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.
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.
Which Russian IP rights are covered by the notion “means of individualization”?
In Russian law, all IP rights are divided into two large groups:
Means of individualization include:
Means of individualization serve to differentiate a business or its goods or services and are subject to legal protection on a par with results of intellectual activity. Specific features of legal protection provided to each IP right are regulated by separate sections in the Russian Civil Code.
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.
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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