Trademarks

Do foreign applicants need a Russian trademark attorney?

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

To be successfully guided through the intricacies of national regulation and to ensure the needed scope of protection, it is important for the applicant to retain an experienced attorney.

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 for conducting informational search in all 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  shortening the term of sending the first examination communication to the applicant and accordingly shortening the registration decision time to 2 months. The official tariff for this service amounts to 94,400 RUB.

Can a single color be registered in Russia as a trademark?

A color can be registered in the Russian Federation as a trademark if it is proved that the color has acquired distinctiveness through extensive use and the color is associated by customers with the applicant.

Can a light be registered as a trademark in Russia?

In the Russian Federation, a light designation can be registered as a trademark.

If a light is applied for registration as a trademark in Russia, it will be necessary to provide a description of the light symbols, their sequence, duration of lighting, and some other features.  

What are the usual reasons for a trademark registration refusal in Russia?

Apart from so-called relative grounds for refusal (likelihood of confusion with other rights protected in Russia), there are four basic (absolute) grounds for rejecting a trademark application, namely:

  • the claimed designation lacks distinctiveness;
  • it contains misleading, confusing or deceptive elements;
  • it contains elements that are contrary to public policy or to accepted principles of morality;
  • it consists of official arms, flags or other state emblems.

The most relevant and often used reasons for objecting to an application are that the trademark at issue lacks distinctiveness or is misleading.

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

The words “brand”, “logo”, “label”, etc. are colloquial terms often used as synonyms for a 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.

A 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 the trademark owner's permission, nobody shall use designations which are identical to the trademark or designations that are similar to the 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 with that product manufacturer’s trademark registered in Russia, without consent of the manufacturer for the import?

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

For more information on parallel importation, please refer to the Legislation News section.

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

The trademark owner can choose to claim from the infringer damages or a compensation payment in an amount ranging from RUR 10,000 to 5,000,000 (the specific amount is to be determined by the court based on the infringement circumstances), or compensation in an amount equaling double the price of the goods illegally bearing the trademark, or compensation in an amount equaling double the cost of the right to use the trademark  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 the 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 the control of the owner if the mark was used not by the 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 at fairs.
Is sending a warning letter obligatory for initiating a non-use cancellation action against a Russian trademark?

Russian legislation provides for an 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 the Interested Person's Offer to the trademark owner. The Interested Person's Offer 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 Interested Person's Offer.

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 their action.

If my Russian trademark is illegally used in a domain name, do I have 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.