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.
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.
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:
Who can sign a power of attorney to be submitted to the RUPTO, EAPO, Russian courts?
The signer does not have to hold any specific position or to be an executive of a certain rank. However, his or her position should be clearly indicated in the PoA. The signer should be duly authorized to act on behalf of the company, not just assigned to oversee certain cases. It is normally requested that the documents that empower the signer be mentioned in the text of the power of attorney. If the signer deals on the basis of a proxy, the powers of the person who has signed the proxy may also be checked. It is highly advisable that all the corporate titles coincide in different documents. For example, if the proxy is signed by the Chairman of the Board of Directors and the official title of the person who can sign according to the bylaws is Director, the respective Court may not accept the documents without requesting further clarifications.
Can importers bring to Russia products made in foreign countries and marked with that product manufacturer’s trademark registered in Russia, without consent of the manufacturer for the import?
Importation of goods bearing a trademark protected in Russia into the territory of the Russian Federation without the consent of the trademark owner constitutes a breach of the Russian legislation currently in force.
For more information on parallel importation, please refer to the Legislation News section.
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