Opposition to a Russian Trademark Application

The Russian Trademark and Patent Office conducts examination of trademark applications, which includes examination based on “relative” grounds for refusal. Potentially, an examiner may, at his or her own initiative, issue a refusal of a conflicting application based on similarity to earlier trademarks.

Russian law makes provision for a “soft” opposition procedure to pending trademarks. As stipulated by law, any person may file an opposition to a pending trademark application with Rospatent and this opposition should be taken into account by the examiner. The procedure does not include interparty hearings and the party who filed the opposition is not notified of the outcome of its consideration. It is not possible to suspend or revoke such an opposition. The opposition should be filed before a first office action or a preliminary refusal (if any) is issued. Therefore, there is no specific deadline for filing an opposition to a trademark. We recommend filing the opposition as soon as possible, but it is reasonable to file it within 5-6 months of the conflicting application filing date.

The opposition procedure is less formalized and much faster and cheaper than filing cancellation actions against a trademark after its registration. Therefore, we recommend that our clients use this possibility and file “soft” opposition at the stage when a conflicting trademark is still under examination.

If you missed the possibility to file an opposition, or if the examiner did not accept your arguments and registered the conflicting trademark, it is still possible to file a post-registration cancellation action against the registered trademark. If the cancellation action is based on earlier rights, it may be filed within 5 years, starting from the publication date of the trademark registration. A cancellation action may be filed on the basis of prior trademarks, copyrights, designs, company names, or some other third parties’ prior right. Furthermore, a cancellation action may be filed based on “absolute” grounds for refusal (such as lack of distinctiveness or dilution) or unfair competition and so on. Cancellation actions based on these grounds may be filed within the whole term of validity of the conflicting trademark registration.

Our attorneys will assist you in filing oppositions to pending applications, as well as with cancellation actions against registered trademarks. We will provide recommendations regarding tactics and strategy in each particular case. We will estimate the costs, evaluate the chances of success, and will help you to choose the best way of fighting trademark squatters.

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Opposition to a Trademark Application
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Who can sign a power of attorney to be submitted to the RUPTO, EAPO, Russian courts?

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.

In what way does a trademark differs from a trade name, a logo, or a brand? What does registration result in – a trademark, a logo, or a brand?

In what way does a trademark differs from a trade name, a logo, or a brand? What does registration result in – a trademark, a logo, or a brand?

The words “brand”, “logo”, “label”, etc. are colloquial terms often used as synonyms for a trademark (service mark). Russian law instead uses only one legal definition – trademark (service mark). Thus, the registration of a designation with the patent office results in a trademark.

A trademark (service mark) is a designation used for individualization of goods (or services) of business entities or individual entrepreneurs, the IP rights to which belong to the trademark owner and are evidenced by a trademark certificate. In Russia trademarks can not be initially registered in the name of natural persons (individuals).

Trademarks can be in the form of a word, design, combination, three-dimensional shapes, sound marks etc. The owner of the trademark can indicate that it is registered and protected in Russia by placing one of these designations next to the trademark:
“R”, ®, “trademark”, “registered trademark”.

Without the trademark owner's permission, nobody shall use designations which are identical to the trademark or designations that are similar to the trademark, in respect of the goods for individualization of which the trademark is registered, or homogenous goods, if such use may result in confusion of customers.

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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.

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Is forum shopping available in patent/trademark litigation in Russia?

Is forum shopping available in patent/trademark litigation in Russia?

For most disputes related to patent invalidation/trademark cancellation, the venue is determined directly by Russian law. It is either the Federal executive authority in the sphere of intellectual property (Rospatent, the Chamber for Patent Disputes) or the Court for Intellectual Property Rights.

At the same time, in infringement lawsuits, forum shopping is possible when the claimant can name multiple persons as co-defendants (e.g., manufacturer/importer, wholesalers, and retailers). In such cases, the claimant has the option to choose with which territorial court to file their action.

Can a light be registered as a trademark in Russia?

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.  

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