Non-Use Cancellation Actions

In accordance with Article 1486 of the Civil Code of the Russian Federation, legal protection of a trademark may be terminated in relation to all goods or a part of goods listed in the registration if the trademark is not used continuously for any three years after its state registration. The “partial” cancellation may take place in case the applicant has registered their trademark in redundant classes (categories) “just in case,” without the intention to manufacture respective goods or provide relevant services.

Legal interest

A trademark non-use cancellation action should be filed by any interested person with the intellectual property court after fulfilling an obligatory pretrial procedure.

The applicant’s interest must be proven. The following facts inter alia may prove the legal interest:

• they are the rights holder of a company name or domain name that is confusingly similar to the trademark at issue; and
• they produce similar goods (or provide similar services) and will use this trademark (service mark) in their business activity.

In many cases, a non-use cancellation action is provoked by the Russian Patent and Trademark Office’s refusal to register a trademark in which (refusal) an earlier trademark has been cited. However, the fact of receiving such a refusal is not considered per se sufficient proof of the applicant’s legal interest in invalidating the opposed mark.

Proof of trademark use

The burden of proof of trademark use lies with the rights holder.

Genuine use means actual use by

• the rights holder,
• the licensee, or
• any person acting under the rights holder’s control.

The mark can be used

• on goods, including the labels and packaging of goods that are produced, offered for sale, sold, exhibited, or entered into civil circulation within the Russian territory in any other way as well as kept or transported for this purpose or imported into Russia;
• during rendering services or the fulfillment of works;
• on documents connected with entering the goods into civil circulation;
• while offering goods for sale as well as in announcements, on signboards, and in advertising; and
• on the Internet, including in a domain name.

The use of a trademark with a change to its individual elements that does not affect its distinguishing ability and does not limit the legal protection granted to it is also recognized as the use of the mark.

In accordance with Paragraph 3 of Article 1486 of the Civil Code of the Russian Federation, a court hearing a trademark non-use case should consider the evidence provided by the rights holder that the reasons for non-use are beyond their control (based on Article 19 of the TRIPS Agreement, of which the Russian Federation is a party).

Our role

Our lawyers are ready to advise you on all issues related to the cancellation of a trademark because of its non-use and represent your interests at the Intellectual Property Court regardless of your role as the attacking person or the rights holder of the challenged trademark. In many cases, we help the parties reach favorable settlements.

Featured specialist

Mr. Maxim V. Mikhailov

Head of Legal Department

Get expert advice+7 (495) 221-8880

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