Russian Federation: Perpetual Revolution: Protecting Fluid Trademarks In Russia

Last Updated: 3 October 2018
Article by Ilya Goryachev and Marina Kudyzhina

Most Read Contributor in Russian Federation, December 2018

According to Article 1482 of Russia's Civil Code, a trademark may be a word, graphic, three-dimensional designation or a combination of these. However, new marketing techniques and the digital era have given rise to a wave of non-traditional trademarks – including those consisting of moving images or changing elements. These so-called 'fluid trademarks' include substantial variations of the same mark while ensuring that the core features of the original are maintained.

Examples include cases where the trademark on product packaging is replaced by words of the same length, depicted in the same style and font as the original mark. The term 'fluid trademark' is not defined under Russian law as such. Nevertheless, the current trademark prosecution rules (approved by the Ministry of Economic Development on 20 July 2015 by Decree 482) specify 'illuminated' and 'dynamic' (changing) designations as among the characteristics of applied-for designations.

In such cases, the applicant must provide a video file, including a reproduction of the designation, which gives an exhaustive and clear image regarding the amount, nature, intensity and succession of the changes. The video file should be provided digitally and accompanied by a printed sequence of frames. If the applicant considers that substantial particularities of the illuminated or dynamic designation do not change during the reproduction, then the designation may be represented along with several frame-by-frame images, demonstrating the exact number of changing images and the succession of their only (non-alternating) reproduction.

Trademark prosecution practice

Fluid trademarks may include moving images, which may also be accompanied with sound effects.

On 7 October 2005 the Russian Patent and Trademark Office (Rospatent) registered Trademark 296496.

It included a link to the full trademark (in the form of video file) and the following description: "sound, moving in the following way: in the flashing flame a bird appears, produced by the storming nature of fire. Shooting upwards, it is changed into the aflamed impress of the letter "Ф", imaged as a bird. The impress moves, becoming snow-white shining, with radiant light beams, spreading to all sides."

There are also cases where consumers may, for example, start using abbreviations of the trademark, which could prompt the trademark owner to file for the shorter version of the product name as well.

For instance, the trademark series for the alcoholic beverage JAGUAR includes various trademarks with the element JAGUAR, including Trademark 262731.

When seeking to register an animation, motion or dynamic trademark, applicants and Rospatent examiners often encounter difficulties regarding the proper indication of the type of mark. There have been cases where Rospatent required the applicant to amend the type of trademark applied for as animated or moving to a fluid mark – or vice versa.

On the other hand, it is problematic to register different variations of one trademark within one application. If the applied-for designation obviously consists of different variations of one trademark combined as one designation, Rospatent will most likely refuse registration. In order to secure registration, the applicant will have to prove that it uses the applied-for designation exactly as it was filed.

In this regard, there may be a risk that Rospatent could claim that the applied-for designation consists of different variations of one trademark and may suggest that one of the variations be chosen and kept within the subject application or that each variation be filed as a separate applications.

Distinctiveness in fluid marks

Within the context of fluid trademarks, distinctiveness can be inherent or acquired. One of the most common reasons for refusing a trademark application in Russia is because the applied-for designation is not inherently distinctive. However, the law does not prevent the registration of inherently non-distinctive designations that have acquired distinctiveness as a result of use. For that to happen, the applicant must provide documentary evidence that the applied-for designation has been intensively used on the Russian market and for long enough to ensure that relevant consumers use it to identify the applicant as the source of the product or service.

There are no established criteria as to how long and how intensive use should be. Practice shows that in order to prove acquired distinctiveness among Russian consumers, use should commence at least one year before the priority date and run until the present time – in other words, the longer the better. Use intensity can be determined from advertising expenditure and sales figures. Evidence such as consumer reaction studies, opinion poll results and market research can prove vital for demonstrating consumer recognition of the applied-for designation as a source indicator.

Overall, actual evidence of acquired distinctiveness should reflect the extent, duration and nature of use of the applied-for designation on the Russian market with respect to the goods or services listed in the application.

Slogans as trademarks

Slogans can be registered in the same way as any other word marks and therefore the same registrability criteria apply – they must be sufficiently distinctive to distinguish the goods or services of one person from another. Generally, slogans are a combination of common words or generic phrases used for advertising or promotional purposes.

If trademark registration is sought for an inherently non-distinctive slogan in combination with another distinctive word or device element, such a designation can be registered in Russia as a whole, including the slogan in the trademark as an unprotected element if it does not occupy a dominant position. For example, in Trademark 307266 (covering goods and services in Classes 32, 33, 35, 42) the phrase "Drink to your health!" is disclaimed.

Non-use cancellation aspects

In Russia, trademark rights may be enforced only in cases of state registration. In this regard, Russia has a recognised three-year grace period. According to Article 1486 of the Civil Code, once this expires the mark will become vulnerable to cancellation following a lawsuit from an interested party if the trademark has not been used since registration (in Russia, non-use cancellation cases fall under the jurisdiction of the IP Court).

From a non-use cancellation prospective, the law provides that 'use' amounts to the use of the trademark with any change to its separate elements that do not influence the essence of the mark and do not restrict any protection granted to it. The paramount principle is that the trademark should be used in the way that it is registered.

Fluid trademarks can become an issue, as unregistered variations of trademarks may not always amount to trademark use.

Case А40-33585/08-51-339 is a useful example of how courts approach the issue use. In this instance, the court did not consider documents demonstrating use of the designations ICEBERG, LIGHT, FLUID ICEBERG, ICEBERG EFFUSION and ICEBERG MAN to be use of the international registration of Trademark 674384.

Another example reflecting approaches towards establishing use is a case where use of the word designation 'Medvezhya okhota' ('bear hunt' in English) did not amount to use of Trademark 220534 (that encompassed the element 'Medvezhya okhota'). The court recognised that use of the word designation changed the essence of the trademark, since the graphical element of the mark was not used (IP Court, 3 October 2016, Case SIP-357/2016).


Fluid trademark strategies can be useful for strengthening brand recognition. However, be wary of pitfalls that can weaken protection or lead to non-use cancellation cases. Further, the non-conventional nature of such trademarks is often accompanied by complexities at the prosecution stage, requiring greater skill and argument for obtaining and enforcing exclusive rights to such trademarks.

Originally published by World Trademark Review #75, October/November 2018

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Gorodissky & Partners
Gorodissky & Partners
Gorodissky & Partners
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Gorodissky & Partners
Gorodissky & Partners
Gorodissky & Partners
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions