Answer ... According to the Civil Code, a ‘trademark’ is “a designation serving for individualising goods of legal entities or individual entrepreneurs’ (Article 1477). Any protectable word, design, slogan, sound, symbol or similar that is capable of identifying goods and services can serve as a trademark. The list of signs that may function as trademarks is non-exhaustive, which allows for the registration of non-traditional marks. Article 1482 of the Civil Code provides that verbal, pictorial, three-dimensional and other indications or their combinations may be registered as trademarks. A trademark may be registered in any colour or colour combination. The wording ‘other indications’ confirms that the law is quite liberal in this regard.
Colour marks (either colours per se or colour combinations), sound marks, texture marks, olfactory marks, position marks, hologram marks, motion marks, taste marks and so on may be registered in Russia, but their inherent registrability depends on distinctiveness: either distinctive features of the mark per se or acquired distinctiveness through intensive use.
Answer ... In Russia, marks that lack distinctiveness cannot be registered. The legislation sets out a list of designations that are considered to lack distinctiveness; however, in some situations it is at the discretion of the Federal Service for Intellectual Property to decide whether a mark is distinctive. The legislation further provides for the registration of marks based on acquired distinctiveness.
Answer ... A trademark application may be rejected on either absolute or relative grounds, or on both absolute and relative grounds.
Absolute grounds relate to 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.
Relative grounds for refusal include:
- similarity to the extent of confusion with prior trademarks (both registrations and applications) owned by third parties in relation to similar goods or services;
- identity to, or similarity to the extent of confusion with, well-known marks; and
- identity to, or similarity to the extent of confusion with, third parties’ industrial designs, appellations of origin, company names or commercial designations.
A trademark may also be refused protection if it incorporates:
- protected means of individualisation of other persons (or confusingly similar signs);
- copyrighted objects owned by third parties;
- names, pseudonyms (or derivatives thereof), pictures or facsimiles of famous persons; or
- industrial designs owned by third parties.