Registration in Russia
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.
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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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