Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia form the Eurasian Economic Union (EAEU) and the Eurasian Customs Union (EACU). The countries have a common customs border and unified customs legislation. No customs borders exist between any of these countries and goods can flow without customs control. Therefore, no customs check for eventual IP rights violations takes place. In the absence of a unified EAEU trademark, the holder of a trademark registered in one of these countries may face difficulties in enforcing their rights against importation from the other countries. Registration of national trademarks in all the member states may be a solution to this problem.
Besides, Russia is a member of the Commonwealth of Independent States (CIS), an intergovernmental organization formed by nine post-Soviet republics located in the Eurasian region after the dissolution of the Soviet Union.
Until now, ex-USSR countries neighboring Russia, including the CIS countries, use the Russian language and/or Russian alphabet widely on their respective markets. Therefore, trademark applicants frequently require registering their trademarks in all those countries.
If you need to protect your trademark in a number of those countries, you have two options:
The procedure under the Madrid Protocol is usually less expensive and more convenient for the applicant than filing several national trademark applications. However, it has some disadvantages too.
The registration process in national Trademark Offices is usually faster and more flexible than procedures under the Madrid System. Furthermore, if you file through a local attorney, you may obtain recommendations and comments regarding your proposed mark before filing it for registration. This may help to avoid unnecessary mistakes and delays in obtaining trademark protection.
The Madrid System stipulates that, if a national Trademark Office issues objections against a trademark application (a provisional refusal), the applicant should contact a local trademark agent and try to overcome the objections using their services.
Our attorneys are able to assist you with such provisional refusals, as well as with national filings in Russia and the former USSR countries, namely, in Armenia, Azerbaijan, Belarus, Estonia, Georgia, Kazakhstan, Kyrgyzstan, Latvia, Lithuania, Moldova, Tajikistan, Turkmenistan, Ukraine, and Uzbekistan, in accordance with international or national procedures. It is convenient for a rights holder to have just one point of contact for trademark protection in all these countries.
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:
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.
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.
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.
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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