On 18 July 2025,
Valentina Orlova, head of the IP and Trademarks Practice at Pepeliaev Group, participated in a joint hearing of the Public Council under the Federal Service for Intellectual Property (abbreviated in Russian as ‘Rospatent’) and the Russian public movement People’s Front. The central theme of the discussion was fighting trolling in the field of intellectual property and discussing ways to prevent it.
Yu.S. Zubov, head of Rospatent, N.I. Zolotykh, chairman of the Public Council under Rospatent, and S.A. Sokolov, first deputy head of the executive committee of the People’s Front movement, gave introductory speeches at the start of the meeting.
During her speech, Valentina Orlova noted that ‘patent trolls’ mostly bother businessmen whose merchandise is connected with creative industries, such as clothing, footwear, accessories, toys, and furniture. For small and medium enterprises (SMEs), it is essential that their products stand out among others, but registering a trademark is a process that is neither fast, nor cheap. Consequently, a tool is required that will allow representatives of SMEs to obtain protection for their products through means of identification or industrial designs within a short time and with minimal financial losses.
Valentina Orlova has proposed that temporary legal protection be granted for trademarks and industrial designs, which is a tool used in Armenia. However, for the legislation not to be amended at present, this tool may be applied in Russia in a form adjusted to the current situation. It is proposed that public information about the designation or industrial design itself, type of product, type of service (i.e. its area of use) and about the creator / ‘future right holder’ be published on the websites of the Chamber of Commerce and Industry, and of industrial unions/ associations of entrepreneurs. It is proposed to establish a symbolic payment or forgo payment altogether. Upon the expiry of 2-3 years, two options are possible: to renounce the protection or to file an application with Rospatent for the trademark or industrial design to be registered, as well as for full protection to be obtained. The presence of temporary protection will prevent extortionists from registering the trademarks.
In addition, Valentina Orlova proposed a change to the approach to amounts of duties and to the conditions for charging them: considerably increase the amount of duty for each class of the International Classification of Goods and Services above one, as well as restrict the number of stated goods and services by way of introducing duties for exceeding a certain amount of goods/services. In most situations, applications to register classes/goods/services are filed to be ‘hoarded’: trademarks with respect to them are never used, while the database of trademarks is being filled with information noise that hinders the registration of other trademarks. More specific and objective lists of goods and services must be filed for registration.
As for checking whether certain types of activity that the extortionist may specify as proof of the designation / trademark being used, such a check may be conducted, for instance, as part of inter-departmental cooperation with the tax authorities, which possess precise information about the activities such person actually performs.
Speaking of the Register of Bad Faith Holders of Trademarks, the expert noted that it can be formed only after a court or Russia's Federal Antimonopoly Service have recognised such trademark holders as acting in bad faith after examining a specific case over a breach initiated by the extortionist. A separate section of the register may include warnings regarding alleged extortionists from public associations, businessmen and other persons. It is important that such a register be public and that provision be made for having oneself removed from such a register. It would also be useful to make a register of ‘alleged extortionists’.
Valentina Orlova also touched upon the topic of challenging registrations of extortionists’ trademarks. The ground for such registrations to be challenged is unfair competition, which unfortunately is difficult to prove. However, the adoption of temporary protection (even in simplified form as is contemplated at present) will make it a lot easier to prove that someone is acting in bad faith. Extortionists should be held liable for expenses on proving the bad-faith nature of their actions.
The speaker summarised that, for these measures to be introduced, the legislation has to be amended, and now is the right time for such amendments to be initiated.
