Overview of Russian Federation Trademark Registration Service

Background

The economic crisis that struck all post-Soviet countries in the 1990s was nearly twice as intense as the Great Depression in the countries of Western Europe and the United States in the 1930s. Even before the financial crisis of 1998, Russia's GDP was half of what it had been in the early 1990s. Since the turn of the century, rising oil prices, increased foreign investment, higher domestic consumption and greater political stability have bolstered economic growth in Russia. The country ended 2007 with its ninth straight year of growth, averaging 7% annually since 1998. In 2007, Russia's GDP was $2.076 trillion (est. PPP), the 6th largest in the world, with GDP growing 8.1% from the previous year. Growth was primarily driven by non-traded services and goods for the domestic market, as opposed to oil or mineral extraction and exports.

Who May Apply?

An applicant may file an application with the Russian Patent and Trademark Office directly or through a registered patent attorney. Foreign applicants must apply only through a registered patent attorney. A legal entity or a person who is registered as an individual entrepreneur may be the owner of the exclusive rights in a trademark.

What Can Be Registered?

Word marks, design marks, three-dimensional marks or other marks capable of distinguishing goods, as well as a combination of these elements, can be registered. Based on the above wording of the new Law, it appears that acoustic, light, smell etc. marks can also be registered; however, it is not yet clear how the Russian Patent and Trademark Office will treat such applications. A trademark that is registered or even not registered in the Russian Federation but is well-known with regard to certain types of goods among respective consumers in the Russian Federation, may be granted a well-known status upon decision of the Chamber on Patent Disputes. A well-known status gives a trademark the same protection as for other registered trademarks. The well-known status also gives the owner protection against unauthorized use of the mark or designation confusingly similar thereto with respect to unrelated goods, if such use may mislead consumers.

What Cannot Be Registered?

The following designations cannot be registered as trademarks: 1. Designations that lack distinctiveness or consist merely of the elements: commonly used for designation of goods of a definite kind generally accepted symbols and terms descriptions of goods, in particular, indicating the type, quality, quantity, properties, purpose, value, as well as the venue, time and way of manufacture or sale of goods representing the form of goods which is exclusively or mainly determined by the properties or purpose of goods The above elements may be incorporated in a trademark as unprotected elements, unless they dominate therein. The above provisions shall not apply to the designations, which have become distinctive as a result of their use. 2. Designations which consist only of the elements representing national coats of arms, flags and other state emblems, abbreviated or full names of international intergovernmental organizations, their coats of arms, flags and other emblems, official countermarks, warranty marks and hallmarks, stamps, awards and other decorations, or designations so similar to them that it may cause confusion. Such elements may be incorporated into a trademark as unprotected ones, provided an appropriate competent authority has given its consent. 3. Designations representing or containing the elements: that are false or capable of causing confusion among consumers with respect to a product or the manufacturer thereof that are contrary to the public interest, humanitarian or moral principles 4. Designations that are identical or confusingly similar to the official denominations or images of especially precious cultural heritage units of peoples of the Russian Federation or of world cultural or natural heritage, as well as to images of cultural valuables kept in collections and funds, if such registration is requested in the name of the persons who are not owners (possessors) thereof and have not obtained the consent of the ownerslor of the persons authorized by the owners, to registration of such designations as trademarks. 5. Designations representing or containing the elements, which are protected in one of the member states to an international treaty to which the Russian Federation is a part of, as designations identifying wines or alcoholic drinks as originating from the territory (produced within the boundaries of a geographic unit of this state) and having a special quality, reputation or other properties which are mainly determined by their origin, if the trademark is intended for designating wines and alcoholic drinks which do not originate from the territory of this geographic unit. - - - 6. Designations that are identical, or confusingly similar to: a trademarks of other persons for which registration has been applied (if applications for them are not withdrawn) or protected in the Russian Federation, as well as under an international treaty of the Russian Federation, for homogeneous goods and which have earlier priority a trademarks of other persons recognized in the procedure established by the Law as famous trademarks for homogeneous goods in the Russian Federation 7. Designations that are identical or confusingly similar to appellations of origin, except for cases where these designations are incorporated as unprotected elements into the trademarks to be registered in the name of the person who has the right to use such appellations of origin. 8. Designations that are identical to: a a firm name (or its part) for homogeneous goods, an industrial design or certification marks, protected in the Russian Federation, other persons' rights to which have risen in the Russian Federation before the priority date of the trademark to be registered a the title of a work of science, literature or art, a character or quotation from such work, a work of art or a fragment thereof, which are known in the Russian Federation on the date of filing an application, without the consent of the copyright owner or the legal successor thereof, if the rights to these works had risen prior to the priority date of the trademark to be registered a a surname, first name, pseudonym and a designation derivative thereof, a portrait and facsimile of a person, who is known on the date ,of filing an application, without the consent of the latter or of the heir

Rights

Third parties may file a non-use cancellation request against a mark if it has not been used in commercial sale during the three years following the date of registration.

Filing Requirements

Application, in the Russian language, filed by an applicant or by a registered patent attorney. Note that the applicant is permitted to submit a Russian translation within two months after the filing of the application with the Russian Patent and Trademark Office. Convention: an application can claim the priority of the first application in another Member State of the International Paris Convention, if it is filed not later than six months after the first application was filed.

Evaluation & Review

Applications are examined by the Russian Patent and Trademark Office in two stages: the preliminary phase and the substantive examination. Within one month of the application, the Patent and Trademark Office examines it to determine whether all necessary documents have been filed and whether they are in compliance with the legal requirements. If the application is accepted for further examination, a priority date will be assigned and the applicant will be notified. Thereafter, the Patent and Trademark Office will verify whether there are any applicable grounds of refusal. Tk;e Russian Patent and Trademark Office may request additional information andlor materials during the examination process. The applicant has two months to respond; this time period is extendable up to six months upon receipt of the applicable fee. Within one month after the mark is registered, a certificate of registration is issued and sent to the applicant. In the event the application is rejected, the applicant has three months to file an appeal with the Chamber on Patent Disputes of the Russian Patent and Trademark Office.

Duration

Registration is effective for ten years from the date of filing, and can be renewed each time for additional 10-year periods.

Use

The owner of a registered mark is entitled to use the mark. Third parties may file a non-use cancellation request against a mark if it has not been used in commercial sale during the three years following the date of registration.

Domain Names

No provision

Enforcement

No provision.