If a trademark is used by a third party with the owner’s consent, we strongly recommend that a formal licensing agreement be signed between the trademark owner and said third party. Furthermore, according to Russian law, the right to use a trademark in Russia must be recorded with the Russian Patent and Trademark Office to become legally effective in Russia. The part of a licensing agreement related to transfer of rights comes into force only on the date of its recordation.
A licensing agreement can only be signed and recorded with respect to registered trademarks. In order to be recorded, an agreement should meet the mandatory requirements set forth by Russian law. It is important to know that currently Rospatent does not require the full text of the license agreement. Therefore, if a trademark holder signs a global agreement with their licensees worldwide covering a number of jurisdictions, they can file with the RUPTO only limited data, without disclosing any sensitive information.
Please contact us if you require further information on the subject.
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 most relevant and often used reasons for objecting to an application are that the trademark at issue lacks distinctiveness or is misleading.
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.
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:
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.
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.
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