Getting the Deal Through: Trademarks 201926 October 2018
1. Ownership of marks
Who may apply?
The Russian Civil Code says that a trademark may belong to a legal entity or an individual entrepreneur. Thus an application may be filed only by one of these. The legislation foresees the possibility of registering a collective mark. Collective marks are defined as trademarks owned by an amalgamation of entities used to designate goods that are produced or sold by the members of this amalgamation, provided those goods possess common characteristics of quality or other characteristics.
2. Scope of trademark
What may and may not be protected and registered as a trademark?
According to the Civil Code a trademark is ‘a designation serving for individualising goods of legal entities or individual entrepreneurs’ (article 1,477 of the Civil Code). Any protectable word, design, slogan, sound, symbol etc could serve as a trademark that identifies goods or services. The list of signs that may function as trademarks is open, which allows for registration of non-traditional marks. Article 1,482 of the Civil Code provides that verbal, pictorial, three-dimensional and other indications or their combinations may be registered as trademarks. A trademark may be registered in any colour or colour combination. The wording ‘other indications’ confirms that the law is quite liberal in this regard.
In Russia, registration of marks that are lacking in distinctiveness is not allowed. In spite of the fact that the legislation lists the designations that should be recognised as lacking in distinctiveness, in some situations the criteria of distinctiveness are arguable and remain at the discretion of the trademark office. Furthermore, Russian legislation provides for the possibility of registration of marks based on their acquired distinctiveness.
Colour marks (either colours per se or colour combinations), sound marks, texture marks, olfactory marks, position marks, hologram marks, motion marks, taste marks etc may be registered in Russia, but their inherent registrability depends on distinctiveness: either distinctive features of the mark per se or acquired distinctiveness trough intensive use.
3. Common law trademarks
Can trademark rights be established without registration?
Russia is a first-to-file jurisdiction. The legal entities or entrepreneurs who first apply for registration of a trademark have priority in obtaining trademark registration. Russian trademark legislation does not recognise prior use rights (as a general rule the exclusive right to use a trademark in Russia country arises as a result of state registration).
According to Russian legislation, the rights to a trademark appear from the moment of its state registration and no rights derive from the use of an unregistered trademark. However, since January 2008, when Part IV of the Russian Civil Code came into force, a new subject matter of intellectual property appeared: ‘commercial designation’. This is close to a trademark in its nature, but the right to use this designation arose based on the use of a commercial designation within a particular territory without its obligatory registration before an administrative body, such as the Russian Patent and Trademark Office (RPTO).
4. Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration? What additional documentation is needed to file a trademark application?
Approximate time frames for trademark registration in Russia are as follows:
- the official filing receipt is issued within one month of the date of filing an application or sooner;
- the official action is issued within 8 to ten months of the date of filing the application (possible examiner’s objections may increase the registration period to about two years, depending on the circumstances of the case, number of appeal stages etc); and
- where the trademark is successfully registered, the registration certificate is issued within two months of the date of payment of the official fee for registration.
In 2018 the RPTO introduced an accelerated trademark registration procedure.
There are no specific additional documents that should be filed with the trademark application except power of attorney. Filing power of attorney is optional, but if it is absent from the application the examiner may request submission of this document, which may have a negative impact on the registration process. It should be issued by the applicant and signed by the authorised person with an indication of that person’s name and position in the company. The date and place of the signature should be indicated as well. Neither notarisation nor legalisation is required. The power of attorney may be submitted after filing the application.
In cases of a priority claim under the Paris Convention, it is necessary to submit a certified copy of the first (home) application. The filing particulars should correspond to those in the home application. The home application can be submitted after filing an application under the Convention, but within three months from the date of filing the Convention application with the RPTO. This term cannot be extended. Split priority is not foreseen in Russia.
The official fee for filing and formal examination of a trademark application (in one class) is 3,500 roubles. The official fee for filing and formal examination of a trademark application in each additional class over five is 1,000 roubles. The official fee for substantive examination of a trademark application (in one class) is 11,500 roubles. The official fee for substantive examination of a trademark application in each additional class over one is 2,500 roubles.
