Whether you already do business in Russia or are just considering entering the market, managing and defending your trademarks rights can be a daunting prospect. Indeed, Russia's complex legal structure and high degree of government protectionism frequently present serious challenges to foreign entrants looking to grow and expand their brands into the region.
To help you navigate this area with confidence, below we outline some key aspects of Russia's trademark regime.
- Russia is a first-to-file and "Madrid" country
Rights to a trademark belong to the first person to file an application. Unregistered marks or marks merely in use have limited protection. Proof of use is not a prerequisite for registration.
Both traditional (words, logos or graphic designs) and non-traditional trademarks (colors, sounds, smell) are protectable in association with both goods and services. Trade dress is not protectable as a trademark but the Federal Law on Competition Protection does prohibit imitation of the appearance of a competitor's goods.
Prudence dictates that one should always take steps to file a trademark application before planning for market entry.
- Well-known trademarks are protectable
If a trademark has become widely known in Russia among relevant consumers with regard to an applicant's goods or services, it may qualify for well-known status.
A request to accord well-known status is submitted to Rospatent. The burden of proof is an onerous one but the benefits can be very potent.
- Certification marks separate from trademarks
The certification mark system exists separately from the trademark system and the rights that are accorded are different. A certification mark application is filed with the Federal Agency on Technical Regulation and Metrology (Rosstandart).
- New geographical indications
New amendments to the Civil Code will enter into force beginning July 27, 2020. The amendments are aimed at improving legal protection of appellations of origin of goods; the amendments are also aimed at introducing a new means of individualization of goods by way of "geographical indication." It will co-exist alongside the protection of appellations of origin, but with a lower threshold for registrability.
A geographical indication will allow for the identification of goods as originating from the territory of a geographical object. Moreover, to qualify, a certain quality, reputation or other characteristic of the product will have to be largely determined by its geographical origin. Also, the goods will have to go through at least one stage of production in that territory.
- Only post grant oppositions
There is no formal opposition process during prosecution. Upon registration, anyone can seek cancellation of a registration in the Chamber for Patent Disputes on absolute or relative grounds. It is nonetheless possible to file a letter of protest (written observations) during examination. One should be vigilant to submit the protest letter on time as the examination window extends for about 8-12 months after filing and can be much shorter if the applicant has requested expedited examination.
And two more...
- Non-use cancellation is not summary in nature
A request for non-use cancellation is made by way of a court action in the IP Court. The requesting party has an onerous initial burden of proving that it has a legitimate interest in bringing the action. Thereafter the trademark owner must prove use with credible business records.
- Monetary remedies for infringement are varied
In trademark infringement cases, instead of claiming damages, which require a higher standard of proof, a right-holder can request in the alternative, statutory compensation in an amount up to USD $60,000 or payment of twice the price of the infringing goods.
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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.
