Trademark invalidation

A registered Russian trademark may be challenged by any interested person:

  • on the basis of “absolute” grounds for refusal - during the whole trademark’s lifetime; and
  • on the basis of “relative” grounds - within five years from the publication date.

According to Russian law, a cancellation action based on absolute or relative grounds is to be filed with the Russian Patent and Trademark Office (Rospatent). The Rospatent decision is appealable to the Intellectual Property Court.

Sojuzpatent has decades of experience in all kinds of trademark disputes, representing either a trademark owner or an opposing party. In many cases, we help our clients to reach a favourable settlement.

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Trademark invalidation
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DO YOU HAVE ANY QUESTIONS? ASK OUR EXPERT!

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.

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.
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.

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.

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