Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.
Start by selecting your Topic of interest below. Then choose your Regions and finally refine the exact Subjects you are seeking clarity on to view detailed analysis provided by our carefully selected internationally recognised experts.
Results: 4 Answers
Trademarks
3.
Registration procedure
3.1
Which governing body (ie, trademark office) controls the registration process?
 
Russian Federation
The Federal Service for Intellectual Property (Rospatent).

For more information about this answer please contact: Vladimir Trey from Gorodissky & Partners
3.2
What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
 
Russian Federation
The official fee for filing and formal examination of a trademark application (in one class) is RUB 3,500. The official fee for filing and formal examination of a trademark application in each additional class over five is RUB 1,000. The official fee for substantive examination of a trademark application (in one class) is RUB 11,500. The official fee for substantive examination of a trademark application in each additional class over one is RUB 2,500.

The official fee for registration of a trademark is RUB 16,000. The official fee for registration of a trademark in each additional class over five is RUB 1,000.

The official fee for issuance of the certificate is RUB 2,000, independent of the number of classes.

Discounted official fees are available in case of electronic filing.

For more information about this answer please contact: Vladimir Trey from Gorodissky & Partners
3.3
Does the trademark office use the Nice Classification scheme?
 
Russian Federation
When filing a trademark application, it is necessary to specify the goods and services for which protection is sought using clear and precise wording which reflects their nature. The wording must be classified according to the Nice Classification, depending on the nature and purpose of the goods and services. Several classes can be claimed in one trademark application and additional classes can be added during examination of the application. The goods applied for can be transferred to new classes, provided that such changes to the list and re-classification do not broaden the scope of the protection that was initially requested.

For more information about this answer please contact: Vladimir Trey from Gorodissky & Partners
3.4
Are ‘class-wide’ applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
 
Russian Federation
In Russia, the scope of trademark protection is defined by the list of goods and services covered by the trademark. Under current Russian practice, the class heading simply designates the fields to which the applied goods and services may relate in general, and does not cover all goods and services in a given class. When filing an application, it is possible to specify the class heading, the list of specific goods and services, or both the class heading and the specific goods and services. The latter is preferable because it allows the applicant to obtain broader protection and to seek registration for those goods that are most important to its business.

For more information about this answer please contact: Vladimir Trey from Gorodissky & Partners
3.5
Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
 
Russian Federation
No. Russia is a first-to-file jurisdiction.

For more information about this answer please contact: Vladimir Trey from Gorodissky & Partners
3.6
Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
 
Russian Federation
Yes, a trademark application may be rejected by authorities on the following grounds:

  • identity to, or similarity to the extent of confusion with, a prior trademark (whether registered or pending registration) owned by a third party in relation to similar goods or services;
  • identity to, or similarity to the extent of confusion with, a well-known mark; and
  • identity to, or similarity to the extent of confusion with, the industrial design, appellation of origin, company name or commercial designation of a third party.
For more information about this answer please contact: Vladimir Trey from Gorodissky & Partners
3.7
What types of examinations does the trademark office perform other than relative examination?
 
Russian Federation
A trademark application may be rejected either on absolute or relative grounds, or on both, absolute and relative grounds. Absolute grounds are those that concern the substance of the mark itself and include:

  • lack of distinctiveness;
  • risk of misleading or causing confusion;
  • identity or similarity to state symbols and marks;
  • reproduction of full or abbreviated names of international or intergovernmental organisations or their symbols; and
  • reproduction of the official names or images of valuable objects of Russian or worldwide cultural heritage.
For more information about this answer please contact: Vladimir Trey from Gorodissky & Partners
3.8
Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
 
Russian Federation
A trademark may also be refused protection if it incorporates:

  • protected means of individualisation of other persons (or confusingly similar signs);
  • copyrighted works owned by third parties; 
  • names, pseudonyms (or derivatives thereof), pictures or facsimiles of famous persons; or
  • industrial designs owned by third parties.
For more information about this answer please contact: Vladimir Trey from Gorodissky & Partners
3.9
Is there a separate or supplemental register on which descriptive marks may be registered?
 
Russian Federation
No.

For more information about this answer please contact: Vladimir Trey from Gorodissky & Partners
3.10
Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
 
Russian Federation
The Civil Code provides as follows:

  • The Federal Service for Intellectual Property (Rospatent) will publish details of the filed trademark application.
  • Third parties have the right to review all trademark documents on file, not just those comprising the original trademark application.
  • Third parties have the right to submit to Rospatent their written observations on the pending trademark application before official action is taken. Such written observations may be considered by the examiner during the examination, but this ‘quasi’ opposition process is not competitive.

Russian legislation foresees another instrument for objecting to registration of a trademark. Within five years of publication of a trademark registration in Rospatent’s Official Bulletin, the owner of prior trademark rights may file an invalidation action with Rospatent. The trademark owner will be notified accordingly and both parties will be invited to a hearing at which the matter will be considered. The examiner will then decide on the matter and either:

  • reject the invalidation action and leave the trademark in force;
  • invalidate the mark in full; or
  • invalidate the mark in part.

An invalidation action or cancellation action against a registered trademark on other grounds foreseen by the law may be filed at any point while the registration remains valid.

For more information about this answer please contact: Vladimir Trey from Gorodissky & Partners
3.11
Must the applicant use the trademark commercially in order to obtain a registration?
 
Russian Federation
No.

For more information about this answer please contact: Vladimir Trey from Gorodissky & Partners
3.12
How much time does it typically take from filing an application to the first office action?
 
Russian Federation
Eight to 10 months

For more information about this answer please contact: Vladimir Trey from Gorodissky & Partners
3.13
How much time does it typically take from filing an application to publication?
 
Russian Federation
Information about filed trademark applications is published within several days of filing. Information about registered trademarks is published immediately upon registration.

For more information about this answer please contact: Vladimir Trey from Gorodissky & Partners