Lexology Navigator: Trademarks in Russia20 December 2018
What is the primary legislation governing trademarks in your jurisdiction?
The Russian Civil Code, and in particular Part IV, is the primary legislation for trademarks, among various types of intellectual property. The code governs the prosecution, exploitation, licensing and enforcement of trademark rights. Other local administrative regulations, federal laws and procedural codes support the trademark protection and enforcement regime.
Which international trademark agreements has your jurisdiction signed?
Russia has signed the following international trademark agreements, which are in force:
- the Paris Convention for the Protection of Industrial Property (Paris Convention) (1883);
- the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement) (1891);
- the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) (1989);
- the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957);
- the Nairobi Treaty on the Protection of the Olympic Symbol (1986);
- the World Trade Organisation Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPs) (1994);
- the Trademark Law Treaty (1998); and
- the Singapore Treaty on the Law of Trademarks (2009).
Which government bodies regulate trademark law?
Trademark prosecution goes through the Federal Service for Intellectual Property (RUPTO). RUPTO is under the jurisdiction of the Russian Ministry of Economic Development.
The following bodies are in charge of trademark enforcement:
- anti-monopoly bodies, including the Russian Federal Anti-monopoly Service;
- the customs and police authorities;
- the prosecutors’ offices; and
- the courts, including the courts of general jurisdiction and the commercial courts.
Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Russia is a first-to-file country. Legal entities or individual entrepreneurs who first apply for registration of a trademark enjoy the priority right to obtain trademark registration. Therefore, it is essential to file trademark applications in Russia without delay.
It is not necessary to use the mark before applying for registration, and proof of use is not required when the trademark application is filed.
What legal protections are available to unregistered trademarks?
Trademark rights stem from registration in Russia. Unregistered marks or marks-in-use are not protected, unless they have obtained an official 'well-known' status under a special procedure through RUPTO.
In certain instances, unregistered marks (eg, trade dresses, logos, three-dimensional marks) can enjoy unfair competition and/or copyright protection. Trade names (known as ‘commercial designations’) can also be protected and enforced in Russia.
How are rights in unregistered marks established?
No exclusive rights are given to unregistered mark users. Rights available against unfair competition or copyright infringement are usually established through prior, long-standing use, consumers’ association and reputation. Trade names must be distinctive and known amongst customers within a certain territory of use.
Are any special rights and protections afforded to owners of well-known and famous marks?
There is a special procedure for the recognition of trademarks as well known. Unlike in many other countries, in Russia a trademark is not granted well-known status as a result of court proceedings and litigation. In order for the mark to be considered a well-known trademark, a request must be filed with RUPTO.
A well-known trademark will generally be granted the same legal protection as an ordinary trademark. Nevertheless, a well-known trademark also provides its owner with the following important advantages:
- the legal protection of the mark is not time-limited;
- protection extends to goods or services other than those for which the mark is recognised as well known if the third party use is likely to be associated by consumers with the owner of the well-known trademark, and may affect the owner’s legitimate interests;
- protection of a well-known mark may start from the period that predates the filing of the request for recognition of the mark as well known; and
- the commercial value of a well-known trademark is higher than that of an ordinary trademark.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Foreign national trademark registrations are not recognised in Russia. However, as a signatory to the Madrid Agreement and the Madrid Protocol, Russia grants protection to trademarks registered under the Madrid system.
What legal rights and protections are accorded to registered trademarks?
As Russia is a first-to-file jurisdiction, trademark registration is of the utmost importance for its owner. Generally, trademark registration provides the registrant (trademark owner) with the legal capacity of trademark use, disposal (eg, licensing) and enforcement. Trademark registration can afford other benefits, such as customs recordal. Trademark registration may prevent a similar/identical mark from being registered in the name of a third party.
Who may register trademarks?
Legal entities or individual entrepreneurs may register trademarks.
What marks are registrable (including any non-traditional marks)?
