Trademark registration system in Russia

Described below are the main features of the Russian Law on protection of trademarks and service marks.

1. Number of Classes per application

2. Procedure

3. Publication

4. Searches

5. Registration term

6. Intend-to-use applications

7. First-to-file policy

8. Opposition

1.Number of classes per application

In Russia the multi-class system is applied. That is, you can file one application for protection of the mark in respect of goods and services of different classes. Formerly it was a widely spread practice to state 5 to 10 classes in a trademark application. It was not uncommon for a Russian company to file a trademark application in all 42 classes of ICGS. Now with introduction of the new trademark fees this practice has ended, but there are still many marks filed earlier that are registered in respect of many goods of virtually all classes of ICGS.
Now the official fee is $275 for the first class and $50 for each class in excess of 1.

2. Procedure

The trademark registration procedure usually takes about a year or a bit more. Within one month after filing the application the Patent Office conducts formal preliminary examination and issues and sends to the applicant the Notification on acceptance of the application. The examination proper begins in 10 to 12 months afterwards and, if there are no major problems and negative decisions, the mark is registered and trademark certificate issued on the 13th or 15th month from the filing date.

After receiving decision on grant of the certificate it will be necessary to pay the official fee for registration - US$ 320. Actually the whole ordinary process of trademark registration might take about 13-15 months.

3.Publication of the mark

After the mark is registered and certificate granted, the mark and the main data on it are published in the Trademark Bulletin of the Patent Office. It is important to note that the first publication of the mark occurs only upon its registration and grant of the certificate.
So, there actually is no "publication period" in the sense understood in the USA or Europe. The trademark applications are not published (or laid open) before registration in Russia, and there is no opposition period during which it is possible to file objections to the filed marks. After completion of the formal preliminary examination nobody could learn from the open published sources that a mark was filed. The general public learns about filing the application only when (and if) the mark is registered. So, numerous trademark watching and alerting services existing in the West take into account the information on the already registered marks, when they work with the Russian sources.

4. Trademark Searches

Therefore, the only way to know for sure whether a mark similar to yours was filed within the last 12-14 month is to order the availability search, the results of which contain references not only to the issued registrations, but the pending trademark applications also. So, it is quite reasonable to order a trademark availability search before filing the application. Provided are all registered identical and similar marks with identification of classes of goods and services. The search includes analysis of verbal marks in Latin and Cyrillic letters, they are treated as similar marks.

If the search reveals similar marks, there could be conducted analysis of the marks by classes of the International Classification with preparation of the written opinion on registrability of the mark in Russia. Ordering of searches will save you substantial time, if the mark turns out to be not registrable in Russia.

5. Registration term

The trademark registration in Russia is valid for 10 years. During the tenth year of the trademark validity it will be necessary to file request for prolongation of the registration and pay the appropriate fee - $500.
The missed term for filing the renewal could be reinstated during six months upon payment of additional fee of $50.

6. Intend-to-use-applications

There are no intend-to-use applications in Russia. Aactually it does not matter for the application process whether the mark has already been used or not. A trademark registration could be cancelled, if the mark is not used during five years. But it does not happen automatically. Pursuant to Article 22 p. 3 of the Russian Trademark Law the registration of the mark might be terminated in part or in full by decision of the Supreme Patent Board on the basis of an appeal of any person filed in connection with non-use of the mark during five years from the registration, or within five years, preceding such an appeal. Until such an appeal is filed with the Patent Office, the registration of the actually non-used mark will be valid.

It is believed that many registered marks in Russia were not used actually and when a previous registration is in the way to register a mark, it is a good idea to check if it was used during the previous five years.
It is the duty of the owner of the mark to prove before the Supreme Patent Board that it has used the registered mark. When a person files a request to cancel a registration of the mark on the basis of its non-use, the Patent Office notifies the owner about the filed appeal and asks it to present evidence of use of the mark. If the owner does not respond to Office's notification and no evidence is presented to the Patent Office, the registration of the mark shall be cancelled.

7. Russia uses the "first-to-file" policy.

No evidence of use is required upon filing of a trademark application.

The rights to the mark will belong to the person who files the application first, even if a mark was used for a long time in Russia by another company. But evidence of use might be helpful for restoring rights to the mark, captured by an indecent competitor. Recently there happened in Russia several scandals connected with pirated registration of marks.

There were cases when a solid firm had been importing its goods into Russia for several years and its business reached a good turnover, but it somehow did not think of registration of its mark in this country. Then it appeared that its mark was already registered by another small firm which did not produce any goods and did not use the mark, but just held rights for it in full accordance with the Russian legislation. And this small firm approached the importer and claimed violation of its trademark rights and demanded payment of compensation for the unauthorised use of the registered mark.

There are certain firms in Russia that hunt for the actually used but not registered marks, they register the marks in their name and then approach the legitimate mark owner with the demand for compensation. This poses a problem, which could be solved, but rather it should be prevented. Before actual importation of any goods into Russia, the marks should be duly registered, particularly it is important to register the company name as trademark, if it is used on the goods.

8.Opposition

If you find that your client's mark was already registered by another company, you can try to oppose the registration in the Board of Appeals of the Russian Patent Office. The appeal might be filed on the grounds that your firm was known in Russia before the mark in question was filed. Under art. 7 p.2 of the Russian Trademark Law, a mark that represents the name of another company (trade name 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.

Procedures of unfair competition legislations could be also used here.
So, if you encounter an illegal registration of a mark by an indecent grabber, it will be possible to act in two ways:

a) filing opposition against the pirated registration of the mark with the Russian Patent Office under art 7.2 of the Trademark Law;
b) filing appeal to the Unfair Competition Committee against the activities of the pirate firm in connection with the indecently registered mark, proving that their actions fall under the Unfair Competition Law and demand issuance of a special ruling to forbid usage of the mark by the pirate. It is possible to pursue both ways simultaneously.

Trademark registration system in Russia

See also our information on Filing oppositions against unlawful trademark registration.