The official fee for registration of a trademark is 16,000 roubles. The official fee for registration of a trademark in each additional class over five is 1,000 roubles.
The official fee for issuance of the certificate is 2,000 roubles, independent of the number of classes.
Discounted official fees are available in case of electronic filing.
Foreign applicants (with some exceptions) are not allowed to file applications with the RPTO directly and must engage a registered Russian trademark attorney. Thus the total registration costs would depend on the attorney’s fees for matters of this kind.
5. Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
When filing an application to register a trademark it is necessary to state the list of goods and services for which the trademark protection is sought. The goods and services are to be identified using precise and clear-cut wordings reflecting their nature. The wordings must be classified using the Nice Classification requirements, depending on the nature of goods and services and their purpose. Several classes can be claimed in one trademark application or additional classes added during the examination of the application. The goods applied for can be transferred to new classes provided such changes to the list and re-classification do not widen the scope of the protection that was initially requested. The possibility of filing multi-class applications allows filing costs to be saved.
In Russia, the scope of trademark protection is defined by the trademark name itself and the list of goods and services covered by the trademark. It should be kept in mind that in current Russian practice the class heading simply designates the fields to which the applied goods and services may relate in general and does not cover all the goods and services listed in a given class. When filing an application it is possible to claim the class heading, the list of specific goods or both the class heading and specific goods. The latter is the preferable option because it allows the applicant to obtain broader protection and to seek registration for those goods that are most important.
6. Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
The examination in Russia consists of formal and substantial stages. A formal examination of a trademark application is usually carried out within one month of the application being filed, or even faster. During the formal expert examination the presence of the necessary application documents and their compliance with established requirements is verified. According to the results of the formal examination, the application will either be accepted or refused for consideration.
The substantial examination stage is carried out to establish whether the claimed designation conforms to the registrability requirements. A trademark application may be rejected either on absolute or relative grounds, or on both absolute and relative grounds.
Absolute grounds are those that concern the substance of the mark itself, and include:
- lack of distinctiveness;
- risk of misleading and capability of confusing;
- confusing similarity to or identity with state symbols and marks;
- reproduction of full or abbreviated names of international or intergovernmental organisations or their symbols;
- and reproduction of the official names or images of the most valuable objects of Russia’s and worldwide cultural heritage.
The relative grounds for refusal include:
- identity or similarity to the extent of confusion with prior trademarks (both registrations or applications) owned by third parties in relation to similar goods or services;
- identity or similarity to the extent of confusion with well-known marks; and
- identity or similarity to the extent of confusion with third parties’ industrial designs, appellations of origin, company names or commercial designations.
A trademark may also be refused protection if it incorporates protected means of individualisation of other persons (and confusingly similar signs) as well as copyrighted objects owned by third parties, names, pseudonyms (or derivatives thereof), pictures, facsimiles of famous persons or industrial designs owned by third parties as elements of the trademark.
Before taking a decision on the results of the examination of an application, notification of the result is sent to the applicant with a proposal to the applicant to provide arguments concerning the reasons mentioned in the notification. The applicant’s arguments shall be taken into account when a decision is taken on the results of the examination if they are submitted within six months after the dispatch of the said notification to the applicant.
The substantial examination is followed by the examiner’s decision, which may be in the form of a registration decision in full, a registration decision for some of the applied goods (and consequently, refusal for the rest of the goods) or a refusal decision affecting all the applied goods.
A registration decision for all the applied goods necessitates payment of the registration fee to have the mark registered. If the mark has been partially accepted for registration there are then two options for the applicant: either to pay the registration fee to have the mark registered for the accepted goods or to appeal against this decision with the Chamber of Patent Disputes (a division of the RPTO). An appeal against the rejection may be filed with the RPTO within four months of the date of dispatch of the decision to the applicant. The decision that results from consideration of the appeal at the Chamber of Patent Disputes may be further disputed with the Intellectual Property Rights (IPR) Court.
7. Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
Unlike many other jurisdictions there is no need in Russia to file a declaration of use or intention to use along with filing an application.
Foreign registrations are not granted any right of priority over domestic applicants, but applicants residing in the member states of the Paris Convention enjoy the right to file applications based on conventional priority. The priority of a trademark may be established by the filing date of the first trademark application in a member state of the Paris Convention for the Protection of Industrial Property (Convention priority) if the trademark application is filed with the RPTO within six months of the said date.
Moreover, it is possible to claim the priority of a trademark placed on exhibits of the official or officially recognised international exhibitions organised on the territory of a member state of the Paris Convention if the trademark application is filed with the RPTO within six months after the said date.
The priority of a trademark may also be established by the date of its international registration in accordance with the international treaties of the Russian Federation.
Article 1,486 of the Civil Code implicitly provides for mandatory use of a registered trademark as a condition of keeping the right for such a trademark, even though the Code does not directly point out that an owner of a trademark must use the trademark. The legal protection of a trademark may be terminated in respect of all the goods and services or part of the goods and services for which the trademark has been registered due to continuous non-use for any three years after its state registration. A lawsuit for early termination of the legal protection of a trademark due to its non-use may be filed with the IPR Court by an interested person upon the expiry of the said three years, provided that a pretrial procedure is observed. Further to the requirements of the law, it is mandatory for a claimant to send a pretrial proposal to the rights holder asking him or her to either voluntarily abandon the trademark or assign the same with respect to all or part of the goods or services to the claimant before filing a non-use cancellation action. If the rights holder does not comply with this demand (ie, neither abandons the trademark nor assigns it to the claimant) within two months starting from the date the proposal was made, a non-use cancellation action can be filed with the IPR Court within 30 days from the expiry date of the two-month term. If a non-use cancellation action is not filed within the prescribed term, a new pretrial proposal can be made three months after the previous pretrial proposal was made.
8. Appealing a denied application
Is there an appeal process if the application is denied?
There is an administrative appeal process if an application is denied. The Civil Code foresees the possibility of appealing against a rejection with the Chamber of Patent Disputes, which is a division of the RPTO. An appeal may be filed within four months of the date of dispatch of the decision to the applicant. The RPTO’s decision resulting from consideration of the appeal at the Chamber of Patent Disputes may be further disputed in the IPR Court. The appeal deadline may be missed and reinstated within six months provided the reasons for missing the deadline are explained by the applicant.
9. Third-party opposition
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
The Civil Code provides that:
- the RPTO should publish information on the filed trademark applications;
- third persons have the right to review all trademark documents on file and not only those comprising the original trademark application’s filing; and
- third persons have the right to submit to the RPTO their observations against pending trademark applications before official action is taken. Such written observations may be taken into account by the examiner during the examination, but this ‘quasi’ opposition process is not competitive.
Russian legislation foresees another instrument for raising objections against a trademark. Within five years after information on registration is published in the official bulletin of the RPTO (after a trademark is registered), the owners of the prior trademark rights have an opportunity to file an invalidation action against the trademark registration with the RPTO. In the event of such action, the trademark owner is notified accordingly and both parties are invited for consideration of the matter at the hearing. As a result of this consideration the RPTO makes a decision on the matter (rejecting the invalidation action and leaving the trademark in force, invalidating the mark in full or partially invalidating the mark).
An invalidation action or a cancellation action against a trademark registration on other grounds foreseen by the legislation may be filed during the entire term of trademark validity.
10. Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
A trademark registration remains in force for 10 years from the date of filing the trademark application. It may be renewed every 10 years without any limitations on the number of renewals. No evidence of use is required for maintenance of a trademark registration.
11. The benefits of registration
What are the benefits of registration?
As Russia is a first-to-register jurisdiction, trademark registration is of the utmost importance for its owner and enables the registrant to enforce the trademark. In addition, trademark registration makes it possible to record the same in the IP Customs Register, thus preventing unauthorised imports of branded goods into Russia.
