Basics of the Trademark protection system of Russia
The first thing is that no protection is granted for unregistered trademarks in Russia. Exclusive rights are recognized only to the right-holders of trademarks, registered under national or international (via the Madrid system) registration procedures within the Russian Patent and Trademark Office.
The trademark registration is granted on a first come, first served basis.
Official trademark registration is mandatory for assignment, licensing and franchise agreements’ force.
The priority and exclusive right to a trademark are certified by a state-recognized Trademark Registration Certificate.
Russian Civil Code provides that word (verbal), figurative, 3-D (dimensional) and other (smells, sounds, colour combinations) designations or combinations thereof may be registered as trademarks.
A collective trademark may be registered by a group of affiliated persons for designating goods, produced or marketed by these persons and featuring uniform quality characteristics and other common specifications.
A trademark registration is valid for 10 years from the priority date. This period may be extended for the following 10 years upon filing a renewal application during the latest year of the validity period for unlimited number of times.
A trademark which have gained general notoriety in the Russian market may obtain the status of a well-known trademark and be protected indefinitely from the moment of its official recognition in this quality.
Early termination of a registered trademark as a whole or in part may be enforced following non-use of the trademark continuously for any 3 years after the registration thereof.
Trademark registration procedure at RuPTO
Trademark applications undergo a two-stage examination in the Russian Patent and Trademark Office.
1) First the application is examined as to form during the preliminary (formal) examination stage to assess whether all the formalities prescribed by the Law have been met by the Applicant. This stage usually lasts for 1 month of the date of filing an application.
Note: the number of NCL classes and the list of goods and services in each class in respect of one application are not limited;
neither notarization nor legalization requirements are imposed upon a power of attorney executed in Russia for the trademark registration purposes;
in case of receipt of an examiner’s enquiry the deadline for responding is 2 months from the date of its receipt by the Applicant, whereas the latter may apply for extension of this period.
2) The second stage (substantive examination) implies a test for absolute and relevant legal grounds for refusal. It is launched automatically after adoption of the Decision accepting the trademark application for consideration as the result of the previous stage and is conducted within not less than 9 months from the date of the application filing.
The final result of the substantive examination is documented by a Notification of provisional refusal or a Decision granting protection for the trademark.
Note: the non-extendible deadline for responding to a notification issued by a RuPTO examiner is 6 months from the date of its issuance.
3) The opposition procedure is not provided by the Russian law. However, a cancellation action against a trademark may be filed by an interested party. Please see the website section for Patent disputes resolution procedures.
4) On the basis of a favourable decision of the RuPTO and within 1 month of payment of the registration fee a trademark goes registered and entered to the Russian Trademark Registry.
On the grounds of non-use cancellation, early withdrawal or non-renewal by the rightholder or successful opposition a trademark may be removed from the Registry.
Absolute grounds for rejection: no registration and protection will be granted for a designation which is not distinctive or consists only of the following elements:
- commonly used to designate certain goods/services;
- generally adopted terms and symbols;
- those describing the relevant goods/services in terms of type, quality, quantity, functions, value or production and sale details thereof;
- corresponding to the shape of the goods which is determined exclusively or chiefly by the product’s functionality or purpose of use.
Either of the listed designations should be disclaimed by the Applicant and may enter into a trademark as an unprotected element. The same goes for the symbols of State, names and emblems of international and intergovernmental organizations, official control, guarantee or hall marks, seals, awards and other badges.
The Law does not prohibit to show evidence of obtaining the distinctiveness by the trademark.
Designations including elements which are deceiving (capable of deceiving) consumers in respect of the goods or manufacturers thereof, as well as those detrimental to the public interest and frivolous designations (those contrary to principles of humanity and morality) should not be registered as a whole.
The list of relevant grounds for refusal of trademark registration in Russia complies with a standard scope of trademark protection and is worth speaking of with respect to particular designations for the purposes of assessing registrability.
Our trademark registration experience
To date more than 700 Russian and international Trademarks have been registered by the instrumentality of our skilled specialists. Among them are considerably prominent and widely recognized Russian brands (see our portfolio page). Our established clients trust us with their brands’ life cycles from creation thereof to enforcement matters.
Preliminary searches carried out by our specialists provide our clients with accurate registration opportunities estimation.
Our trademark experts always adduce the strongest arguments in responding to RuPTO’s provisional refuses.
Please do not hesitate to choose our company as Your guide in the labyrinthal world of IP proceedings in Russian official entities.