It is often asked whether it is necessary to register a trade mark in Cyrillic and Latin characters to avoid cancellation due to non-use in Russia. It is not without reason that usually a patent attorney recommends registration of both versions of the trade mark. However, it is possible sometimes to prove the use of a trade mark in Latin even though only its equivalent in Cyrillic is used.

The Chamber of Patent Disputes recently examined a case regarding the early termination of a trade mark registration due to non-use. The opposition was filed against a trade mark written in standard Latin characters, but the trade mark owner's licensee produced evidence of use of the mark. The trade mark was used on the packaging of a product in Cyrillic; in other words it was transliterated.

The Chamber applied Article 5 C(2) of the Paris Convention according to which the use of a trade mark in a form which is different from the registered trade mark in certain elements which do not alter the distinguishing character of the trade mark should not entail invalidation of the trade mark and should not limit the scope of protection.

The Chamber concluded that "a different form" may be understood in such a way that it may be a registered trade mark in Latin characters transliterated into the Russian characters. The Chamber ruled that the use of the transliterated trade mark does not change the essence of the mark and can be associated with it in general. In fact, the trade mark was adapted to the use on the Russian market.

The licensee also provided information on the volume of sales that proved that the product was being sold in the amount sufficient to meet the demand on the market. So the Chamber confirmed that the documents submitted by the licensee prove the use of the trade mark for the goods for which it had been registered.

This decision is the first of its kind and has precedential importance. Nevertheless, trade mark owners should treat this first case with caution and not rely on it as being a blueprint for all future cases. They should wait until Patent Office practice makes it a rule.