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.
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:
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 mark can be used
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 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.
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