On 3 July 2018, the Russian Constitutional Court ruled that the surviving company with which a trademark owner merged becomes the new trademark owner when the former trademark owner is registered on the unified state register of legal entities as ceasing its activity. The registration of the transfer of the trademark with Rospatent does not constitute, but rather confirms, the transfer of the ownership rights to such trademark. Until recently the surviving company needed to register the transfer of the non-surviving company's trademark to it, before it could apply for trademark renewal with Rospatent. Only after registration of such transfer to it, the new owner could renew the trademark certificate.
The reasoning for such ruling is to avoid a legal gap that would exist between the moment of cessation of the former trademark owner's activity and the moment of registration of the trademark's transfer to the surviving company. Such legal gap would deprive the surviving company from judicial protection of the acquired trademark rights. However, the Constitutional Court did make it clear that the exercise of any the trademark rights is only possible after registration of the transfer. So, the protection for the owner of the trademark continues without any gap, but the right to use the courts to ensure your rights is only possible after the registration of the transfer with Rospatent.
In that particular case, the Constitutional Court ordered Rospatent to renew the trademark along with the application to register the trademark transfer.
The decision may also have wider implications for the business practice. It is arguable that the Constitutional Court ruling means that other rights relating to the trademark entered into with the new trademark owner (eg a license or pledge agreement) could be filed for registration with Rospatent along with the application to register the trademark transfer. Whether Rospatent would adapt its internal registration rules to allow this remains questionable. So, whilst this ruling does remove some legal uncertainty and a step in the Rospatent process, it does seem that the most prudent course of action is to register the transfer of the trademark arising from the merger with Rospatent as soon as possible.
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.