Sojuzpatent is the oldest leading law firm providing services in the field of IP protection in Russia and other countries, including Armenia, Azerbaijan, Belarus, Estonia, Georgia, Kazakhstan, Kyrgyzstan, Latvia, Lithuania, Moldova, Tajikistan, Turkmenistan, Ukraine, and Uzbekistan.
Sojuzpatents team of over 160 qualified specialists includes 50 registered Russian and Eurasian patent and trademark attorneys and litigation lawyers. Between them, they offer inclusive and highly practical expertise in all disciplines of science and technology.
Our clients represent about 90 countries from around the world.

Trademarks

Do foreign applicants need a Russian or Eurasian attorney?

It is mandatory according to Russian legislation that foreign applicants be represented before Rospatent (RUPTO) by a Russian patent attorney who is entered onto the Russian Register of Patent Attorneys.

Similarly, for prosecution of a Eurasian patent application, applicants having no residence or principal place of business in the territory of any State party to the Eurasian Convention are required to be represented by a registered Eurasian patent attorney.

To be successfully guided through intricacies of national and regional regulation and to ensure the widest possible scope of protection, it is important for the applicant to retain an experienced patent attorney skilled in the specific technical field.

Is it possible to fast-track trademark registration in Russia?

In order to accelerate the registration of a trademark in Russia the applicant may use the RUPTO’s paid service on conducting informational search regarding all the classes of Nice Classification. The search is conducted within 10 days from the date of filing the respective applicant’s petition. Using the search results when considering the application allows to shorten the term of sending the first examination communication to the applicant and accordingly to shorten the time for taking the decision on the registration to 2 months. The official tariff for this service amounts to 96,000 RUB.

In what way trademark differs from trade name, logo, or brand? What does registration result in – trademark, logo, or brand?

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.

Can importers bring to Russia products made in foreign countries and marked by that product manufacturer’s trademark registered in Russia, without consent of the manufacturer for the import?

Importing into the territory of the Russian Federation of goods bearing the trademark protected in Russia without consent of trademark owner constitutes a breach of Russian legislation currently in force.

What compensation can a trademark owner claim from the infringer for the breach of the intellectual property rights?

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 of goods illegally bearing the trademark, or compensation in the amount equaling double cost of the right to use the trademark that is to be determined based on the cost of rightful use of the trademark normally applicable in comparable circumstances.

What kind of documents evidencing use of the trademark can the trademark owner present to court?

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:

  • payment documents showing that the goods marked with the trademark were introduced into civil circulation;
  • documents showing that the trademark was used under control of the owner if the mark was used not by owner itself (e.g. distribution or license agreements regarding the trademark);
  • advertising material;
  • customs declarations confirming the imports of the marked goods to the territory of the Russian Federation; and
  • documents showing the goods with the trademark were exhibited on fairs.
Is sending a warning letter obligatory for initiating a non-use cancellation action against a Russian trademark?

Russian legislation provides for obligatory pre-trial procedure in trademark non-use cancellation actions. In order to meet the requirements of the said obligatory pre-trial procedure the party which is interested in the trademark cancelation should send an Offer of the Interested Person to the trademark owner. The Offer of the Interested Person should contain an offer addressed to the trademark owner either to waive the rights for the trademark or to assign the trademark to the party that sent the offer (interested person).

The trademark cancellation lawsuit may be filed during 30 days upon expiration of two months from the date of forwarding the Offer of the Interested Person.

Should I send a warning letter before filing a trademark infringement lawsuit in Russia?

According to Russian IP legislation, in commercial disputes on IP rights infringements, a warning letter (cease-and-desist letter or CDL) is obligatory and should be forwarded to the infringer before filing the lawsuit in case the right owner desires to claim damages or compensation.

The lawsuit can be filed if the infringer fails to satisfy the claims contained in the warning letter within thirty days after its dispatch.

Is forum shopping available in patent/trademark litigation in Russia?

For most disputes related to patent invalidation/trademark cancellation, the venue is determined directly by Russian law. It is either the Federal executive authority in the sphere of intellectual property (Rospatent, the Chamber for Patent Disputes) or the Court for Intellectual Property Rights.

At the same time, in infringement lawsuits, forum shopping is possible when the claimant can name multiple persons as co-defendants (e.g., manufacturer/importer, wholesalers, and retailers). In such cases, the claimant has the option to choose with which territorial court to file its action.

If my Russian trademark is illegally used in a domain name, may I recourse to UDRP procedures in order to transfer the disputed domain name without litigation?

If the domain name is registered in one of the following generic Top-Level Domains (gTLDs): .com, .info, .net, .org, .biz, .name, .pro, .aero, .asia, .cat, .coop, .jobs, .mobi, .museum, .tel, .travel or in a new gTLD, your dispute may be resolved out of court on the base of the Uniform Domain-Name Dispute Resolution Policy (UDRP).

However, UDRP or similar dispute resolution proceedings are not currently available for .ru domains. In such cases, there are no options apart from litigation in court if the administrator does not concede to the trademark holder’s demand.