The Russian Federation is a Contracting Party to the Madrid Protocol and the Madrid Agreement. Each year, thousands of new international applications are filed through the Madrid System, and Russia is undoubtedly one of the countries of interest and importance for many filers.
A Notification of Provisional Refusal may be issued by any of the designated countries' registrars in case a trademark under the international registration procedure does not comply with the country’s legal requirements.
In Russia, a Notification of Provisional Refusal can be issued by the Russian Patent and Trademark Office (Rospatent) during trademark examination. A Notification of Provisional Refusal may be issued on absolute grounds (such as the lack of distinctive character, falseness, or the ability to mislead consumers), relative grounds (existence of prior identical or confusingly similar applications and/or registrations in Russia), or both. (Please refer to the section "Basic grounds for refusal to register trademarks" below.)
The time limit for submitting a response to a provisional refusal and requesting Rospatent’s review is six months from the Notification’s date indicated under Item “X”. Russian law does not provide for any extension of said time limit.
In case no response if filed within the indicated period, a decision confirming the provisional refusal is issued by Rospatent.
In some complicated cases, Rospatent still issues a rejecting decision following the provisional refusal, despite the argumentation provided by the applicant.
Potentially, such a decision may be appealed to the Chamber for Patent Disputes within four months from the date of issuance of the rejecting decision. In case this term is missed, it can be reinstated within the next six months provided that a reasonable excuse (such as obtaining a letter of consent/cancellation procedure/assignment procedure) is shown.
In case the Chamber for Patent Disputes upholds the rejecting decision, the Chamber’s ruling can be further appealed to the Court for Intellectual Property Rights.
According to Article 1247 of the Civil Code of the Russian Federation, foreign legal entities shall only exercise proceedings with Rospatent through registered patent attorneys, unless otherwise provided for by an international treaty of the Russian Federation”.
Sojuzpatent has broad experience in overcoming provisional refusals of protection in the Russian Federation and other post-USSR countries and offers all kinds of services related to:
Basic grounds for refusal to register trademarks
“ABSOLUTE” grounds for refusal
I. Lack of distinctiveness
Signs which are devoid of distinctive character or consisting only of elements that:
Please note that according to Russian Trademark Office practice, a trademark consisting solely of consonants and/or figures lacks inherent distinctiveness.
The above-listed signs may be incorporated in a trademark as non-protected elements (disclaimers) if they do not dominate in the mark.
Furthermore, potentially, such marks may be registered if the applicant presents evidence of the mark's acquired distinctiveness through its long and intensive use. The evidence should cover a period prior to the application filing date and relate to any countries of the world but especially to the territory of Russia.
II. Misleading marks, marks that are contrary to public interests
The signs shall not be registered as trademarks in case they are (or contain the elements that are):
It is not possible to disclaim such an element in order to overcome the refusal.
“RELATIVE” grounds for refusal
I. Similarity with third parties’ prior rights
Signs shall not be registered as trademarks if they are identical or confusingly similar to:
II. Additional grounds for refusal stipulated by International Treaties
Signs shall not be registered as trademarks if they only consist of elements that are state armorial bearings, flags, or other state symbols and marks; abbreviations or full names of international and intergovernmental organizations, their armorial bearings, flags, or other symbols and marks; official signs or hallmarks of control and warranty, seals, awards, and other distinguishing signs; signs identifying wines or spirits that are protected in one of the states party to the respective international treaty, and some other objects.
The Russian Patent and Trademark Office conducts ex officio examination regarding the “absolute” grounds for refusal and some of the “relative” grounds for refusal, namely similarity with prior trademarks and industrial designs.
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:
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.
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.
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.
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