Trademark Use/Non-Use

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:

  • the trademark owner;
  • a licensee;
  • an entity acting under the owner’s control.

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.

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Trademark Use/Non-Use
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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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In what way does a trademark differs from a trade name, a logo, or a brand? What does registration result in – a trademark, a logo, or a brand?

In what way does a trademark differs from a trade name, a logo, or a brand? What does registration result in – a trademark, a logo, or a brand?


The words “brand”, “logo”, “label”, etc. are colloquial terms often used as synonyms for a trademark (service mark). Russian law instead uses only one legal definition – trademark (service mark). Thus, the registration of a designation with the patent office results in a trademark.

A trademark (service mark) is a designation used for individualization of goods (or services) of business entities or individual entrepreneurs, the IP rights to which belong to the trademark owner and are evidenced by a trademark certificate. In Russia trademarks can not be initially registered in the name of natural persons (individuals).

Trademarks can be in the form of a word, design, combination, three-dimensional shapes, sound marks etc. The owner of the trademark can indicate that it is registered and protected in Russia by placing one of these designations next to the trademark:
“R”, ®, “trademark”, “registered trademark”.

Without the trademark owner's permission, nobody shall use designations which are identical to the trademark or designations that are similar to the trademark, in respect of the goods for individualization of which the trademark is registered, or homogenous goods, if such use may result in confusion of customers.


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Can a single color be registered in Russia as a trademark?

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.


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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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Should I send a warning letter before filing a trademark infringement lawsuit in Russia?

Should I send a warning letter before filing a trademark infringement lawsuit in Russia?

According to Russian IP legislation, in commercial disputes on IP rights infringements, a warning letter (cease-and-desist letter or CDL) is obligatory and should be forwarded to the infringer before filing the lawsuit in case the right owner desires to claim damages or compensation.

The lawsuit can be filed if the infringer fails to satisfy the claims contained in the warning letter within thirty days after its dispatch.

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