for effective border protection against counterfeit goods by using the powers of the customs authorities to seize the counterfeit goods, with subsequent notice to the trade mark holder.
For regular operation of the customs authorities on a specific brand, it is necessary to record the trade marks in the Customs Register of Intellectual Rights Objects, which ensures regular work on the customs for seizing the counterfeit goods. For recordation in the register, it is necessary to provide the information on the trade mark registration, protected goods and a list of authorised importers. Typically, registration in the Customs Register results in seizures and destruction of counterfeit products with involvement of the court within administrative offence procedures, with the right-holder as the third party.
For parallel imports, the customs may seize the original goods not intended for the Russian market – in this case, the customs will inform the trade mark owner which will allow the trade mark owner to file for preliminary injunction to stop introduction into sale. However, as per the Constitution Court clarification, subsequent destruction of such goods is allowed only if they do not meet security and technical quality requirements, thus compensation claims are the most effective remedy against parallel importation in many cases.
9.8 Different Remedies for Different Types of Trade Marks
Russian law does not provide a distinction of remedies depending on the type of the mark. It shall be noted that the owner of a well-known trade mark (registered as well-known by the Trademark Office) may enforce the well-known trade mark even in case of dissimilar goods/services.
10. Resolving Litigations
10.1 Options for Settlement
Courts create the conditions to allow parties to reach settlement, including by postponing the hearings based on a joint motion from all the parties. Nevertheless, entering into settlement is a procedural right, not an obligation of the plaintiff or defendant.
10.2 Prevalence of ADR
The most common method of resolution in the current procedural framework is for the parties to enter into negotiations which may result in a settlement agreement subject to approval from court.
10.3 Other Court Proceedings
In Russia, the following courts are relevant to this matter:
- trade mark invalidity actions are heard by the Chamber for Patent Disputes (and the decision of the Trademark Office as result of those procedures may be appealed to the Intellectual Rights Court);
- non-use cancellation cases are heard by the Intellectual Rights Court;
- infringement action are heard by commercial courts of first instance located in each constituent part of Russia.
The commercial court hearing the infringement action is entitled to order the infringement case be stayed until adjudication of the invalidity or non-use cancellation action.
11.1 Timeframes for Appealing Trial Court Decisions
It is possible to appeal the decision of the trial court to the appellate court within one month since the full text of the trial court decision is produced.
The decision of the appellate court may be appealed to the Intellectual Rights Court within two months since the full text of appellate court decision is produced.
The decision of the Intellectual Rights Court may be appealed to the Supreme Court within also two months since the full text of the Intellectual Rights decision is produced.
11.2 Special Provisions for the Appellate Procedure
Russian procedural law does not provide for special provision dealing with trade mark proceedings, except for the fact that the third instance in such cases is the Intellectual Rights Court.
11.3 Scope of the Appellate Review
At the second instance (appellate courts) the court reviews the fact of the case – and any evidence may be submitted only in case of reasonable excuse of non-submission during the first instance. The Intellectual Rights Court and the Supreme Court do not allow submission of new evidence and cannot re-evaluate established evidence of the case; in such courts, the focus is on the review of whether the conclusions of the court match to the case file, as well as correct application of material and procedural law.
12. Trade Marks and Other Intellectual Property
12.1 Copyright and Related Rights
Russian law does not ban the situation where the certain designation may be protected both from trade mark and copyright prospective – the typical case is the character as copyright asset and the trade mark depicting the character.
As such, Russian law does not permit registration of surnames as trade marks – however, in case the surname belongs to a well-known person, registration of the trade mark without the consent of such person will be complicated.
12.2 Industrial Design
As part of forming an IP portfolio, the IP holder may consider obtaining, for example, a 3D trade mark or a trade mark relating to the product's label, as well as consider obtaining a design patent protecting the appearance of the product, in case such appearance meets the criteria of novelty and originality.
Further competition law protects trade dress of the product from copying/imitation.
12.3 Rights of Publicity and Personality
In Russia, names of celebrities may be trade marked – on condition there is relevant consent from such a person for trade mark registration. In case the celebrity applies for trade mark registration, they need to have the status of the sole trader.
12.4 Unfair Competition
Russian competition law bans as unfair competition both unauthorised use of the trade mark by competitors, and bans copying or imitating the style or appearance of the specific product.
13. Additional Considerations
13.1 Emerging Issues
Among the emerging issues is the appearance of the Eurasian trade mark system, the effect of which as an additional tool for forming a trade mark portfolio is yet to be observed.
Another important development is the requirement during the registration of medicines to submit a guarantee letter, warranting that no intellectual rights infringement (that applies to trade marks as well) will result from such medicines' registration.
13.2 Trade Marks and the Internet
In Russia, information intermediaries are typically liable for trade mark infringement on the internet under certain conditions – these include non-reaction to the justified claim of the trade mark owner or authorised representative claiming to remove the infringing content (eg, offers of counterfeit products online).
13.3 Trade Marks and Business
There is no provision under Russian law obliging a company to have a trade mark. However, having a trade mark is a competitive advantage from various points of view, including the following:
- it provides legal certainty and defences against claims from competitors;
- it decreases risks of facing a trade mark troll, with the subsequent necessity to revoke such a trade mark;
- it facilitates co-operation with major online platforms and aggregators that welcome the presence of the trade mark;
- it provides a legal framework for various IP monetisation deals (in Russia, “franchising” is only legally possible in case the franchised assets include trade marks);
- it eases domain name resolution issues and provides an effective tool in fighting bad faith domain name registrations.