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.
Can a single color be registered in Russia as a trademark?
A color can be registered in the Russian Federation as a trademark if it is proved that the color has acquired distinctiveness through extensive use and the color is associated by customers with the applicant.
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.
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.
Can a light be registered as a trademark in Russia?
In the Russian Federation, a light designation can be registered as a trademark.
If a light is applied for registration as a trademark in Russia, it will be necessary to provide a description of the light symbols, their sequence, duration of lighting, and some other features.
Should I send a warning letter before filing a trademark infringement lawsuit in Russia?
According to Russian IP legislation, in commercial disputes on IP rights infringements, a warning letter (cease-and-desist letter or CDL) is obligatory and should be forwarded to the infringer before filing the lawsuit in case the right owner desires to claim damages or compensation.
The lawsuit can be filed if the infringer fails to satisfy the claims contained in the warning letter within thirty days after its dispatch.
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