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Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Foreign applicants must be represented by a Russian trademark attorney registered with the RUPTO. Therefore, in order for an application to be filed in the name of an entity residing outside Russia, such entity must appoint a Russian trademark agent to represent the company in all trademark prosecution proceedings.
The power of attorney can be submitted independently from the trademark application, but filing it later may delay the examination. That said, there are neither strict deadlines for filing the power of attorney with the RUPTO, nor a late filing fee.
A power of attorney should be issued by the applicant and signed by the duly authorised person with an indication of that person’s name and position (title). The date and place of signature should be indicated as well.
Neither notarisation nor legalisation of the power of attorneys is required.
What information and documentation must be submitted in a trademark registration application?
The following information and documentation shall be included in the trademark application:
- the applicant’s name and address;
- a list of goods and/or services (in accordance with the Nice Classification) for which a trademark is to be registered. A class heading does not automatically protect all the goods/services included in the corresponding class;
- one electronic print-out of the trademark of good quality;
- the power of attorney (although as noted above, the power of attorney can be submitted after the trademark application); and
- a certified copy of the first (home) application (in case of a priority claim under the Paris Convention).
What rules govern the representation of the mark in the application?
The representation of the mark in the application is governed by Decree 482/2015 of the Ministry of Economic Development.
Are multi-class applications allowed?
Multi-class trademark applications are allowed.
Is electronic filing available?
Electronic filing is available. In case of non-electronic filing, the official fees increase by 30%.
What are the application fees?
Formal examination (in one class) is RUB2,450 and RUB700 for each additional class over five.
Substantive examination (in one class) is RUB8,050 and RUB1,750 for each additional class over one.
How are priority rights claimed?
A priority claim made under the Paris Convention must be accompanied by a certified copy of the first (home) application. The filing particulars should correspond to those stated in the home application. The home application can be submitted after filing an application under the Paris Convention with the RUPTO, but no later than three months after filing with the RUPTO. This term cannot be extended. Split-priority is not possible in Russia.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Word, graphic and combined trademark searches are available through the RUPTO. The searches are not required before filing, but are strongly recommended in order to determine the availability and registrability of designations.
The official fee for a standard one-week word search is RUB12,390 for one class and RUB3,186 for each additional class.
What factors does the authority consider in its examination of the application?
The application process involves a formal examination followed by a substantive examination.
The formal examination is conducted within a month of filing. The examiner checks both the presence in the application of the requested documents and their compliance with the established requirements. If all formal requirements are met, then the substantive examination will start. Otherwise, the application will be rejected.
Does the authority check for relative grounds for refusal (eg, through searches)?
A trademark application may be rejected either based on absolute or relative grounds, or both on absolute and relative grounds.
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, as elements of the trademark, protected distinguishing features of other parties (and confusingly similar signs), as well as copyrighted works owned by third parties, names, pseudonyms (or derivatives thereof), pictures, facsimiles of famous persons and industrial designs owned by third parties.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Following the substantive examination, the applicant is notified of any shortcomings, along with an invitation to submit arguments and proofs to remedy the issues identified. The examiner will take the applicant’s arguments into account when a decision is taken if these arguments are submitted within six months of the issuance of the said notification.
Can rejected applications be appealed? If so, what procedures apply?
An applicant may appeal any decision by the RUPTO with the Chamber of Patent Disputes of the RUPTO within four months of the decision issuance. The chamber’s decision may be further appealed to the Russian IP Court within three months.
When does a trademark registration formally come into effect?
A trademark registration becomes effective within one month of payment of the registration fee.
What is the term of protection and how can a registration be renewed?
Trademark registrations are valid for 10 years from the date of filing of the application. Registrations can be renewed an unlimited number of times and each time for a 10-year period.
What registration fees apply?
The official fee for registration is RUB11,200 and RUB700 for each additional class over five; the official fee for issuance of the trademark certificate is RUB1,400.
What is the usual timeframe from filing to registration?
The timeframe from filing to registration is typically eight to 10 months.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
There is no opposition system in Russia with respect to pending applications. However, the law provides for the following procedure:
- The RUPTO should publish information on all trademark applications;
- Third parties have the right to review all trademark documents on file and not only those included in the original trademark applications’ filings; and
- Third parties have the right to submit to the RUPTO their observations against pending trademark applications before any official action is taken.
As examiners may take into account these observations during their examinations of any applications, these letters may be effective ways to ensure that prior rights are taken into consideration.
What is the usual timeframe for opposition proceedings?
An invalidation action against a trademark based on prior rights can be brought. Specifically, within five years of publication of the information on trademark registration in the RUPTO’s Official Bulletin, the owner of prior trademark rights has an opportunity to file an invalidation action against the trademark registration with the Chamber of Patent Disputes of the RUPTO. In case of such an invalidation action, the trademark owner is notified accordingly and both parties are invited to attend hearings to consider the matter. Following the hearings, the Chamber of Patent Disputes of the RUPTO makes a decision – either:
- rejecting the invalidation action and leaving the trademark in force; or
- invalidating the mark in full or partially.
This procedure can take three to four months.
Are opposition decisions subject to appeal? If so, what procedures apply?
An invalidation decision from the Chamber of Patent Disputes of the RUPTO may be appealed within three months to the Russian IP Court.
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