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