Provisional Refusal
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:
- preliminary consulting;
- evaluating the chances of success;
- collecting required documents;
- preparing and filing detailed, well-reasoned responses to notifications of provisional refusals;
- representing clients before the Chamber for Patent Disputes and the Court for Intellectual Property Rights.
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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:
- have fallen into public domain to indicate goods of a certain kind;
- are generally accepted symbols and terms;
- characterize goods, including indication of their type, quality, quantity, properties, purpose, or value and also the time, place, or means of their production or sale;
- represent the configuration of goods that is determined exclusively or mainly by the properties or purpose of the goods.
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):
- false or capable of misleading a consumer in respect of goods or their producer;
- contrary to public interests or to principles of humanity or morality.
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:
- other persons’ trademarks registered or applied for registration (including trademarks filed under the Madrid Agreement or Protocol) with an earlier priority;
- an industrial design, a correspondence sign;
- well-known trademarks protected in Russia with respect to similar goods,
- an appellation of origin protected in Russia with respect to similar goods,
- a trade name or commercial name protected in the Russian Federation;
- a title of a work of science, literature, or art, a character or quotation from such a work, a work of art or a fragment thereof known in the Russian Federation;
- a name (Article 19), a pseudonym (Paragraph 1 of Article 1265) or their derivatives, a portrait or facsimile of a person known in the Russian Federation;
- the official names and images of particularly valuable objects of the cultural heritage of the Russian Federation or objects of world cultural or natural heritage.
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.
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