How to avoid losing your Russian trademark in 2025
By Tatiana Petrova, Head of Trademark Department, Russian patent and trademark attorney
Preface
From the spring of 2022, many foreign companies ceased operations in Russia. Many of these companies had been operating in Russia for numerous years and had established goodwill and a favorable reputation for their products and trademarks. Once they have been out of the market for three years, their trademarks will become vulnerable to cancellation on the grounds of non-use. Therefore, many companies are now facing the possibility of losing the trademark protection they have developed and enjoyed over the years.
Threat of losing rights
Already today, the registry of applications for trademarks in Russia contains many well-known foreign brands filed by third parties. Until now, such applications have been denied by the Russian Patent Office examiners on the basis of previously registered trademarks. If in response to the refusal the new applicant initiates a non-use cancellation action against the opposed mark, the rights holder has been able to adduce proof of the use of the mark in late 2021 to early 2022.
As we approach the year 2025, however, the risk of losing such marks in non-use cancellation lawsuits is increasing. Russian law stipulates that a trademark registration can be cancelled at the request of a third party on the basis of the rights holder’s failure to use it during any three consecutive years after its registration. Therefore, to preserve their rights, trademark owners must provide evidence of use of the mark within the three-year period preceding the dispatch of the obligatory pre-trial letter sent by the challenging party. Failure to adduce such evidence will render it impossible to retain the trademark rights, which may have been created decades ago and could still become handy in decades to come.
How non-use cancelation works
As mentioned, the claimant must forward an obligatory pre-trial letter (called “the letter of an interested person”) to the trademark owner before initiating the non-use proceeding. The trademark owner will then have two months to resolve this case amicably by either granting a letter of consent where possible, assigning the mark to the claimant, or voluntarily cancelling it. A non-use cancellation action is to be filed with the specialized Court on Intellectual Rights after two months from the date of sending the pre-trial letter but no later than three months after that date.
In the proceedings, the claimant must demonstrate a legitimate interest in canceling the trademark. In order to confirm the claimant’s fair interest, claimants may present documents confirming the ownership of a similar trademark registration, the manufacturing of similar goods, an intention to use a similar trademark in the territory of Russia for relevant goods, and so on.
The burden of proof in such proceedings lies with the registration owner, who must show evidence of use of the mark by the trademark owner, a licensee or any other entity under the trademark owner’s control in the form in which it is registered and for the full list of goods/services. If the owner of the challenged registration fails to provide due evidence of trademark use or fails to attend the hearings, the registration will be cancelled.
It should be noted that formal, limited use of a trademark may not be considered by the court as evidence of its genuine use. No strict criteria are stipulated in the legislation as to what constitutes formal or genuine use. Such adjudication remains at the discretion of the court, which takes into account the nature of the goods for which the trademark is being used and other criteria.
What can be done to protect a trademark?
1. Although many companies do not officially sell their goods in Russia, their products are still imported into the country by independent distributors. Such goods enter Russia after being purchased in other countries. In these cases, trademark holders may be recommended to regularly collect information on the import and sale of such goods in Russia so that they can provide evidence of trademark use in a potential non-use cancellation action. The above evidence should not be declarative. Documentary confirmation of the delivery and sale of goods is required, meaning that the trademark holder must be able to present copies of agreements, receipts, customs declarations and other documents.
In some cases, it may make sense to enter into an agreement with some of the resellers in order to show proof of the use of the mark “under the owner’s control.” It goes without saying that this only applies to products that are not affected by restrictions imposed by official authorities that have jurisdiction over the trademark owner’s business.
2. Another way to protect trademark registrations is to refile new trademark applications in Russia. Russian laws do not require the mandatory use of a trademark to file and register an application. Such newly registered marks will make it pointless for trademark squatters to file someone else’s trademarks in their name.
However, it should be noted that Russian legislation does not provide for the coexistence of identical trademarks for identical goods, even if they are registered in the name of the same person. Trademark holders are therefore faced with a choice: to retain the old trademark, which enjoys an earlier priority but is vulnerable to cancellation on the grounds of non-use, or to register a new mark and loose the priority. To avoid having to make such a choice while also protecting the brand, an applicant should file a new mark that is not identical to the previous ones. For example, if you have registered a verbal mark, you can file it with some figurative element or other verbal element or you can file it for an extended list of goods and services, and so on.
The best way to protect a trademark depends on the specific situation. Our company is happy to advise trademark holders on how they can best protect their brands in Russia.