May a licence be recorded against a mark in the jurisdiction? Are there any benefits to doing so or detriments to not doing so?
Under Russian law the granting of the right to use a trademark under the licence agreement must be recorded at the RPTO. Without such registration the licence is not considered granted and the parties cannot refer to the licence in relations with third parties. The registration can be done through filing the licence agreement or excerpt from the same with the RPTO, or by filing a notification form (‘statement of licence’) that must be signed by the parties as a separate document containing a minimal piece of information, including the names of the parties, the type of licence (exclusive, non-exclusive or sub-licence) and the subject of the licence, along with the number of the trademark certificate. No financial or other sensitive confidential contractual data must be disclosed in such a notification.
What can be assigned?
A trademark can be assigned with respect to all or some of the goods and services for which it has been registered. Partial assignment is allowed provided it will not mislead (it is not possible to assign a trademark for some of the goods or services while similar goods or services remain owned by the assignor). Partial assignment of a pending trademark application is not allowed. No assignment of goodwill or other business agreements is required to make the assignment transaction valid.
14. Assignment documentation
What documents are required for assignment and what form must they take?
In order to register an assignment the following documents are generally required:
- the original assignment deed, or notarised excerpt therefrom, containing all essential elements set out by Russian law;
- the Russian translation of the agreement or excerpt, if these documents are not bilingual; and
- the power of attorney from either of the contractual parties (notarisation or legalisation is not necessary).
Importantly, instead of the above-referenced documents (agreement or excerpt), it is possible to submit the notification form (that is, the statement of licence or pledge), which must be signed by the parties as a separate document and contain the following information:
- type of deed (assignment);
- parties (assignor and assignee); and
- subject of the assignment with the number of the trademark certificate.
No financial or other sensitive confidential contractual data must be disclosed.
15. Validity of assignment
Must the assignment be recorded for purposes of its validity?
The assignment must be recorded at the RPTO to be valid in Russia.
16. Security interests
Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?
Security interests are recognised in Russia and are enforceable subject to their being recorded at the RPTO. No notarisation is required for the purpose of the record and simple signing by the authorised representatives of the parties (such as the CEO) is sufficient.
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?
Under article 1,485 of the Russian Civil Code the trademark owner, when giving notice of his or her exclusive right to a trademark, shall have the right to use the symbol of protection, which shall be placed alongside the trademark and consist of the Latin letter ‘R’, or the Latin letter R in a circle ®, or the verbal indication ‘trademark’ or ‘registered trademark’, which shall indicate that the sign used is the registered trademark protected in the territory of the Russian Federation.
Hence, the owner of a trademark is allowed to use the precautionary trademark marking. However, the trademark owner is not prevented from omitting such marking. Should the owner be interested in notifying the public that his or her sign is registered as the trademark he or she may use the symbol stated above. Note that Russian legislation does not contain any provisions with respect to the use of the ™ sign.
The use of a precautionary marking with respect to unregistered or pending designations is not allowed and may entail criminal liability.
18. Trademark enforcement proceedings
What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?
The measures listed below are those that can be undertaken against an alleged infringer in Russian law.
A cease-and-desist letter may be sent (in commercial courts this is optional for non-material claims, but mandatory for material claims such as compensation or damages).
A civil route of action is the most commonly used option by rights holders, since it allows them to claim the following, but it usually takes four to six months to obtain a decision in the first instance:
- cessation of trademark infringement;
- recovery of losses (damages) or payment of a statutory compensation;
- publication of the court’s decision with the aim of restoring goodwill of the injured party; or
- removal from the goods or packaging of the illegally used trademark or sign confusingly similar to it, or destruction of the counterfeited goods, labels or packages at the expense of the infringer.
In accordance with the Criminal Code, the illegal use of a trademark shall entail criminal liability for the infringer only if it was committed repeatedly or caused damage in excess of 250,000 roubles. The total duration of criminal proceedings is usually about one to two years.
Administrative proceedings start from the filing of a petition with the police. Based on the petition the police conduct a raid on the infringer’s premises (offices, warehouses, shops) and seize all the counterfeit goods discovered therein. As soon as the police have all the evidence of the infringement they issue an administrative violation report and send all the materials of the case to the court. There a final decision is made, according to which the court may refuse to satisfy the application of the police or hold the infringer to administrative responsibility, which includes imposing a fine and confiscating all the seized goods for their subsequent destruction. Usually this procedure takes three to four months.
Special administrative procedure
Trademark infringement is an instance of unfair competition. The Russian Antimonopoly Service (RAS) is empowered to consider disputes related to unfair competition through a special administrative procedure. This procedure starts on the basis of an application filed by the trademark holder and terminates with the decision taken by the RAS. The latter may be appealed with the commercial court. The procedure lasts about four to nine months.
A trademark can be recorded in the special IP Customs Register to prevent unauthorised importation of the branded goods into Russia. Where the trademarks are entered into the Customs Register the customs authorities monitor every consignment of the goods marked with the trademarks in question, and if they discover unauthorised importation they detain the goods (the term for detaining is 10+10 days) and inform the rights holder. Upon examination, in a case of counterfeit goods the rights holder may, within the term of detention (20 days) initiate administrative, civil or criminal proceedings in order to bring the infringer to responsibility. Including the trademarks in the Russian Customs Register may be a wise precautionary measure to avoid penetration of counterfeit products into Russia.
19. Procedural format and timing
What is the format of the infringement proceeding?
Civil infringement proceedings start with collecting evidence by the rights holder, and drafting and sending a cease-and-desist letter if necessary. In commercial courts (handling disputes between companies and private entrepreneurs - most cases are handled by commercial courts) the cease-and-desist letter stage is optional for non-material claims (eg, cessation of infringement, prohibition on the use of IP subject matter or confiscation of the infringing products and equipment used for manufacturing such products). However, since 12 July 2017 it has become mandatory to send a cease-and-desist letter for material claims (damages or compensation) 30 days before filing a civil action with the court. It should be noted that the mentioned pretrial order is not applicable to cases handled by common courts (handling disputes in which individuals are involved).
No discovery proceedings are provided by Russian law and the parties must secure evidence themselves. The decision on the case is issued by a court on the basis of evidence submitted by the parties. In cases where issues require special knowledge, an independent expert may be ordered by the court. Live testimony is allowed, but not commonly used, as judges prefer to rely on material evidence and written submissions. The civil proceedings typically take four to six months to obtain a decision from the initial court.
Russian law also provides an administrative and criminal enforcement mechanism that starts from filing a complaint with the police (or public prosecutor). During the proceedings an independent expert may be called by the police investigator. The final decision on the administrative or criminal case is issued by a court. The administrative procedure usually takes about three to four months, whereas the criminal procedure takes about one to two years.
Unfair competition actions are also available and cases such as illegal use of IP, false advertising, imitation of the products, copycats and so on are handled by the Antimonopoly Authority. It usually takes about three to four months to obtain a decision in an unfair competition case.
20. Burden of proof
What is the burden of proof to establish infringement or dilution?
Under Russian law, each party to the dispute must prove their statements and legal arguments by the use of relevant evidence.
Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?
The trademark owner or his or her registered exclusive licensee shall be entitled to sue for trademark infringement only. Administrative or criminal proceedings may be initiated on the basis of a complaint filed by any person or on the basis of information received by the police (or public prosecutor) themselves. In such cases the trademark owner can be involved as an injured party.
22. Foreign activities
Can activities that take place outside the country of registration support a charge of infringement or dilution?
Russian law enforcement authorities can deal with infringements committed within the territory of the Russian Federation only. However, the existing border protection mechanisms, such as the IP Customs Register, allow for prevention of the unauthorised importation of goods into Russia. Note that there is also the Eurasian Economic Union (EAEU) between Russia, Kazakhstan, Belarus, Armenia and Kyrgyzstan, within which no customs borders exist and the goods may flow from one country of the Union to another without customs control. With this in mind, registration (obtaining a legal protection) of the trademark and its recording in the local IP Customs Registers is advisable.
