ааааааааа PROTECTION OF WELL KNOWN MARKS IN
RUSSIAаааа
Russia is a
party to the Paris Conventionа and well
known marks could enjoy protection in the Russian Federation. Pursuant to art.
6 bis of the Paris Convention, the owner of a markа acknowledged to be well known can get priority over other
applicants for identical or similarа
trademark registration.
But until
recently the procedure of recognition of the marks as well known was not fully
worked out in Russia and that is why there actuallyа were no cases of acknowledging any marks to be well known.
On June 17,
2000 this was cured, entered into force were the "Rules for acknowledging
trademarks as well known in the Russian Federation", worked out by the
Russian Patent Office. The Rules define the procedure for filing the Request
for acknowledgement of a mark to be well knownа
and certain formal requirements such documents should meet; the Rules
alsoа disclose legal provisions
concerning protection of well known marks in Russia.
ааааааааааааааа The main features of the legal
protection of well known marks in Russia are as follows.
1.
Acknowledged in Russia could be the marks already registered in Russia or
notа yet registered marks, if they
became universally known amongа certain
groups of consumers as the result of their intensive usage.
2. A mark
could be acknowledged well known in Russia in respect of certain goods and
services.
Russia is
not yet a party to the WTO and, consequently, signatory to TRIPS, and that is
why the well known marks have their effect within the goods and services, in
respect of which they were acknowledged well known. So, under the Russian
trademark law there will be no possibility to take actions against a person,
who chooses to sell beer "SONY" or jeans marked "TOYOTA",
even though these marks are acknowledged well known in their respective
spheres.
аIt would be possible, however, to take
actions against such an entrepreneur under the unfair competition law and
having the mark acknowledged well known will be an advantage.
3. A mark
is acknowledged well known as of certain date.
Pursuant to
art. 6 bis of the Paris Convention, a non-registered mark, if it is
acknowledged well known, could lead to nullification ofа registration of a similar mark in respect of
similar goods and services,
provided
the date on which it was acknowledged well known precedes the priority date of
theа interfering mark. The owner of a
mark acknowledged well known will enjoy full trademark rights for the mark.
This
provision cures to some extent the absence of grant of rights for the mark
based on its actual usage in the Russian Federation.
If a person
registers a mark in Russia in respect of certain goods and services (or just
files trademark application), the owner of a similar mark, which has been
intensively used in Russia previously, may try to prove that its mark was well
known in Russia as ofа the date,
preceding the priority date of the
other mark,
in respect of similar goods and services, and thus obtain protection for its
mark, depriving the indecent competitor of its registration.
It is also
believed that having a mark acknowledged well known will help in dealing with
cybersquatters, who register other firms' marks as Internet domain names. Also
a mark, recognised as well known, would be a strong additional advertising
factor.а
4. In order
to have a trademarkа acknowledged well
known in Russia, one has to file a special request with the Supreme Patent
Board of the Russian Patent Office. Having undergone the formal examination,
theа filed request proceeds on to the consideration.
Since the Supreme Patent Board is an appellate body of the Russian Patent
Office, i.e. a sort of special patent court, the procedures in it are similar
to judicial ones. During the hearings the party of the applicant and the Patent
office examiner, being an opponent, each produce their arguments to the Chair,
which listens to both partiesа and after
the councilа the decision on whether the
mark is or is not acknowledged well known is announced. Naturally, before the
hearings the Request is examined by the nominated patent examiner, who prepares
questions to be askedа andа aspects to be discussed with the seeking
party during the hearings.
If the
applicant is not satisfied with the decision of the Supreme Patent Board, it
may file an appealа in court.
5. Stated
in the Request for acknowledging a markа
well known should be the goods and services, in respect of which the
rights are claimed, and the date on which the mark supposedlyа became well known. Also the Request should
contain specimen of the mark, data on the applicant, and the data confirming
that the mark is well known.
6.
Actually, the Request is prepared in the form of a survey or report, containing
structured factual data on intensive use of the mark with attachments
illustratingа the mark's usage.а
There are
no strict requirements as to the contents of the Request, the Rules only
enumerate some data which it would be useful to include into the Request.
Based on
the Rulesа and on other sources, as well
as from our own experience, we would recommend to include the following data
into the request:
a) Characteristic
of the market and the applicant's position on it.
- volume of
sales of products marked by the trademark, by the years andа overall.
- number of
sold items
- number of
clients, consumers, purchasers of the goods, their social level, theа circles they belong to;
- share of
the market occupied by the applicant and its products
- positive
dynamics of all data
- geography
of sales, i.e. in how many places the goods and services are sold.
b)
advertising
-ааааа expenditures for advertising of the
marked products;
-
advertising
channels - TV, radio, newspapers and magazines, special editions, leaflets and
advertising stands;
-
number
of releases,а copies with the
advertising materials, circulation, characteristic of the audience;
-
Internet
web sites, its citation indexes and references, number of visitors;
-ааааа participation in exhibitions,
presentations, etc. with stating the level and number of visitors,
participants.
c)ааа The marketing network and sale channels
-
number
of dealers, wholesale and retail traders, shops;
-
service
centers, promotions.
-
d)
data
of sociological surveys, polls, confirming that the mark is known among the
population and consumers.
e)
value
of the mark, information on trademark licensing, franchising;
f)
Publications
in mass media on the marked products, acknowledged opinions of the market
analysts, the ratings, etc.;
g)ааа notoriety of the mark in various
countries.
There might
be plenty of other data. Concrete set of the needed information is determined
for each client with account of its business in the course of preparation of
the Request.
We can
prepare a specialised list of needed data for the specified applicant, taking
into account peculiarities of its business.