Any designations, including – but not limited to – verbal, pictorial, combined, three-dimensional ones, and other marks or their combinations, may be registered as trademarks. A trademark may be registered in any colour or colour combination, or just in black and white.
In addition, colour marks (either as individual colours or colour combinations), sound marks, texture marks, olfactory marks, position marks, hologram marks, motion/animation marks, taste marks and other non-traditional marks may be registered in Russia, but their registrability depends on their distinctiveness, which may be:
- inherent, deriving from the distinctive features of the mark; or
- acquired, through intensive use in Russia.
Can a mark acquire distinctiveness through use?
Registration of a mark that is lacking distinctiveness is not permitted. However, it is possible to obtain trademark registration based on the acquired distinctiveness of the mark through its intensive (pre-filing) use in Russia.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
Examination of trademark applications consists of a formal examination and, thereafter, a substantive examination based on absolute and relative grounds allowing to determine whether the mark filed is inherently registrable, and whether it is confusingly similar to third parties’ pending applications and/or registrations.
Are collective and certification marks registrable? If so, under what conditions?
Collective marks The law provides for registration of collective marks. A ‘collective mark’ is defined as a mark of a union, business association or other voluntary association of enterprises capable of distinguishing goods manufactured or commercialised by the union/association having common characteristics as to quality or otherwise.
When filing an application for registration of a collective mark, it is imperative to submit by-laws of the collective mark containing the rules for the use of the collective mark. These rules must indicate the name of the association entitled to register the mark in its name, the list of enterprises entitled to use the mark, the purpose of registration of the mark, the list of goods and description of their common characteristics (relating to quality or otherwise), the conditions of use of the mark and the sanctions for violation of such rules.
The names of the enterprises entitled to use the mark and an extract from the rules relating to the common characteristics of the goods for which the mark is registered will be mentioned in the publication of registration of the collective mark in the RUPTO’s Official Bulletin.
The registration holder must inform the RUPTO of any amendment to the rules of use of the mark. Any interested person may apply to the Russian IP Court for the total or partial cancellation of the registration of a collective mark if the mark is used in relation to goods not having common qualitative or other common characteristics.
Collective marks cannot be assigned or licensed to third parties.
Collective marks and applications for the registration of a collective mark may be converted respectively into trademarks or trademark applications.
Certification marks Certification marks may also be registered. However, the registration procedure for this type of marks is quite different from that used for trademarks.
In particular, a legal entity that created its own voluntary system of certification is entitled to get registered both the system and the certification mark identifying this system. The registration can be implemented by way of filing an application with the Russian Federal Service for State Standardisation.
Under the existing rules, a certification mark must be distinctive and visually perceivable. Trademarks may not be used as certification marks. However, a certification mark can be registered as a trademark if it meets the general registrability requirements and is not in conflict with third parties’ rights.
Registered certification marks are entered into a special state register, which exists separately from the RUPTO Register of Trademarks.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Foreign applicants must be represented by a Russian trademark attorney registered with the RUPTO. Therefore, in order for an application to be filed in the name of an entity residing outside Russia, such entity must appoint a Russian trademark agent to represent the company in all trademark prosecution proceedings.
The power of attorney can be submitted independently from the trademark application, but filing it later may delay the examination. That said, there are neither strict deadlines for filing the power of attorney with the RUPTO, nor a late filing fee.
A power of attorney should be issued by the applicant and signed by the duly authorised person with an indication of that person’s name and position (title). The date and place of signature should be indicated as well.
Neither notarisation nor legalisation of the power of attorneys is required.
What information and documentation must be submitted in a trademark registration application?
The following information and documentation shall be included in the trademark application:
- the applicant’s name and address;
- a list of goods and/or services (in accordance with the Nice Classification) for which a trademark is to be registered. A class heading does not automatically protect all the goods/services included in the corresponding class;
- one electronic print-out of the trademark of good quality;
- the power of attorney (although as noted above, the power of attorney can be submitted after the trademark application); and
- a certified copy of the first (home) application (in case of a priority claim under the Paris Convention).
