TRADEMARK REGISTRATION IN THE EURASIAN REGION

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:

  • filing several national trademark applications with each Trademark and Patent Office, or
  • filing one international trademark registration based on the Madrid Protocol. Detailed information regarding the Madrid System is available at the WIPO site: https://www.wipo.int/madrid/en/.

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.

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TRADEMARK REGISTRATION IN THE EURASIAN REGION
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What kind of documents evidencing use of the trademark can the trademark owner present to the court?

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:

  • payment documents showing that the goods marked with the trademark were introduced into civil circulation;
  • documents showing that the trademark was used under the control of the owner if the mark was used not by the owner itself (e.g. distribution or license agreements regarding the trademark);
  • advertising material;
  • customs declarations confirming the imports of the marked goods to the territory of the Russian Federation; and
  • documents showing the goods with the trademark were exhibited at fairs.

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What are the usual reasons for a trademark registration refusal in Russia?

What are the usual reasons for a trademark registration refusal in Russia?


Apart from so-called relative grounds for refusal (likelihood of confusion with other rights protected in Russia), there are four basic (absolute) grounds for rejecting a trademark application, namely:

  • the claimed designation lacks distinctiveness;
  • it contains misleading, confusing or deceptive elements;
  • it contains elements that are contrary to public policy or to accepted principles of morality;
  • it consists of official arms, flags or other state emblems.

The most relevant and often used reasons for objecting to an application are that the trademark at issue lacks distinctiveness or is misleading.


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Is forum shopping available in patent/trademark litigation in Russia?

Is forum shopping available in patent/trademark litigation in Russia?


For most disputes related to patent invalidation/trademark cancellation, the venue is determined directly by Russian law. It is either the Federal executive authority in the sphere of intellectual property (Rospatent, the Chamber for Patent Disputes) or the Court for Intellectual Property Rights.

At the same time, in infringement lawsuits, forum shopping is possible when the claimant can name multiple persons as co-defendants (e.g., manufacturer/importer, wholesalers, and retailers). In such cases, the claimant has the option to choose with which territorial court to file their action.

Who can sign a power of attorney to be submitted to the RUPTO, EAPO, Russian courts?

Who can sign a power of attorney to be submitted to the RUPTO, EAPO, Russian courts?

The signer does not have to hold any specific position or to be an executive of a certain rank. However, his or her position should be clearly indicated in the PoA. The signer should be duly authorized to act on behalf of the company, not just assigned to oversee certain cases. It is normally requested that the documents that empower the signer be mentioned in the text of the power of attorney. If the signer deals on the basis of a proxy, the powers of the person who has signed the proxy may also be checked. It is highly advisable that all the corporate titles coincide in different documents. For example, if the proxy is signed by the Chairman of the Board of Directors and the official title of the person who can sign according to the bylaws is Director, the respective Court may not accept the documents without requesting further clarifications.

If my Russian trademark is illegally used in a domain name, do I have recourse to UDRP procedures in order to transfer the disputed domain name without litigation?

If my Russian trademark is illegally used in a domain name, do I have recourse to UDRP procedures in order to transfer the disputed domain name without litigation?


If the domain name is registered in one of the following generic Top-Level Domains (gTLDs): .com, .info, .net, .org, .biz, .name, .pro, .aero, .asia, .cat, .coop, .jobs, .mobi, .museum, .tel, .travel or in a new gTLD, your dispute may be resolved out of court on the base of the Uniform Domain-Name Dispute Resolution Policy (UDRP).

However, UDRP or similar dispute resolution proceedings are not currently available for .ru domains. In such cases, there are no options apart from litigation in court if the administrator does not concede to the trademark holder’s demand.


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