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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