What rules govern the representation of the mark in the application?
The representation of the mark in the application is governed by Decree 482/2015 of the Ministry of Economic Development.
Are multi-class applications allowed?
Multi-class trademark applications are allowed.
Is electronic filing available?
Electronic filing is available. In case of non-electronic filing, the official fees increase by 30%.
What are the application fees?
Formal examination (in one class) is RUB2,450 and RUB700 for each additional class over five.
Substantive examination (in one class) is RUB8,050 and RUB1,750 for each additional class over one.
How are priority rights claimed?
A priority claim made under the Paris Convention must be accompanied by a certified copy of the first (home) application. The filing particulars should correspond to those stated in the home application. The home application can be submitted after filing an application under the Paris Convention with the RUPTO, but no later than three months after filing with the RUPTO. This term cannot be extended. Split-priority is not possible in Russia.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Word, graphic and combined trademark searches are available through the RUPTO. The searches are not required before filing, but are strongly recommended in order to determine the availability and registrability of designations.
The official fee for a standard one-week word search is RUB12,390 for one class and RUB3,186 for each additional class.
What factors does the authority consider in its examination of the application?
The application process involves a formal examination followed by a substantive examination.
The formal examination is conducted within a month of filing. The examiner checks both the presence in the application of the requested documents and their compliance with the established requirements. If all formal requirements are met, then the substantive examination will start. Otherwise, the application will be rejected.
Does the authority check for relative grounds for refusal (eg, through searches)?
A trademark application may be rejected either based on absolute or relative grounds, or both on absolute and relative grounds.
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, as elements of the trademark, protected distinguishing features of other parties (and confusingly similar signs), as well as copyrighted works owned by third parties, names, pseudonyms (or derivatives thereof), pictures, facsimiles of famous persons and industrial designs owned by third parties.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
Following the substantive examination, the applicant is notified of any shortcomings, along with an invitation to submit arguments and proofs to remedy the issues identified. The examiner will take the applicant’s arguments into account when a decision is taken if these arguments are submitted within six months of the issuance of the said notification.
Can rejected applications be appealed? If so, what procedures apply?
An applicant may appeal any decision by the RUPTO with the Chamber of Patent Disputes of the RUPTO within four months of the decision issuance. The chamber’s decision may be further appealed to the Russian IP Court within three months.
When does a trademark registration formally come into effect?
A trademark registration becomes effective within one month of payment of the registration fee.
What is the term of protection and how can a registration be renewed?
Trademark registrations are valid for 10 years from the date of filing of the application. Registrations can be renewed an unlimited number of times and each time for a 10-year period.
What registration fees apply?
The official fee for registration is RUB11,200 and RUB700 for each additional class over five; the official fee for issuance of the trademark certificate is RUB1,400.
What is the usual timeframe from filing to registration?
The timeframe from filing to registration is typically eight to 10 months.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
There is no opposition system in Russia with respect to pending applications. However, the law provides for the following procedure:
- The RUPTO should publish information on all trademark applications;
- Third parties have the right to review all trademark documents on file and not only those included in the original trademark applications’ filings; and
- Third parties have the right to submit to the RUPTO their observations against pending trademark applications before any official action is taken.
As examiners may take into account these observations during their examinations of any applications, these letters may be effective ways to ensure that prior rights are taken into consideration.
What is the usual timeframe for opposition proceedings?
An invalidation action against a trademark based on prior rights can be brought. Specifically, within five years of publication of the information on trademark registration in the RUPTO’s Official Bulletin, the owner of prior trademark rights has an opportunity to file an invalidation action against the trademark registration with the Chamber of Patent Disputes of the RUPTO. In case of such an invalidation action, the trademark owner is notified accordingly and both parties are invited to attend hearings to consider the matter. Following the hearings, the Chamber of Patent Disputes of the RUPTO makes a decision – either:
- rejecting the invalidation action and leaving the trademark in force; or
- invalidating the mark in full or partially.
