The words “brand”, “logo”, “label”, etc. are colloquial terms often used as synonyms to trademark (service mark). Russian law instead uses only one legal definition – trademark (service mark). Thus, the registration of a designation with the patent office results in a trademark.
Trademark (service mark) is a designation used for individualization of goods (or services) of business entities or individual entrepreneurs, the IP rights to which belong to the trademark owner and are evidenced by a trademark certificate. In Russia trademarks can not be initially registered in the name of natural persons (individuals).
Trademarks can be in the form of a word, design, combination, three-dimensional shapes, sound marks etc. The owner of the trademark can indicate that it is registered and protected in Russia by placing one of these designations next to the trademark:
“R”, ®, “trademark”, “registered trademark”.
Without permission of the trademark owner, nobody shall use designations which are identical to a trademark or designations that are similar to a trademark, in respect of the goods for individualization of which the trademark is registered, or homogenous goods, if such use may result in confusion of customers.
This decision should be made on a case-by-case basis, depending on the subject matter and goals of patenting, as well as taking into account the specifics provided in the table below.
|Object of protection||Product (in particular device, substance, strain of microorganism, cell culture of plants or animals) or method||Device|
|Patentability criteria||Novelty, inventive step, industrial applicability||Novelty, industrial applicability|
|Term of protection||20 years (with possible extension up to 5 years for inventions relating to such products as a drug, pesticide or agrochemical, which use requires obtaining the established by law authorization, in case more than five years lapse from the date of filing of the patent application to the date of obtaining of the first authorization)||10 years|
|Approximate time to obtain a patent||24 – 30 months||6 - 12 months|
As one can see from the table, only a device can be protected as a utility model. At the same time invention patents grant protection to each of the devices, chemical substances, strains of microorganisms, cell cultures of plants or animals as well as methods. For example, if there is a need to obtain patent protection for a chemical substance, one should file an application for the invention rather than for the utility model.
As far as such patentable object as device is concerned, we should point out that one can obtain a utility model patent easier than an invention patent, since the utility model is not required to have the inventive step (unlike the invention). Thus, in order to get a utility model patent one could take two previously known devices and merely combine them, also proving novelty and industrial applicability. Inventive step is not required in this case.
However, the extent of legal protection of an invention is somewhat broader than the one of a utility model, because the assessment of infringement of IP rights includes equivalents doctrine.
When choosing between a utility model and an invention patent, one should also consider the risk of patent invalidation. Since inventions are subject to additional patentability criterion of inventive step, possible invalidation actions can have additional grounds – lack of inventive step.
Patent applications for inventions created in the Russian Federation can be filed in a foreign country or with the international organization upon expiration of six months since the date of relevant application filing with RUPTO, if within the indicated term the applicant is not notified of the fact that the application contains state secret data. Application for invention or utility model can be filed before the expiration of the above mentioned six months period but after the clearance for state secret data is performed at the request of the applicant.
Importing into the territory of the Russian Federation of goods bearing the trademark protected in Russia without consent of trademark owner constitutes the breach of the Russian legislation currently in force.
Yes. However, the Eurasian patent covers eight countries, including the Russian Federation, only in case of timely payment of patent annual fees in relevant countries. That is why obtaining Russian and Eurasian patents based on the same priority application is not practical, i.e. it entails rightholder’s additional expenses connected with filing, prosecution and then maintaining the patent in force. However, this may prove practical for specifically important inventions, in respect of which the risk of opposition is very high.
There is a so-called six months novelty grace period. The disclosure of information relating to the invention by the inventor, applicant or by any person having obtained the information directly or indirectly from them (including when invention is displayed at an exhibition), as a result of which information on the subject matter of the invention has become publically available, does not constitute the circumstance hampering the recognition of the invention as patentable, provided that the patent application was filed with RUPTO within six months from the date of relevant information disclosure.
Trademark owner can choose to claim from the infringer the damages or compensation payment in the amount ranging from RUR 10,000 to 5,000,000 (specific amount is to be determined by the court based on the infringement circumstances), or compensation in the amount equaling double price for goods illegally bearing the trademark, or compensation in the amount equaling double cost of the right to use the trademark, which is to be determined based on the cost of rightful use of the trademark normally applicable in comparable circumstances.
The inventor holds the invention right of authorship, i.e. the right to be legally recognized as the person who made the invention by own creative work. Right of authorship cannot be alienated or transferred. Refusal from the authorship right is void. Right of authorship is protected indefinitely.
Current legislation provides that a trademark can be terminated based on a non-use cancellation action filed by an interested party with the Intellectual Property Court in case the mark is not in use for a continuous period of 3 years.
In order to maintain legal protection of its trademark the owner should provide the court with proper evidence of use.
The following can be submitted as proof of use: