ICLG - Trade Marks 2015 - Russia Chapter

1 Relevant Authorities and Legislation

1.1 What is the relevant Russian trade mark authority?

The relevant trademark authority in Russia is the Russian Patent and Trademark Office/Russian PTO (also known as “Rospatent”).

1.2 What is the relevant Russian trade mark legislation?

The relevant trademark legislation basically includes the Paris Convention for the protection of Industrial property, Madrid Agreement of International Registration of Trademarks (and the Protocol thereto), Trademark Law Treaty, Singapore Treaty, TRIPS, the Russian Civil Code (Part 4), the Rules for filing and consideration of trademark applications insofar as it is in compliance with the Russian Civil Code, other official guidelines and recommendations.

2 Application for a Trade Mark

2.1 What can be registered as a trade mark?

Words, graphic designations, composite marks composed of word and graphic elements, non-traditional marks such as 3D marks, smell marks, motion marks, position marks, sound marks, colour marks and others can be registered as trademarks. The list of designations available for registration is not exhaustive.

2.2 What cannot be registered as a trade mark?

Designations which are not capable of distinguishing the goods and services of one undertaking from those of another cannot be registered as trademarks.

2.3 What information is needed to register a trade mark?

The information required for the registration of a trademark must include the trademark name and its description, the exact specification of goods and services being classified in accordance with the Nice Classification, priority claims, if appropriate, colour claims unless the mark is sought to be protected in B&W, the full name and address of the applicant, and the address for service.

2.4 What is the general procedure for trade mark registration?

Once an application is filed it has to be examined. The examination is composed of the formal and substantial stages. At the formal stage, which lasts one month, it is verified whether the application materials meet formal requirements (e.g. whether the application form is duly completed and all the required information is submitted). The formal examination stage is followed by the examination in substance whereby an absolute and relative grounds check is conducted by the Russian PTO ex officio. During the examination the Russian PTO is entitled to issue official inquiries if there are any issues to be clarified or specified by the applicant.

Also, in the case of any obstacles to the registration of a trademark, whenever these are revealed by the Russian PTO at the examination stage, the Russian PTO is supposed to issue official notifications (provisional refusal Office actions) providing the applicant with an opportunity to submit arguments in support of the application before making a final decision on the application. The substantive examination is followed by a decision which can be issued in the form of a registration decision for all the applied goods, or a registration decision in respect of a part of the applied goods, or a refusal decision affecting all of the applied goods. When a registration decision is made, the applicant is supposed to pay the Official registration fee in order to get his mark registered.

2.5 How can a trade mark be adequately graphically represented?

With respect to word and graphic marks or compositions thereof, an image of the mark in the form of prints is submitted. As regards a 3D mark, the applicant must present a general view image, as well as additional images of the mark in all necessary projections, that outlines the comprehensive information about the 3D object applied for registration and allows the examination of all of the relevant details.

With respect to sound marks, the application may include a sound notation and/or may be accompanied with a phonogram sample. If a motion mark is applied for registration, the applicant must submit a video recording of a frame-by-frame reproduction. If a smell mark is applied for registration, the applicant is supposed to submit a substance or sample material which identifies the scent. In respect of colour marks, the exact colour or combination of colours is to be reproduced in the application. In all cases, a trademark, whether traditional or non-conventional, has to be described in order to identify the nature and specifics of the applied object precisely.

2.6 How are goods and services described?

The goods and services are to be described and classified in accordance with the Nice Classification system. It is permissible to claim a class heading, a list of specific goods/services, or both.

With respect to class headings, it is worth keeping in mind that a class heading basically indicates the fields of business to which the goods and services may relate in general and it may not cover all of the goods listed in this class.

It is not permitted to use such wordings as “all goods included in this class” or similar thereto when generating specifications of goods and services, as such wordings are considered to be too vague. The main requirement to be met is that the applied goods and services be designated using precise wording (preferably as close as possible to the existing wording of the Nice Classification) that will allow the nature of goods and services to be identified unambiguously.

2.7 What territories (including dependents, colonies, etc.) are or can be covered by a Russian trade mark?

The trademark protection conferred by registration of a trademark in Russia extends to the whole territory of the Russian Federation.

2.8 Who can own a Russian trade mark?

In Russia, a trademark can be owned by a legal entity or an individual entrepreneur.

2.9 Can a trade mark acquire distinctive character through use?

A trademark can acquire distinctive character through use. Russian law is quite vague as to the nature and scale of use that is necessary to prove the acquired distinctiveness. In the meantime, according to the current practice a trademark owner should demonstrate intensive and long-standing use of its mark on the Russian market before the priority date. The length of use should be two to three years (or more) before the priority date. When determining the scale of use the respective range of consumers, as well as other circumstances, may be taken into account.

2.10 How long on average does registration take?

In the case of a straightforward prosecution (if no objections are raised), on average it takes about one year or so to get a trademark registered.

2.11 What is the average cost of obtaining a Russian trade mark?

The average cost, including official fees and attorneys’ fees, may be about $2,000.

2.12 Is there more than one route to obtaining a registration in Russia?

In Russia, registration of a trademark can be obtained by way of filing a national application (within the framework of the Russian Trademark System) or international one (within the framework of the Madrid System).

2.13 Is a Power of Attorney needed?

Power of Attorney is needed for representing a trademark owner in all proceedings before the Russian PTO.

2.14 How is priority claimed?

Russian law provides for the possibility of claiming convention and exhibition priority. Convention priority can be claimed upon the filing date of the first application filed in a member state of the Paris Convention, provided the application is filed within six (6) months since the filing date of the first application. Exhibition priority can be claimed upon the date of the starting of open display of an exhibit bearing a trademark during official or officially recognised international exhibitions conducted on the territory of a member state of the Paris Convention, provided the application is filed within six (6) months since the open display starting date. The time limit to claim convention or exhibition priority is two (2) months, and it starts running from the date at which the application was filed. If the application was divided, the Russian law makes it possible for the divisional application to claim priority from the original application.

2.15 Does Russia recognise Collective or Certification marks?

Collective marks can be registered in Russia. 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 their quality or other common characteristics. The legal protection of a collective mark may be terminated in full or in part following a court ruling issued upon the request of an interested person, if the goods for which the mark is registered do not possess common features.

As regards certification marks, these are also recognised in Russia.

A certification mark is defined as a designation which serves to inform customers of the compliance of the certified subject matter with the requirements of the optional certification system or national standard. A certification mark can only be registered in conjunction with the appropriate certification system or as part of the national standard. Certification marks are not considered as intellectual property objects in Russia (as opposed to collective marks).

3 Absolute Grounds for Refusal

3.1 What are the absolute grounds for refusal of registration?

The following grounds are basically incorporated into this legal category:

• The mark is descriptive.
• The mark is misleading and/or deceptive.
• The mark lacks distinctiveness.
• The mark has become generic.
• The mark is functional (this ground is normally applied to 3D designations).
• The mark contradicts principles of humanity and morality and is in conflict with public interests.
• The mark consists of or incorporates official symbols, names, their distinctive signs including most recognisable parts thereof or their imitations without consent from a state competent body, international or intergovernmental organisation body.
• The mark is identical with or confusingly similar to the official name or depiction of most valuable objects of cultural heritage of the Peoples of Russia or is identical or confusingly similar to the objects in world wide heritage or to the depictions of cultural valuables stored in collections.
• The mark consists of, or incorporates, signs which identify spirits as originating from a certain territory and which enjoy protection in a member state of an International agreement to which Russia is a signatory unless the mark is intended to cover spirits coming from this territory.

3.2 What are the ways to overcome an absolute grounds objection?

An absolute grounds objection may be overcome by way of submitting a round of arguments, submitting evidence of acquired distinctiveness through the use made of the mark on the Russian market before the priority date or by other means depending on the specific circumstances surrounding the objection (for instance, by a consent letter obtained from a competent body).

Whenever such an objection is raised, the applicant is given a time limit of six (6) months within which to respond thereto. The time limit is not extendable. If the applicant’s response is not successful, the Russian PTO is supposed to issue a refusal decision based on absolute grounds.

3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

A refusal decision based on absolute grounds, if raised by the Russian PTO as a result of an examination, can be appealed to the higher instance division of the Russian PTO entirely or in part (e.g. seeking the grant of protection to the mark as a whole subject to a disclaimer of certain element(s) of the mark).

3.4 What is the route of appeal?

An appeal is to be filed with the higher instance division of the Russian PTO within four (4) months since the date at which the refusal decision based on absolute grounds was forwarded to the applicant (its representative). The decision of the Russian PTO made as a result of consideration of the appeal is not final and can be appealed further to the Russian IP Court within three (3) months.

4 Relative Grounds for Refusal

4.1 What are the relative grounds for refusal of registration?

The following grounds are incorporated into this legal category:

• The mark being identical to or confusingly similar to a third party’s prior mark either registered or applied for registration in relation to similar goods in Russia.
• The mark being identical to or confusingly similar to the names of works of art, science and literature that are famous in Russia, character or citation thereof without the consent of the right holder, provided the respective rights arose before the priority date of an application.
• The mark being identical to or confusingly similar to a work of art or its fragment without the consent of the right holder, provided the respective rights arose before the priority date of an application.
• The mark being identical to or confusingly similar to the name, name derivatives, portraits and signatures of persons being famous in Russia without consent of such persons or their heirs.
• The mark being identical to or confusingly similar to third parties’ industrial designs and/or compliance signs, provided the rights in such designs and signs arose before the priority date of the application.
• Incorporation by an applied designation of third parties’ individualisation means enjoying protection in Russia in respect of similar goods or designations similar to such individualisation means.
• The mark being identical to or confusingly similar to third parties’ company names, commercial designations, selection achievement names and/or appellation of origin, provided the respective rights in these similar objections owned by third parties arose before the priority date of the application.
• Illegal obtaining of registration in the name of an agent of a true owner without the consent of such owner (article 6 septies of the Paris Convention).
• Bad faith and abuse of rights.

Some of the grounds listed above cannot be raised during an examination and can only be used as a ground for opposition/invalidation action.

4.2 Are there ways to overcome a relative grounds objection?

A relative grounds objection may be overcome by way of submitting a round of arguments or submitting a consent letter from the rights holder. In respect of a consent letter from the owner of a similar third party’s prior mark, it is worth noting that the Russian PTO is not obliged to accept such consent and may reject it if the allowed co-existence of the respective marks is likely to cause confusion on the marketplace.

When such an objection is raised, the applicant is given a time limit of six (6) months within which to respond thereto. The time limit is not extendable. If the applicant’s response is not successful, the Russian PTO is supposed to issue a refusal decision based on relative grounds.

4.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

A refusal decision based on relative grounds, if raised by the Russian PTO as a result of an examination, can be appealed to the higher instance division of the Russian PTO entirely or in part (e.g. seeking a grant of protection to the mark for a part of the applied goods only).

4.4 What is the route of appeal?

• The mark is descriptive.
• The mark is misleading and/or deceptive.
• The mark lacks distinctiveness.
• The mark has become generic.
• The mark is functional (this ground is normally applied to 3D designations).
• The mark contradicts principles of humanity and morality and is in conflict with public interests.
• The mark consists of, or incorporates, official symbols, names and/or their distinctive signs, including most recognisable parts thereof or their imitations, without consent from a state competent body, international or intergovernmental organisation body.
• The mark is identical to or confusingly similar to the official name or depiction of valuable objects of the cultural heritage of the peoples of Russia or is identical or confusingly similar to objects of worldwide heritage or the depictions of cultural valuables stored in collections.
• The mark consists of or incorporates signs which identify spirits as originating from a certain territory and which enjoy protection in a member state of an international agreement to which Russia is a signatory unless the mark is intended to cover spirits coming from this territory.

Relative grounds:

• The mark being identical to or confusingly similar to third parties’ prior marks either registered or applied for registration in relation to similar goods in Russia.
• The mark being identical to or confusingly similar to the names of works of art, science and literature that are famous in Russia, character or citation thereof without consent from the rights holder, provided the respective rights arose before the priority date of an application.
• The mark being identical to or confusingly similar to a work of art or its fragment without consent from the rights holder, provided the respective rights arose before the priority date of an application.
• The mark being identical to or confusingly similar to the name, name derivatives, portraits and signatures of persons famous in Russia without the consent of such person or their heirs.
• The mark being identical to or confusingly similar to third parties’ industrial designs and/or compliance signs, provided the rights in such designs and signs arose before the priority date of the application.
• Incorporation by an applied designation of third parties’ individualisation means enjoying protection in Russia in respect of similar goods or designations similar to such individualisation means.
• The mark being identical to or confusingly similar to third parties’ company names, commercial designations, selection achievement names and/or appellation of origin, provided the respective rights in these similar objections owned by third parties arose before the priority date of the application.

5.2 Who can oppose the registration of a Russian trade mark?

Any person is entitled to file written observations against the applied designation.

5.3 What is the procedure for opposition?

Once the applied designation is published, any person is entitled to file written observations against such designation based on the grounds set out above. The arguments contained in the observations are supposed to be taken into account by the Registry when conducting an examination, provided such observations are filed before the issuance of a decision on the applied designation.

6 Registration

6.1 What happens when a trade mark is granted registration?

Under Russian law the exclusive right to a trademark arises when the trademark is granted registration. In other words, once the trademark becomes registered, its trademark owner is entitled to use, transact (e.g. license, franchise, secure) and enforce the trademark.

6.2 From which date following application do an applicant’s trade mark rights commence?

The exclusive right to a trademark remains valid for ten (10) years starting from the application date. However, the trademark rights become enforceable only after the trademark registration.

6.3 What is the term of a trade mark?

The term of trademark validity is ten (10) years.

6.4 How is a trade mark renewed?

A trademark registration can be renewed an unlimited number of times, each time for ten (10) years, subject to the payment of the official renewal fees. The first renewal date is ten (10) years after the application date. However, there is a six (6) months’ grace period, which starts running from the renewal date, within which the renewal can still be made, subject to the payment of the official fee composed of the renewal fee and a 50% fine.

7 Registrable Transactions

7.1 Can an individual register the assignment of a trade mark?

Yes, an individual, being a trademark owner (assignor) or contracted assignee, can file for registration of the assignment of a trademark. To be valid, a trademark assignment must be in writing.

To be complete, a trademark assignment must be registered with Rospatent. To register an assignment transaction it is necessary to submit one of the following documents: (i) an original trademark assignment agreement; (ii) a notarised excerpt from the trademark assignment agreement (containing the essential elements of the trademark assignment); or (iii) notification stating the occurrence of a trademark assignment (i.e. statement of assignment). The said documents must be signed by the assignor and assignee in three (3) originals, i.e. two (2) originals for the parties and one original for Rospatent. If the trademark assignment contemplated by the trademark assignment agreement is not registered, it shall be deemed incomplete and unenforceable.

7.2 Are there different types of assignment?

Trademark assignment may be made in full or in part. Partial assignment shall be feasible (registrable) in the case such transaction does not mislead respective customers in the marketplace.

Assignment of a trademark can be implemented with or without goodwill.

7.3 Can an individual register the licensing of a trade mark?

Yes, an individual, being a trademark owner (licensor) or contracted licensee, can file for registration of the licence of a trademark. To be valid, a trademark licence must be in writing. To be complete, a trademark licence must be registered with Rospatent. To register a licensing transaction it is necessary to submit one of the following documents: (i) an original trademark licence agreement; (ii) a notarised excerpt from the trademark licence agreement (containing the essential elements of trademark licence); or (iii) notification stating the occurrence of a trademark licence (i.e. statement of licence). The said documents must be signed by the licensor and licensee in three (3) originals, i.e. two (2) originals for the parties and one original for Rospatent. If the trademark licence contemplated by the trademark licence agreement is not registered, it shall be deemed incomplete and unenforceable.

7.4 Are there different types of licence?

Trademark licences may be sole, exclusive and non-exclusive.

7.5 Can a trade mark licensee sue for infringement?

Sole as well as exclusive licensees can sue third parties for infringement in the case their rights granted by the licence agreement are affected. Non-exclusive licensees are not entitled to sue for trademark infringement, although can be authorised to act on behalf of trademark owners by virtue of powers of attorney to enforce the owners’ trademark rights.

7.6 Are quality control clauses necessary in a licence?

Quality control clauses under trademark licences are legally recognised in Russia. In practice, such clauses are applied quite often in licensing transactions. However, the absence of a quality control clause in a trademark licence agreement shall not lead to the risk that the subject trademark may be revoked.

7.7 Can an individual register a security interest under a trade mark?

Yes, an individual, being a trademark owner (grantor) or contracted secured party, can file for registration of the security interest against a trademark. To be valid, a trademark security interest must be in writing. To be complete, a trademark security interest must be registered with Rospatent. To register a security interest it is necessary to submit one of the following documents: (i) an original trademark security agreement; (ii) a notarised excerpt from the trademark security agreement (containing the essential elements of a trademark security interest); or (iii) notification stating the occurrence of a trademark security interest (i.e. statement of security interest). The said documents must be signed by the grantor and secured party in three (3) originals, i.e. two (2) originals for the parties and one original for Rospatent. If the trademark security interest contemplated by the trademark security agreement is not registered, it shall be deemed incomplete and unenforceable.

7.8 Are there different types of security interest?

Trademark security interest shall be per se a fixed charge. The possession and title to a collateral trademark will not pass on to the secured party until there is a grantor’s (debtor’s) default. The possession and title to a collateral trademark will be transferred to the secured party (or third party) only in the course of foreclosure.

8 Revocation

8.1 What are the grounds for revocation of a trade mark?

In Russia, a trademark registration can be revoked on the ground of liquidation of its owner. In respect of collective trademarks, trademark protection can be terminated early if it is used for goods which do not possess common quality characteristics or other common features.

8.2 What is the procedure for revocation of a trade mark?

A revocation action based on the liquidation of a trademark owner can be filed with the Russian PTO by any person during the validity of the registered mark. The revocation action must contain evidence of the liquidation of the trademark owner. The Russian PTO is supposed to notify the trademark owner of such revocation action and invite the trademark owner to submit its response to the claims set out in the revocation action within a reasonable time limit. After hearing the parties involved in a dispute, the Russian PTO makes its decision, which may be in the form of the revocation of the trademark registration or retaining the validity of the trademark.

The revocation action based on improper use of a collective mark is to be filed with a competent court.

8.3 Who can commence revocation proceedings?

A revocation action based on the liquidation of a trademark owner can be commenced by any person. A revocation action based on the improper use of a collective mark can be commenced by an interested person only.

8.4 What grounds of defence can be raised to a revocation action?

A revocation action may be defeated by way of counter arguing and submitting relevant evidence and proofs.

8.5 What is the route of appeal from a decision of revocation?

A decision made as a result of the consideration of the revocation action based on the liquidation of a trademark owner can be appealed to the Russian IP Court. The decision made as a result of the consideration of the revocation action based on the improper use of a collective mark can be appealed to the court of higher instance (i.e. court of appeals).

9 Invalidity

9.1 What are the grounds for invalidity of a trade mark?

Under Russian law, any person is entitled to file an invalidation action against a registered trademark or a trademark which was granted protection in accordance with the Madrid System. An invalidation action can be filed both on absolute and relative grounds. More specifically, the following grounds can be used.

Absolute grounds:

• The mark is descriptive.
• The mark is misleading and/or deceptive.
• The mark lacks distinctiveness.
• The mark has become generic.
• The mark is functional (this ground is normally applied to 3D designations).
• The mark contradicts principles of humanity and morality and is in conflict with public interests.
• The mark consists of or incorporates official symbols, names and/or their distinctive signs, including most recognisable parts thereof or their imitations, without the consent of a state competent body, international or intergovernmental organisation body.
• The mark is identical to or confusingly similar to the official name or depiction of valuable objects of the cultural heritage of the peoples of Russia or is identical or confusingly similar to objects of world wide heritage or the depictions of cultural valuables stored in collections.
• The mark consists of or incorporates signs which identify spirits as originating from a certain territory and which enjoy protection in a member state of an international agreement to which Russia is a signatory unless the mark is intended to cover spirits coming from this territory.

Relative grounds:

• The mark being identical to or confusingly similar to third parties’ prior marks either registered or applied for registration in relation to similar goods in Russia.
• The mark being identical to or confusingly similar to third parties’ prior marks which are recognised as well-known in Russia in relation to similar goods in Russia.
• The mark being identical to or confusingly similar to the names of works of art, science and literature that are famous in Russia, character or citation thereof without consent from the rights holder, provided the respective rights arose before the priority date of an application.
• The mark being identical to or confusingly similar to a work of art or its fragment without consent from the rights holder, provided the respective rights arose before the priority date of an application.
• The mark being identical to or confusingly similar to the names, name derivatives, portraits and signatures of persons famous in Russia without the consent of such persons or their heirs.
• The mark being identical to or confusingly similar to third parties’ industrial designs and/or compliance signs, provided the rights in such designs and signs arose before the priority date of the application.
• Incorporation by an applied designation of third parties’ individualisation means enjoying protection in Russia in respect of similar goods or designations similar to such individualisation means.
• The mark being identical to or confusingly similar to third parties’ company names, commercial designations, selection achievement names and/or appellation of origin, provided the respective rights in these similar objections owned by third parties arose before the priority date of the application.
• The mark being identical to a third party’s mark having the same priority and covering the same goods.
• Illegal obtaining of registration in the name of an agent of a true owner without the consent of such owner (article 6 septies of the Paris Convention).
• Bad faith and abuse of rights.

9.2 What is the procedure for invalidation of a trade mark?

Invalidation actions are to be filed with the Russian PTO. Invalidation actions based on a mark being identical to or confusingly similar to a third party’s prior mark either registered or applied for registration, including well-known marks, in relation to similar goods, as well as based on a mark being/incorporating:

• Identical to or confusingly similar to the name of works of art, science and literature that are famous in Russia, character or citation thereof without consent from the rights holder, provided the respective rights arose before the priority date of an application.
• Identical to or confusingly similar to a work of art or its fragment without consent from the rights holder, provided the respective rights arose before the priority date of an application.
• Identical to or confusingly similar to the names, name derivatives, portraits and signatures of persons famous in Russia without the consent of such persons or their heirs.
• Identical to or confusingly similar to third parties’ industrial designs and/or compliance signs, provided the rights in such designs and signs arose before the priority date of the application.
• Third parties’ individualisation means enjoying protection in Russia in respect of similar goods or designations similar to such individualisation means, can be filed within five (5) years from the publication date.

Invalidation actions based on other grounds can be filed at any time during the validity of the mark. Once an invalidation action is filed, it has to be accepted for consideration by the Russian PTO. If accepted, the Russian PTO schedules the date of hearings and notifies both the trademark owner and the claimant of the acceptance of the invalidation action for consideration and informs both parties of the date of the hearing. At the hearing the Board responsible for the consideration of the invalidation action hears the arguments of the parties involved in the dispute and makes its decision. The decision made by the Board may be in the form of the invalidation of the mark (in part or in full) or in the form of dismissal of the invalidation claims and retaining the trademark registration in full.

9.3 Who can commence invalidation proceedings?

Invalidation proceedings can be initiated by interested persons only.

A legitimate interest in pursuing an invalidation action must be proved.

9.4 What grounds of defence can be raised to an invalidation action?

An invalidation action may be defeated by way of counter arguing and submitting relevant evidence and proofs. There is no need to demonstrate the use of the prior mark in the invalidation proceedings.

Bad faith claims can be rebutted on the basis of evidence demonstrating bona fide intentions of the applicant and/or good faith of the user. In addition, bad faith claims may be warded off under the circumstances showing the absence of competition.

9.5 What is the route of appeal from a decision of invalidity?

A decision made as a result of the consideration of an invalidation action can be appealed to the Russian IP Court.

10 Trade Mark Enforcement

10.1 How and before what tribunals can a trade mark be enforced against an infringer?

Generally, trademark rights can be enforced against an infringer with the competent commercial court located in the region where the defendant (infringer) has its registered office. Cancellation actions based on the non-use of a trademark have to be brought directly with the Russian IP Court.

In any event, a statement of claims has to be prepared and dispatched to all of the litigants in advance, and the court fee has to be paid by the claimant and attached to the statement of claims when it is filed with the court.

10.2 What are the pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?

There are no obligatory pre-trial procedural stages in regular trademark infringement matters, meaning that there is no requirement to serve a cease and desist at the address of the infringer before the commencement of the action. In the context of Internet/domain name matters and disputes involving the engagement of Internet Service Providers, the delivery of a cease and desist letter or take-down notice will be a must in order to establish the intention/guilt of the adverse party before the trial. As to the evidence of trademark infringement, all documents and materials have to be collected by the time the action commences, as it is usually not possible to submit any further evidence in the course of appeal proceedings. In other words, the collection of the evidence of a trademark infringement shall be the main pre-trial procedural step that is followed up by the preparation of a statement of claims and motion for preliminary injunction.

Once the statement of claims is filed with the competent court, the judge will appoint a preliminary hearing, to be conducted in a month or so (upon the acceptance of a lawsuit). A preliminary hearing may be postponed or re-scheduled, or the judge may simply move forward to the trial (i.e. hearings on the merits). Generally, it takes about two to three months for civil proceedings to reach the trial from commencement, unless foreign persons are involved, in which case the trial may be delayed for six (6) months.

10.3 Are (i) preliminary and (ii) final injunctions available and if so on what basis in each case?

Both preliminary and final injunctions are available in Russia.

Preliminary injunctive relief will be feasible in the event the claimant is able to demonstrate that non-grant of same: (i) will lead to substantial damages; and (ii) will make the court order nonenforceable.

Final injunctive relief will be granted in the case a claimant is able to prove trademark infringement in the course of civil proceedings.

10.4 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?

Parties are entitled to obtain evidence referred to or relied upon during civil proceedings. If a party cannot obtain the necessary evidence on its own, it may file a motion for the disclosure of relevant documents and materials, and the court may order the presentation of same by the adverse party if such motion has been satisfied by the judge. In practice, a claimant can request the voluntary disclosure of relevant documents or materials before the trial, and if such are not submitted by the respondent, the party will use the court agency to compel the adversary to provide the necessary disclosures.

10.5 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?

Evidence can be oral, material and/or in writing. Live testimony, cross-examination, opinions of experts and consultations of specialists are allowed. Audio and video recordings, as well as other submissions, can also be accepted by the court.

10.6 Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?

Generally, trademark infringement proceedings cannot be stayed pending the resolution of validity in Russian PTO. In practice, it is quite difficult to obtain such a stay, as pending the resolution of trademark validity is simply not regarded as a legitimate ground for suspension of civil proceedings (taken before commercial courts).

10.7 After what period is a claim for trade mark infringement time-barred?

A trademark infringement claim may be filed within three (3) years from the moment the trademark owner becomes aware of the infringement. In other words, the limitation period shall be three (3) years for the trademark infringement matter to commence. In practice, the trademark owner’s awareness may be proved by the date of a cease and desist letter which has been dispatched to the infringer before the action.

10.8 Are there criminal liabilities for trade mark infringement?

Repeated trademark infringement and/or substantial damages caused to the trademark owner as a result of trademark infringement may lead to the following criminal liabilities: (i) a criminal fine; (ii) forced labour or correctional works; or (iii) imprisonment.

The liabilities will vary depending on whether the trademark infringement has been committed by an individual person or in collusion.

10.9 If so, who can pursue a criminal prosecution?

Criminal prosecution can be pursued by a trademark owner. In the course of criminal prosecution, a trademark owner can also bring a civil action, which will be separately attended.

