If a trademark is used by a third party with the owner’s consent, we strongly recommend that a formal licensing agreement be signed between the trademark owner and said third party. Furthermore, according to Russian law, the right to use a trademark in Russia must be recorded with the Russian Patent and Trademark Office to become legally effective in Russia. The part of a licensing agreement related to transfer of rights comes into force only on the date of its recordation.
A licensing agreement can only be signed and recorded with respect to registered trademarks. In order to be recorded, an agreement should meet the mandatory requirements set forth by Russian law. It is important to know that currently Rospatent does not require the full text of the license agreement. Therefore, if a trademark holder signs a global agreement with their licensees worldwide covering a number of jurisdictions, they can file with the RUPTO only limited data, without disclosing any sensitive information.
Please contact us if you require further information on the subject.
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.
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.
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 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.
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.
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