According to Russian law, a trademark is defined as “a sign capable of individualizing the goods/services of legal entities or individual entrepreneurs.” (Art. 1477 of the Civil Code of the Russian Federation).
It is important to note that Russian law does not allow trademark registrations in the name of natural persons unless they are registered as individual entrepreneurs. Therefore, if a foreign physical person files a trademark application, they should double check whether they may be considered an individual entrepreneur according to their country’s local law. Individual entrepreneurship is a type of enterprise that is owned and run by a single person and in which there is no legal distinction between the owner and the business entity. Russian law, however, does not require any evidence that a trademark applicant is an individual entrepreneur at the stage of registering the trademark.
Unregistered trademarks do not enjoy legal protection in Russia
Russia is a "first to register" country. Under Russian trademark law, trademark rights are not acquired by actually using the designation in respect of the sale of goods or the advertising or performance of services; they are granted to the first person to file a trademark application. With the exception of a very narrow group of famous brands, the actual use of a brand in Russia does not give the brand owner any legal rights. Registration of a trademark outside Russia does not give the owner any rights either.
Registration of trademarks is not mandatory in Russia. However, the only protection afforded to non-registered brands in Russia may be found in unfair competition law based on Article 10-bis of the Paris Convention. In practice, protection of unregistered brands in Russia on the basis of this law is expensive and unpredictable. Accordingly, we do not recommend our clients to rely on unfair competition law to ensure brand protection. The simplest and the most straightforward way to protect your brand is to file a trademark application with the national trademark registrar – Rospatent.
Signs that can be registered as trademarks in Russia
Word, figurative, three-dimensional, and other signs or combinations thereof can be registered as trademarks.
A trademark may be registered in any color or color combination.
It is possible to register sounds, colors, holograms, olfactory marks, and some other types of non-traditional trademarks as long as they meet the distinctiveness requirement (capability of distinguishing your goods and services from those of others in the market).
Eurasian Customs Union
It is worth noting that Russia is a member of the Eurasian Customs Union (EACU). Apart from Russia, the Union‘s members as of today are Armenia, Belarus, Kazakhstan, and Kyrgyzstan. The EACU represents a single customs territory without customs control between any of the member states, so the goods can freely circulate among the countries. This situation has created new challenges for trademark holders in the member states. To ensure efficient trademark protection on the Union’s territory and to avoid possible pitfalls, it may be advantageous to register your trademark in all the member states. We are ready to help with professional advice in any particular case.
Our trademark attorneys will assist you in registering your trademark (service mark) in Russia and in the former USSR countries, namely in Armenia, Azerbaijan, Belarus, Estonia, Georgia, Kazakhstan, Kyrgyzstan, Latvia, Lithuania, Moldova, Tajikistan, Turkmenistan, Ukraine, and Uzbekistan, under the Madrid System (international application) or in accordance with the national procedure.
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.
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:
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 most relevant and often used reasons for objecting to an application are that the trademark at issue lacks distinctiveness or is misleading.
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.
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.