According to Russian law, a trademark registration can be cancelled at a third party’s request in case the mark has not been used by the right holder themselves or any person under the right holder's control for any three consecutive years after the registration.
The mark must be used in essentially the same form as the mark shown in the registration, on or in connection with all the goods/services listed in the registration, by any of the following:
Failure to use a trademark during the prescribed period makes the registration vulnerable to cancellation by any person having legal interest.
A non-use cancellation action against a trademark is to be filed with the Intellectual Property Court.
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.
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.
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.
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:
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.
We have nearly a century’s experience,
guaranteeing you the highest quality service.
We have ample specialists in all areas of science and technology,
allowing us to resolve even your most complex challenges.
Our patent attorneys and litigation lawyers work in tandem
to provide you with the best-quality patents and to represent you successfully both in legal and in administrative disputes.
We provide an electronic interface to the patent offices
with fully automated workflow to eliminate multiple data entry and avoid errors.
Proximity to the customer, both geographic and electronic.
We have offices in the center of Moscow and in other major Russian cities. You can also access us remotely from anyplace in the world.
International IP publications rate us among the most prestigious world leaders
in the area of Intellectual Property.
Transparent reporting and detailed invoicing
provide you with complete information on our services.
Our professional liability is insured
by one of the world’s leading insurance companies.