10.10 What, if any, are the provisions for unauthorised threats of trade mark infringement?

Unauthorised threats of trademark infringement, as well as preparations for such infringement, are actionable. In other words, the court may grant an injunction to the person involved in preparations for trademark infringement, provided the activities of such person are non-authorised and the relevant evidence of the threat of infringement is disclosed. In practice, threats of infringement are tested actively in domain name disputes and disputes involving the collision of similar brands covering dissimilar products.

11 Defences to Infringement

11.1 What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?

The following grounds of defence can be raised by way of noninfringement to a claim of trademark infringement: (i) absence of the likelihood of confusion; (ii) absence of proof of use of the asserted trademark; (iii) lack of trademark protection over the similar products in use; (iv) existence of a licence or consent to the use of the asserted trademark; (v) the claimant is not the valid trademark owner or registered exclusive licensee; (vi) absence of priority over the conflicting designation (ex. domain name); and (vii) abuse of rights.

11.2 What grounds of defence can be raised in addition to non-infringement?

In addition to non-infringement, the following grounds of defence can also be raised to a claim of trademark infringement: (i) expiry of limitation period; (ii) improper defendant; and (iii) exhaustion of trademark rights.

12 Relief

12.1 What remedies are available for trade mark infringement?

The following remedies are generally available for trademark infringement: (i) preliminary and permanent injunctions; (ii) damages or monetary compensation (equivalent to “statutory damages”); (iii) seizure and forfeiture of counterfeit products; and (iv) publication of the court order.

12.2 Are costs recoverable from the losing party and if so what proportion of the actual expense can be recovered?

Court costs and attorneys’ fees are recoverable from the losing party. If the lawsuit has been satisfied in part, court costs and attorneys’ fees will be allocated in proportion to the amount of claims satisfied by the court.

13 Appeal

13.1 What is the right of appeal from a first instance judgment and is it only on a point of law?

The decision of the court of first instance may be appealed with the competent court of appeals. The appeal has to be filed within a month after the adoption of the decision of the court of first instance.

If the one-month period has been missed, the appeal may be filed within six (6) months after the date of the decision of the court of first instance, provided there are certain reasonable grounds for a lapse of the initial appeal term. The court of appeals shall focus on the assessment of the circumstances of the matter and focus on material as well as procedural law. Further appeals with the court of cassation and Supreme Court shall be more specifically concentrated on the violation (or strict violation) of the law. In total, there are basically four (4) stages of appeal proceedings.

13.2 In what circumstances can new evidence be added at the appeal stage?

New evidence can be added at the appeal stage (in the court of appeals) only if the litigant has not had a chance to submit the same in the court of first instance on grounds not depending on him/her, including in the event the court of first instance has rejected the motion for disclosure of evidence filed by this litigant, and in the case the court of appeals finds these grounds to be reasonable.

14 Border Control Measures

14.1 What is the mechanism for seizing or preventing the importation of infringing goods or services and if so how quickly are such measures resolved?

Russian Customs Authorities are required to suspend the release of any products found in the course of customs operations that they (Customs) suspect may infringe intellectual property rights (including trademark rights) registered in the Russian Customs Register of Intellectual Property (Customs IP Register). In the event suspect products are suspended, the Customs Authorities must immediately give notice of interception to the trademark owner by way of sending the latter an official notice of suspension along with the presentation of the facts of a particular importation and pictures of the products suspended. Upon receipt of the said notice, the trademark owner may inspect the products at issue and decide whether to initiate (in the case of trademark infringement) or not (in case the shipment is authorised) a legal action against the infringer (importer) within the specified period of time. The law imposes strict statutory time limits on the period for which Customs Authorities are entitled to suspend the release of suspect products. This statutory period is initially restricted to 10 working days, although it may be further extended by another 10 working days if a motivated request is filed by the trademark owner.

Within this specific term, the trademark owner may also request specimens of the products (samples of products) in order to inspect the same more thoroughly. In the case of trademark infringement, the trademark owner can enforce its rights by way of applying for various judicial remedies available under the law in the course of administrative, civil and criminal prosecution. In practice, administrative proceedings will be the most efficient enforcement option for repression of imports/exports of fakes (counterfeits), while civil proceedings will be the only efficient enforcement measure to repress parallel imports.

15 Other Related Rights

15.1 To what extent are unregistered trade mark rights enforceable in Russia?

Unregistered trademark rights or similar common law rights are not recognised by Russian law. In other words, only registered trademark rights are enforceable in Russia. Pending marks or marks-in-use do not afford any legal rights to their users.

15.2 To what extent does a company name offer protection from use by a third party?

Company name protection is very similar to trademark protection, meaning that unauthorised use of an analogous company name in connection with analogous business activity is not allowed and may be prosecuted by the senior company name owner.