What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?
Russian law does not provide discovery proceedings and the parties to the dispute should collect evidence themselves. In the meantime, a person participating in the case and lacking the opportunity to obtain the necessary evidence from the person possessing it may file a motion for the court to order the presentation of this evidence. The evidence must be specified in the motion along with the circumstances significant to the case, which may be established by this evidence, as well as the reasons impeding the obtainment of the evidence, and its location. If the motion is satisfied, the court orders the person possessing the appropriate evidence to present it.
What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?
Russian law provides for two types of security measures: preliminary and interim. A motion for preliminary injunctions can be filed before filing the lawsuit. In this case the judge must consider the motion, and if the security measures are granted the plaintiff is granted a term not exceeding 15 days in which to file the lawsuit. A motion for an interim injunction can be filed along with the lawsuit or at any stage of the court proceedings before the judgment is issued. A motion for security measures must be considered by the court no later than the next day from the filing date.
If a pretrial order is envisaged by the law as a mandatory stage (eg, for material claims such as damages or compensation), the court shall give the plaintiff up to 15 days to send a cease-and-desist letter to the opposite party and up to five days to file a lawsuit upon expiry of the term for pretrial procedures (in particular, 30 days for material claims in IP disputes).
The typical time frame for civil litigation is four to six months for the decision of the first-instance court to be issued. The decision enters into force in a month if no appeal is filed. The resolution of the Court of Appeals enters into force as of the date it is issued in writing and may be appealed to the IPR Court within two months. The resolution of the IPR Court can be appealed to the Economic Collegium of the Supreme Court within two months and its judicial act can be further appealed within three months. The last instance is the Presidium of the Supreme Court.
25. Litigation costs
What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?
The typical cost range for handling a trademark infringement case in the first instance court is about US$20,000 to US$25,000. This amount may vary, however, depending on the complexity of the case. The costs for handling the case at the appeal instances could be within the range of US$7,000 to US$15,000 per appeal instance.
What avenues of appeal are available?
The decision of the first instance court can be appealed to the Court of Appeals. The resolution of the Court of Appeals can be appealed to the IPR Court. The resolution of the IPR Court can be appealed to the Economic Collegium of the Supreme Court of the Russian Federation. The resolution of the Economic Collegium of the Supreme Court of the Russian Federation can be appealed to the Presidium of the Supreme Court of the Russian Federation.
What defences are available to a charge of infringement or dilution, or any related action?
The defendant may try to prove the absence of the infringement (such as challenging the evidence) or initiate an invalidation action against the trademark. Note, however, that an invalidation action is considered by the administrative authority (the RPTO) and this is not grounds for the court to postpone or suspend the infringement proceedings. Both trademark infringement litigation and invalidation cases will be independent of each other. Also, the defendant may initiate an unfair competition action claiming that obtaining a trademark registration and suing for an infringement are acts of unfair competition (such as in the case of a trademark being registered by a distributor or other third party preventing the producer of genuine goods from distributing the goods on the Russian market). Finally, the defendant may claim an abuse of rights on the part of the trademark owner, which is legal ground for the court to dismiss the infringement action (such as in cases where the trademark owner does not use the trademark and the only purpose of filing the lawsuit is to inflict harm on the competitor).
Of course, the defendant can also file a non-use cancellation action with the IPR Court. However, in cases of cancellation of the trademark the legal protection shall be terminated from the date that the decision enters into force and shall not release the defendant from monetary claims (damages or statutory compensation).
What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?
Russian law provides for two types of security measure: preliminary and interim. The motion for preliminary injunctions can be filed before filing the lawsuit. In this case the judge must consider the motion, and if granting the security measures must give to the plaintiff a term not exceeding 15 days for filing the lawsuit. The motion for interim injunctions can be filed along with the lawsuit or at any stage of the court proceedings before the judgement is issued. The motion for security measures must be considered by a court no later than the next day from the filing date.
