Registering trade marks in Russia
1. Are there different types of trade marks (or other signs or source-identifiers) in your legal system (for instance, service marks, design marks, certification marks, collective marks, famous marks, trade dress)? Are rights in such trade marks based on statutory law or case law, or both?
2. Must you obtain a trade mark registration in order to have trade mark rights or can you acquire rights merely by using a mark?
3. Are there different standards for registering different types of marks (e.g., is secondary meaning required to register trade dress or certain types of trade dress such as product configurations)?
4. Is there a trade mark register? If so, is it publicly available?
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.
5. Are there different types of registers (e.g., Principal and Supplemental)?
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.
6. Is it normal practice to search for prior trade marks (whether registered or unregistered, if trade mark rights can be acquired through use) before applying to register a mark? If so, what sources should be registered?
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.
7. What are the requirements to register a trade mark?
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).
8. Who can register a trade mark (e.g. individuals, legal entities, trade bodies, etc)?
9. Please describe the registration procedure of a trade mark (if applicable). Does your legal system allow multi-class applications?
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.
10. Does your system require use in commerce of the applied for mark to be demonstrated as of the date of filing of the application?
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.
11. Does your system allow for the registration of series marks, i.e. a number of trade marks within the same application which resemble each other to some respect, possibly differing only as to non-distinctive elements which do not affect the character of the overall mark?
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.
12. Assuming there is an application for registration process, how long does it typically last? Does the applicant need representation (e.g. an attorney) to initiate the registration procedure? What are the typical office and attorney fees for a single word mark in one class?
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.
13. Do third parties have the right to participate during the registration procedure (e.g. by filing opposition proceedings or third party observations)? If so, please briefly summarize the applicable procedure. Do third parties participating in these procedures need any sort of standing or commercial interest (i.e. can anyone bring such an action, or do you need to qualify in some respect)?
14. Is it possible to revoke, change, amend or correct (or otherwise change) an application for a trade mark during the process of registration?
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.
15. Is it possible to assign an application for a trade mark or grant a license in relation to it during the application process?
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.
16. What are the remedies (if any) against the trade mark office regarding a refusal to register a trade mark?
17. What are the requirements for an exhaustion of trade mark rights in your legal system?
18. Does your country participate in the Madrid system, and are there any particular requirements for international registrations?
19. In what circumstances can a design mark be updated or refreshed?
20. Is there a symbol that trade mark owners should use to denote that a mark is registered (e.g., ®) or that they assert common law rights in the mark?
- 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.