15.3 Are there any other rights that confer IP protection, for instance book title and film title rights?

Book and film titles may be protected by copyright. Designs may be trademarked, patented and copyrighted. Images and personal portrayals shall stay beyond the scope of IP protection, although they are also recognised by civil law, meaning that the use of the same must be duly authorised by the respective individual.

16 Domain Names

16.1 Who can own a domain name?

A domain name can be owned by a natural (physical) or legal person.

Domain ownership is conferred by domain name registration with the competent Domain Registrar.

16.2 How is a domain name registered?

A domain name is registered through the agency of the competent Domain Registrar. Hence, the first step in the registration process will be the conclusion of the service agreement with the Domain Registrar and the creation of an appropriate account. Once the service agreement has been concluded, the service fee has been paid to the Domain Registrar and the account has been created, the target domain name must be cleared of any existing third party rights (domain names, trademarks, company names, etc.). Once the domain name is cleared, the application has to be prepared and filed with the Domain Registrar. The domain name will be registered within three (3) working days, provided all requirements are duly met in accordance with the appropriate rules related to domain name registration. When registered, the relevant information on the domain name will become open to the public and appear in the Domain Registrar.

16.3 What protection does a domain name afford per se?

A domain name is not regarded as an intellectual property object.

Domain name registration shall per se afford protection against third party applications for the registration of identical domain names which are filed in the same domain zone. In some cases, prior (senior) domain name registrations can be a valid defence against younger (junior) trademark registrations in the context of domain name disputes based on trademark infringement.

17 Current Developments

17.1 What have been the significant developments in relation to trade marks in the last year?

On October 1 2014, the amendments to the Russian Civil Code (Part 4) entered into force. In the context of trademark law, the subject amendments mainly concern procedural time limits (for some kinds of official actions the time limit within which to respond to Office actions has been extended by one month), registrability requirements (the new grounds for refusal, such as confusing similarity to third parties’ means of individualisation, have been added), acceptance of consent letters (the consent-related requirement has been toughened and now Russian law clearly states that consent letters shall not be accepted if the co-existence of the respective marks may lead to confusion of customers in the marketplace), oppositions during the examination of trademarks (Russian law now provides for an opportunity to oppose pending applications at the examination stage), registration of trademark-related agreements (the registration process related to trademark transactions has been simplified) and other aspects. The adopted amendments are the most significant ones since the fourth part of the Russian Civil Code, which is fully dedicated to intellectual property protection, came into force in 2008.

Importantly, it is generally believed that the new amendments shall not be applied to applications that were filed before October 1 2014, although there is no official commentary or guidance on this point for the time being.

17.2 Please list three important judgments in the trade marks and brands sphere that have issued within the last 18 months.

There have been quite a few of landmark court decisions in the trademark/brand area over the last couple of years in Russia. For example, in the KAIT-SPORT case (case ref: А40-53262/2012-19-370), the claimant was able to terminate legal protection of a trademark (“KAIT-SPORT”) on the basis of its non-use by proving the legitimate interest in the action relying on its similar company name (Production Firm “KAIT-SPORT”). In the Alexandrovi Pogreba case (case ref: А40-27210/12-19-247), the claimant (the owner of “TESORO/ТЕСОРО” trademark) was able to establish trademark infringement by proving that the defendant was using a confusingly similar mark (“REAL TESORO”) in connection with similar products and proving unfair competition, which is prohibited in Russia. In the Xerox case (case ref: A40-119044/2013), the claimant (the owner of “Xerox” trademark) was able to obtain permanent injunction (revocation of the domain name “hpxerox.ru”) and monetary compensation for trademark infringement. Each of the cited cases is important because of the circumstances/facts surrounding the matters, evidence and arguments presented by the litigants and the final court decisions made.

17.3 Are there any significant developments expected in the next year?

Significant developments were introduced in Russian law last year (please see question 17.1 above), hence no significant changes are expected soon – although some minor amendments may routinely be made in the future.

17.4 Are there any general practice or enforcement trends that have become apparent in Russia over the last year or so?

The advent of the Russian IP Court one and a half years ago set the trend for more competent consideration of IP cases for the strict enforcement of IP rights, including trademark rights. The Russian IP Court has technical experts on the payroll, which means that the court will be able to consult experts immediately during hearings.

If the court does not have a respective technical expert, appointment of experts may be made as before, i.e. the litigants may propose an expert and the court will decide on that. Also, the court may appoint an expert of his own accord. In addition, the court may engage and get consultations from specialists in a particular area of technology or sphere of business. In fact, day-to-day consideration of IP cases, where trademark disputes are at the top of the list, allows the Russian IP Court to shape a better judicial practice in Russia.

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