The court grants the security measures if the following conditions are observed:
- if failure to take these measures may impede or make the enforcement of a judicial act impossible, and likewise if the enforcement of a judicial act is expected to take place outside of the Russian Federation;
- the security measures are required for the purpose of preventing the infliction of extensive damages to the applicant;
- the claims for security measures do not repeat the claims stated in the lawsuit; or
- the claims for security measures are adequate to the claims stated in the lawsuit.
According to Russian law, the trademark owner shall be entitled to claim:
- cessation of trademark infringement (permanent injunction);
- recovery of losses (damages) or payment of statutory compensation: within the range of 10,000 to 5 million roubles (determined by the court on the basis of evidence provided and circumstances 0f the case), or double the cost of counterfeit goods, or double the cost of a licence (royalties);
- publication of the court’s decision with the aim of restoring goodwill of the injured party; and
- removal from the goods or their packages of the illegally used trademark or sign confusingly similar to it, or destruction of the counterfeited goods, labels or packages at the expense of an infringer.
In the case of illegal use of a trademark or service mark, name of the place of origin of goods or similar designations for homogeneous goods, if this deed has been committed repeatedly or has caused substantial damage it shall be punishable by:
- a fine of 100,000 to 300,000 roubles, or the amount of the wage or salary, or any other income of the convicted person for up to two years;
- compulsory work for up to 480 hours;
- corrective labour work for up to two years;
- imprisonment for up to two years with a fine of up to 180,000 roubles; or
- a fine in the amount of a wage, salary or other income of the convicted person for up to six months.
The actions specified above, committed by a group of persons by previous concert or by an organised group shall be punishable by:
- a fine of 500,000 to 1 million roubles or the amount of the wage, salary or other income of the convicted person for three to five years;
- compulsory labour work for up to five years; or
- imprisonment for up to six years with a fine of up to 500,000 roubles or a fine in the amount of a wage, salary or other income of the convicted person for up to three years or without a fine.
Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?
In essence, commercial disputes are considered by state courts. However, Russian law provides a possibility to entrust the resolution of a dispute to a private arbitration tribunal or mediator if both parties agree to this. While the Law on Arbitration Courts in the Russian Federation regulates respective procedures and is indeed a good alternative to the state court, the main idea of the Law on Alternative Dispute Resolution with the Participation of an Intermediary (Mediation) is to keep people out of the courts and help them to solve the dispute without litigation. If the mediator fails to help the parties to find a solution the dispute may be solved by a state court or an arbitration tribunal. The decisions of both state courts and arbitration tribunals are obligatory for the parties and must be enforced. Where the party fails to enforce the decision the other party in whose favour the decision is issued shall be entitled to file an application with the Bailiff Service to force the enforcement of the judicial act.
30. Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
In Russia a trademark can enjoy protection as a well-known mark that may not necessarily be a registered designation. Russian legislation foresees the procedure of recognition of a well-known trademark.
As well as the usual trademark filing procedures through the RPTO or through the Madrid Agreement/Protocol registration, legal protection for a well-known trademark can also be obtained through a special recognition procedure. In Russia, unlike in many other countries, a trademark is not granted well-known status as a result of court proceedings or litigation. According to Russian trademark legislation, in order for a trademark to be recognised as well known, the appropriate request should be filed with the RPTO.
A well-known trademark shall be granted the same legal protection as is provided for an ordinary trademark. Nonetheless, a well-known trademark provides its owner with certain important advantages:
- the legal protection of a well-known trademark is not time-limited;
- protection extends to goods or services of a different kind from those for which it is recognised as well known, if use of the mark by another person is likely to be associated by consumers with the owner of the well-known trademark and may impair its lawful interests;
- protection of a well-known mark may start at the period that predates the filing date of the respective request to recognise the trademark as well known; and
- the commercial value of a well-known trademark is higher than that of an ordinary trademark.
The well-known status should be evidenced by numerous documents and materials confirming the intensive use of the mark and its reputation among consumers in association with the goods or services for which it is requested to be recognised as well known, and in association with the trademark owner. In seeking to have its trademark recognised as well known, the applicant should indicate the goods or services for which the mark has become well known, and the date from which the trademark became well known.
