Trademarks in Russia

Trademark registration in Russia and neighboring countries

Trademark search
Conducting Trademark Search in Russia and Neighboring Countries
Registration in Russia
Trademark registration in the Russian Federation: national procedure
Provisional Refusal
Overcoming provisional refusals under the Madrid Agreement and the Madrid Protocol
REGISTRATION IN EURASIAN REGION
Registration in Neighboring Countries in Accordance with National Procedures
OPPOSITION TO TRADEMARKS
Filing Opposition to a Conflicting Trademark Application

Trademark post-registration life

Trademark renewals
Trademark renewals in Russia and neighbouring countries
Recordal of Changes
Recordation of changes in name, address, or ownership
Trademark Licenses
Recordation of licenses
Trademark invalidation
Representing clients in trademark invalidation disputes
Trademark Use/Non-Use
Assisting clients in non-use cancellation actions
Trademark infringement
Unauthorized trademark use
Customs Register
Customs Recordation of Trademarks in Russia

According to Russian law, a trademark is defined as “a sign capable of individualizing the goods/services of legal entities or individual entrepreneurs.” (Art. 1477 of the Civil Code of the Russian Federation).

It is important to note that Russian law does not allow trademark registrations in the name of natural persons unless they are registered as individual entrepreneurs. Therefore, if a foreign physical person files a trademark application, they should double check whether they may be considered an individual entrepreneur according to their country’s local law. Individual entrepreneurship is a type of enterprise that is owned and run by a single person and in which there is no legal distinction between the owner and the business entity. Russian law, however, does not require any evidence that a trademark applicant is an individual entrepreneur at the stage of registering the trademark.

Unregistered trademarks do not enjoy legal protection in Russia

Russia is a "first to register" country. Under Russian trademark law, trademark rights are not acquired by actually using the designation in respect of the sale of goods or the advertising or performance of services; they are granted to the first person to file a trademark application. With the exception of a very narrow group of famous brands, the actual use of a brand in Russia does not give the brand owner any legal rights. Registration of a trademark outside Russia does not give the owner any rights either.

Registration of trademarks is not mandatory in Russia. However, the only protection afforded to non-registered brands in Russia may be found in unfair competition law based on Article 10-bis of the Paris Convention. In practice, protection of unregistered brands in Russia on the basis of this law is expensive and unpredictable. Accordingly, we do not recommend our clients to rely on unfair competition law to ensure brand protection. The simplest and the most straightforward way to protect your brand is to file a trademark application with the national trademark registrar – Rospatent.

Signs that can be registered as trademarks in Russia

Word, figurative, three-dimensional, and other signs or combinations thereof can be registered as trademarks.

A trademark may be registered in any color or color combination.

It is possible to register sounds, colors, holograms, olfactory marks, and some other types of non-traditional trademarks as long as they meet the distinctiveness requirement (capability of distinguishing your goods and services from those of others in the market).

Eurasian Customs Union

It is worth noting that Russia is a member of the Eurasian Customs Union (EACU). Apart from Russia, the Union‘s members as of today are Armenia, Belarus, Kazakhstan, and Kyrgyzstan. The EACU represents a single customs territory without customs control between any of the member states, so the goods can freely circulate among the countries. This situation has created new challenges for trademark holders in the member states. To ensure efficient trademark protection on the Union’s territory and to avoid possible pitfalls, it may be advantageous to register your trademark in all the member states. We are ready to help with professional advice in any particular case.

Our trademark attorneys will assist you in registering your trademark (service mark) in Russia and in the former USSR countries, namely in Armenia, Azerbaijan, Belarus, Estonia, Georgia, Kazakhstan, Kyrgyzstan, Latvia, Lithuania, Moldova, Tajikistan, Turkmenistan, Ukraine, and  Uzbekistan, under the Madrid System (international application) or in accordance with the national procedure.

Mrs. Tatiana V. Petrova, Head of Trademark department
Head of Trademark department
DO YOU HAVE ANY QUESTIONS? ASK OUR EXPERT!

Is sending a warning letter obligatory for initiating a non-use cancellation action against a Russian trademark?

Is sending a warning letter obligatory for initiating a non-use cancellation action against a Russian trademark?


Russian legislation provides for an obligatory pre-trial procedure in trademark non-use cancellation actions. In order to meet the requirements of the said obligatory pre-trial procedure the party which is interested in the trademark cancelation should send the Interested Person's Offer to the trademark owner. The Interested Person's Offer should contain an offer addressed to the trademark owner either to waive the rights for the trademark or to assign the trademark to the party that sent the offer (interested person).

The trademark cancellation lawsuit may be filed during 30 days upon expiration of two months from the date of forwarding the Interested Person's Offer.


FILE A REQUEST

If my Russian trademark is illegally used in a domain name, do I have recourse to UDRP procedures in order to transfer the disputed domain name without litigation?

If my Russian trademark is illegally used in a domain name, do I have recourse to UDRP procedures in order to transfer the disputed domain name without litigation?


If the domain name is registered in one of the following generic Top-Level Domains (gTLDs): .com, .info, .net, .org, .biz, .name, .pro, .aero, .asia, .cat, .coop, .jobs, .mobi, .museum, .tel, .travel or in a new gTLD, your dispute may be resolved out of court on the base of the Uniform Domain-Name Dispute Resolution Policy (UDRP).

However, UDRP or similar dispute resolution proceedings are not currently available for .ru domains. In such cases, there are no options apart from litigation in court if the administrator does not concede to the trademark holder’s demand.


FILE A REQUEST

Do foreign applicants need a Russian trademark attorney?

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.


Get a Quote for a Trademark Application

What compensation can a trademark owner claim from the infringer for the breach of intellectual property rights?

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.


FILE A REQUEST

What are the usual reasons for a trademark registration refusal in Russia?

What are the usual reasons for a trademark registration refusal in Russia?


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 claimed designation lacks distinctiveness;
  • it contains misleading, confusing or deceptive elements;
  • it contains elements that are contrary to public policy or to accepted principles of morality;
  • it consists of official arms, flags or other state emblems.

The most relevant and often used reasons for objecting to an application are that the trademark at issue lacks distinctiveness or is misleading.


Get a Quote for a Trademark Application