Trademark rights are territorial in nature and registered trademarks only grant protection in the country they are registered in.
In accordance with Russian law, a trademark is protected in the territory of the Russian Federation on the basis of its registration by the Russian Patent and Trademark Office (Rospatent).
Therefore, if you are running a business in Russia and want to distinguish your goods/services from those of others, you will have to register your brand as a Russian trademark (service mark). (Please refer to the Provisional Refusals section for international registrations under the Madrid System.)
At present, the trademark examination process takes about 6-10 months provided that no objection is issued by the examiner.
Within a week after the application is filed, the Russian Patent and Trademark Office publishes it on its website.
It normally takes Rospatent about one month to complete the formal examination and to issue the Official Notification of Acceptance.
Thereafter, in the course of the substantive examination, Rospatent examines the trademark application on the basis of absolute and relative grounds of refusal, namely, distinctiveness, descriptiveness, confusion with prior entries of record, and so on. (Please refer to the section Basic grounds for refusal to register trademarks below.)
As a result of the substantive examination, the examiner may issue a Decision of Registration. In case there are grounds for preliminary refusal, an Office Action is forwarded to the applicant. It may take 6-10 months before the examiner issues an Office Action. The indicated term may be reduced to 2-3 months in case the applicant files an expedited examination request (subject to an additional fee).
The time limit for submitting a response to an Office Action is six months from the issuance date. Russian law does not provide for any extension of said time limit.
Our team is widely renowned for its work in trademark prosecution, including overcoming the examiners’ objections. Sojuzpatent’s trademark attorneys will evaluate the chances of success, define the strategy and assist you in dealing with Rospatent’s Office Actions using all available options.
In case Rospatent issues a refusal, it may be appealed to the Chamber for Patent Disputes. If the Chamber for Patent Disputes upholds the refusal, the Chamber’s decision may be further appealed to the Court for Intellectual Property Rights.
Our attorneys and litigation lawyers represent the client’s interests before the Chamber for Patent Disputes, the Court for Intellectual Property Rights and other Russian courts, including the Supreme Court of the Russian Federation, doing their best to help a trademark application to successfully mature into a registration in Russia despite possible obstacles.
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.
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.
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.
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.
Can importers bring to Russia products made in foreign countries and marked with that product manufacturer’s trademark registered in Russia, without consent of the manufacturer for the import?
Importation of goods bearing a trademark protected in Russia into the territory of the Russian Federation without the consent of the trademark owner constitutes a breach of the Russian legislation currently in force.
For more information on parallel importation, please refer to the Legislation News section.
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.
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