Along with a petition for the recognition of a well-known trademark, the following information may be submitted:
- the results of a consumer survey regarding the goods at issue, revealing consumer knowledge of the trademark and performed by a specialist organisation;
- examples of intensive use of the trademark, especially in Russia;
- a list of countries where the trademark has acquired a well-known reputation;
- examples of advertising costs incurred relating to the trademark and examples of advertising;
- details of the value of the trademark;
- publications in Russian periodicals; and
- documents containing information about supplies of goods to Russia etc.
It is not compulsory to submit all of the above-listed evidence. Trademark legislation does not contain a list of obligatory documents that must be submitted along with a petition for the recognition of a trademark as well known.
Practice shows that it is recommended that evidence of use of the trademark in Russia be submitted in support of the petition recognising a trademark as well known. Special attention should be paid to the opinion poll results. Such polls must be carried out in at least six of Russia’s largest cities, including Moscow and St Petersburg. Other cities may be chosen by the applicant, depending on the sphere of activity and the regions of trademark use.
Determining the date from when the trademark became well known is also crucial, and careful review of all available materials is required. The date from which the trademark became well known should be indicated precisely.
The RPTO takes a strict approach towards petitions to recognise marks as well known, and these are denied quite often. The main difficulty encountered during proceedings is demonstrating that consumers have a strong association between the trademark and the goods or services for which the trademark is used, and with the trademark owner. Often consumers recognise the trademark, but have little knowledge about its owner. Formally a trademark may belong to an IP-rights holding company, the name of which is not known to consumers. Furthermore, if the date from which the applicant would like to have its trademark recognised as well known refers to a period in the past, the supporting evidence should predate the date mentioned in the request.
As of June 2018 there are 195 well-known trademarks published in Russia, including Nike, Coca-Cola, Disney, Tiffany, Intel, Gallup Institute, adidas, Gillette, Nikon, Elle, Heinz, Casio, Red Bull, Marlboro, Nissan, Pepsi, Braun and CAT.
Updates and trends
In terms of trademark prosecution there is a strong tendency to transition to e-filing as well as to shortening the trademark applications examination term. As mentioned above, an accelerated procedure in respect of examination of trademark applications has recently been introduced.
In terms of trademark enforcement against parallel imports there is a new Resolution of the Constitutional Court of the Russian Federation, dated 13 February 2018, which will affect judicial practice with respect to this issue. In particular, the Constitutional Court confirmed the ban on parallel imports due to the existing regional principle of exhaustion of rights within the EAEU. This principle, however, should not be applied automatically without consideration of all the circumstances surrounding the case, including good faith of the trademark owner.
In particular, the Constitutional Court ruled that the trademark owner shall not be allowed to use his or her trademark rights abusively to restrict imports of some selected goods of public interest, such as drugs or life-support equipment, or to overprice goods in Russia in comparison with other countries. The court may raise the issue of good faith of the trademark owner, who may have to prove that his or her lawsuit is not an abuse of trademark rights, including the pricing policy for the Russian market, and that the ban on parallel imports will not jeopardise the health and lives of people or pose a risk to the public interest.
While recognising the right of a trademark owner to prevent unauthorised importation of goods to Russia, the Constitutional Court ruled that the legal consequences for the same actions with respect to grey products and counterfeit goods should not be the same. In particular, the amount of compensation for parallel imports should be less than for the importation of fake goods. The courts are free to reduce the claimed amount of compensation at their own discretion, depending on the circumstances of the case and possible negative consequences for the trademark owner. In addition, the destruction of goods imported to Russia as a result of parallel imports shall be permitted only if they are of low quality or for reasons of security, safeguarding people’s health and lives, protecting the environment and cultural values.
From a practical point of view, the decision of the Constitutional Court means that it has become more complicated to enforce trademark rights against parallel imports in Russia. Although it is still possible to claim a ban on importation of a particular consignment and statutory compensation, the court may not agree with the claim and dismiss the case.