Registering trade marks in Russia

In Russia, trade marks of various types are protected. These include verbal, graphic, three-dimensional, sound, holographic, motion, colour trade marks and combinations of them (combined trade marks). They may be registered in any colour or combinations of colours. Service marks are also protected under a regime similar to the regime of trade mark protection.) Well-known (but not famous) marks (WKM) and collective marks are also protected, their legal regime being different from the legal regime of ‘ordinary’ trade marks. Certification marks are not classed as trade marks in Russia. Rights in trademarks are created following their registration with the Federal Service for Intellectual Property (known by the abbreviation Rospatent, and which is the Russian equivalent of the PTO in the USA), rather than based on the fact they are being used. However, if an identifying mark has been previously used before the application is filed with Rospatent for its registration, this may have a positive impact on its registration since it has acquired a distinctive capacity.

A trade mark holder obtains an exclusive right in a trade mark only following state registration of it.

In Russia there is no special regime for protecting such items as a uniform packaging design, a type of packaging, product configuration and trade dress. Yet, such items may obtain legal protection. For this purpose we recommend registering industrial designs. Rights in such items are protected by patents. If not registered in any way, items are protected by copyright.

There is the Russian State Register of Trade Marks. Based on information in the Russian State Register of Trade Marks, Rospatent keeps an open (publicly available) register of trade marks and charges no fee for making it available. A search in it may be conducted based on the trade mark or application number.

Rospatent’s website also contains an open List (register) of well-known trade marks and an open register of applications for registering trademarks. There also exist unofficial (private) Registers that allow searching, for a fee, for trade marks and applications.

We always recommend that our clients search for a trade mark before filing an application for its registration. In this case both registered trade marks and filed applications, including international trade marks, should be searched.

The list of requirements is rather long. Some of them relate to whether a mark has a distinctive capacity. Others are based on the need to prevent consumers from being misled; a trade mark must not be false, and must not be contrary to the public interest, principles of humanity and morals. The specifics of using official symbols, names and distinguishing marks and items of cultural heritage of Russia's ethnic groups, world cultural heritage and natural heritage etc. impede registration. Pursuant to Russia’s obligations under the TRIPS Agreement, geographical indications protected in other countries (used for wine and spirits) also impede the registration of trade marks. 

Other intellectual property items may also serve as an impediment to registration, including corporate names, commercial names, appellations of origin, names of selection achievements, and industrial designs. The most common ground for rejecting the registration of a trade mark is that such trade marks are identical or confusingly similar in respect of homogeneous goods and services to trade marks or claimed marks of earlier priority. In this case, the trademarks also include protected well-known marks, collective marks and international marks. 

Rospatent performs an expert examination in a compulsory manner in respect of the above grounds. There are several further types of grounds for which Rospatent does not perform an expert examination. However, if it is later revealed that a trade mark registration which has been effected has infringed the established requirements, such registration may be challenged. Such grounds include rights in copyright items known in Russia (if a copyright holder has not given consent to the registration of a trade mark that uses the name of such item, for example, that of a character).

A legal entity that performs any type of activity or an individual entrepreneur may register a trade mark.

To register a trade mark, an applicant should file a relevant application with Rospatent. The application should contain the mark, its description, information on the applicant, and a list of goods and services in respect of which registration is requested. One trade mark (service mark) may be registered in respect of all forty-five classes of the International Classification of Goods and Services (ICGS). During registration, state duty is to be paid in an amount that depends on the number of classes regarding which the registration is applied for and is not less than USD 500. 

If an applicant is a foreign legal entity, it should be a patent attorney who is specifically appointed that should file the application. A power-of-attorney is required to confirm the attorney's powers. For powers-of-attorney issued in Russia, it will be enough just to sign them and affix a company’s seal (if any) on them. Powers-of-attorney issued in other countries are to be certified (they require an apostille or consular certification). The application that has been filed is examined by experts. Such examination involves two stages (formal checking and a check to find out whether the claimed mark meets established requirements). If, as a result of the examination, experts determine that the claimed mark meets the established requirements, a decision is taken to register the trade mark. After the applicant pays the duty, the trade mark is entered in the Russian State Register of Trade Marks.

If any impediments are found, the experts reject the registration. An applicant may appeal against such decision.

If you have such a system, are you able to proceed with the application on the basis of an intent to use for a period of time? Please describe the basic structure of your system, including any renewals and official fees associated with that. 

Russian legislation does not provide for any requirement to use a mark before the registration application is filed. Moreover there is no requirement to file, together with the application, a letter of intent to use it as a trade mark for any specific goods.

Russian legislation does not provide for any special rules relating to the registration of a series of trade marks. This is a fairly common practice.
Such trade marks that depend on each other, relate to each other on the basis of one and the same dominant verbal or graphic element, are similar to each other phonetically and semantically, and the graphic differences of which are insubstantial and do not change the essence of such trade marks, are recognised as a series.

The official period set to register a trade mark is 18 months from the date when the application is filed provided that there are no opposing marks and experts’ requests. If such requests are sent, the period may be extended by 2 to 6 months. 

In practice the registration period is no more than 1 year.

For a foreign applicant, it is required that a Russian patent attorney represent it. Russian applicants may file their applications themselves but in recent years they are using patent attorneys’ services more frequently.

The duty for filing a trade mark application regarding class 1 is approximately USD 500. 

Patent attorneys’ fees vary considerably, between USD 500 and USD 2,000. 

During registration procedures, third parties may file an application with Rospatent, which is similar to an opposition and contains an opinion that the trade mark may not be registered since it infringes the requirements of the law. An example is if such party has an exclusive right in a similar trade mark with an earlier priority. It is not required to justify the interest in filing such an application in this case. 

During registration, an applicant may amend its application (for example, reduce the list of goods and services or make minor changes in the claimed mark) and may also transfer its right to register to another person. To do this, it should send an application to this effect to Rospatent and should pay duty between USD 50 and 100. The amount of such duty depends on the nature of the amendments made. 

During the registration procedure, rights to the application may be assigned to another person. However, a licence to use a mark that has not yet been registered cannot be issued.

f the trade mark registration is rejected, an applicant may file an objection which will be considered by Rospatent's special unit, the Chamber for Patent Disputes. Based on the Chamber’s resolution, Rospatent will either uphold or dismiss the objection. If an applicant does not agree with the resolution it may apply to a specialised state commercial (‘arbitration’) court, the Russian Court for Intellectual Rights.

The international principle of exhaustion of a right is applied in Russia.

Russia is a party to the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement. For international trade marks to be protected in Russia, an expert examination should be carried out of such trade marks. As a part of such examination, these trade marks are checked for whether they comply with the requirements of Russian law.

Minor changes may be introduced into graphic and combined trade marks upon the trade mark holder's request; such changes should not affect the general appearance of the trade mark.

To notify that it has an exclusive right in a trade mark, a trade mark holder may use a protective mark that is placed near the trade mark. The protective mark may be

• a Roman letter ‘R’;
• a Roman letter ‘R’ in a circle;
• a verbal mark ‘trade mark’;
• a verbal mark ‘registered trade mark’.
• The law has not determined any symbol to denote a common right in a trade mark.

A trade mark is valid for 10 years, which starts to run from the date on which the registration application is filed. This term may be extended multiple times. To extend the trade mark term, one should file the relevant application and pay duty of approximately USD 320. The application may be filed during the last year when the trade mark is valid or within 6 months after the 10-year period expires. In such case, additional duty is to be paid.