There appeared firms in Russia which make active use of these peculiarities. It is their business to register in Russia marks of other companies, particularly foreign firms, who already work on the Russian market but did not yet manage to register their marks, and then accuse the true owners of the marks of violation of their rights and demand license payments. Often the mark represents the name of the foreign company and it finds itself unable to conduct the business until the matter is settled.
Many competent authorities of the Russian Federation, such as the State Unfair Competition Commission, the Russian Patent Office and the public organizations, namely, the Coalition for Intellectual Property Rights (CIPR), the Association of Trademark Owners in Russia are determined to treat this trademark piracy very severely.
Appeals against the marks registered in bad faith could be filed with all these bodies. A strong proof of bad faith could be the behavior of the trademark pirates. They usually do not have brains enough to wait a bit after they obtain the registration in bad faith, pretending to be a normal business company. They apply to the true mark owner immediately upon obtaining certificate and betray themselves completely. It becomes clear that they registered the trademark not to mark their goods, but just to abuse the IP monopoly.
It is possible to pursue several ways of reinstating the rights for the mark simultaneously, but, taking care of our clients' expenses, we can start from the Patent Office. Here we can use two main opportunities:
1. Your Company is known in Russia.
Under art. 7 p.2 of the Russian Trademark Law, a mark that represents name of another company (firm name) or its part shall not be registered as trademark, if the firm was known on the territory of the Russian Federation before the priority date of the trademark application.
So, if the pirate's registration of the mark represents your company name or its main part, you can try to cancel the pirate's registration of the mark on the grounds that your company is already known in Russia.
Here will be needed evidence of the activity of your company on the Russian market: advertising materials, articles about the goods, catalogs, sample of package used in Russia, exhibition directories, printed materials, where the firm and its products were mentioned in connection with the Russian Federation. An opposition against registration of a mark should be filed with the Board of Appeals of the Russian Patent Office. If the appellant is not satisfied with its decision, appeals could be filed in the higher instance - Supreme Patent Board of the Russian Federation and after that - in court.
The oppositions under Art 7.2 of the Russian Trademark Law could also be filed even on the stage of the examination of a trademark application, if you happen to find out that your mark was already filed in Russia. Conflicting marks could be identified as the result of the availability search or in the course of prosecution of your International trademark application which has designation of the Russian Federation. In such a case the opposition is filed with the Trademark Examination Department of the Patent Office; there is no official fee and the whole process of opposing a conflicting trademark registration becomes much shorter.
2. Your trademark is a well known (universally known) mark.
Pursuant to art. 6 bis of Paris Convention, well known marks enjoy protection without registration and registration of similar marks by other entities in respect of identical or similar goods should be cancelled.
See our information on Protection of well known marks in Russia.
In order to have your mark acknowledged well known in the Russian Federation, you will have to file a special Request with the Supreme Patent Board of the Russian Patent Office and provide evidence that the mark is universally known. Only marks of extremely high advertising and sales volume could be acknowledged well known marks.
The best protection against the trademark registration piracy, however, is the timely filing of trademark application in Russia.