This procedure can take three to four months.
Are opposition decisions subject to appeal? If so, what procedures apply?
An invalidation decision from the Chamber of Patent Disputes of the RUPTO may be appealed within three months to the Russian IP Court.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
Any interested party may request the cancellation of a mark for non-use. A non-use action can be brought to the Russian IP Court, provided that the mark has not been used for three consecutive years preceding the established pre-trial procedure as outlined below.
Prior to filing a non-use claim, a party that is having a legitimate interest must send a letter to the trademark owner asking the latter either to surrender its trademark rights through the RUPTO or to assign the mark at issue to the claimant. The trademark owner has two statutory months to perform one of the options. If it fails to do so, the claimant has 30 days (following the expiration of the two-month period) to file the trademark non-use lawsuit with the Russian IP Court.
During the trial, the claimant must demonstrate a legitimate interest over the cancellation, while the trademark owner (respondent) must show use of the litigious mark by disclosing relevant documentary evidence. If the claimant succeeds, the trademark registration will be cancelled from the effective date of the decision made by the Russian IP Court.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
A trademark registration may be invalidated by a decision of the Chamber of Patent Disputes of the RUPTO based on either absolute grounds (eg, misleading, lack of distinctiveness) or relative grounds (eg, prior rights).
Who may file a request for revocation and what is the statute of limitations for filing a request?
An invalidation request may be filed by any interested party with the Chamber of Patent Disputes of the RUPTO. A request based on absolute grounds may be filed during the whole period of validity of the mark, and a request based on prior rights (ie, relative grounds) may be filed during five years following the publication date.
What are the evidentiary and procedural requirements for revocation proceedings?
The evidentiary requirements depend on the grounds for invalidation.
What is the appeal procedure for cancellations or revocations?
A decision of the Chamber of Patent Disputes of the RUPTO may be appealed to the Russian IP Court. The statutory term for appeal is three months.
In order to appeal, it is necessary to file a well-grounded civil lawsuit by submitting relevant arguments contesting the decision of the Chamber of Patent Disputes of the RUPTO. The Russian IP Court usually rejects new pieces of evidence that have not been submitted to the Chamber of Patent Disputes of the RUPTO, and limits its consideration to the documents/materials in the case file, although in certain instances additional evidence may be submitted to the Russian IP Court appeal stage.
Unless further appealed, the duration of the trial with the Russian IP Court is typically three to five months.
What is the procedure for surrendering a trademark registration?
A voluntary trademark cancellation is possible; the mark owner must file the appropriate request directly with the RUPTO.
Which courts are empowered to hear trademark disputes? Trademark infringement disputes are generally heard by commercial courts of first instance located in the constituent parts of the Russian Federation. Their decisions may be appealed to the competent appellate courts. Further appeals (cassations) go to the Russian IP Court and the Economic Board of the Russian Supreme Court. A final, supervision appeal, if accepted, may be considered by the Russian Supreme Court, which is entitled to review and ascertain whether there is substantial breach in law enforcement.
Where a defendant is neither a business entity nor an individual entrepreneur, a court of general jurisdiction shall be chosen as the forum.
Trademark non-use disputes fall under the exclusive jurisdiction of the Russian IP Court, which hears such disputes on the merits in the first instance, while the Presidium of the Russian IP Court hears cassation appeals as the second instance court. Supervision appeals on such category of disputes may also be filed to the Economic Board of the Russian Supreme Court.
Trademark-related disputes may be a matter of unfair competition, which is prohibited in Russia. For example, the unfair acquisition and use of trademark rights is not permitted, and such issue may be considered by the Russian Federal Anti-monopoly Service, its territorial divisions, and/or competent court (eg, the Russian IP Court).
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?/b>
The Russian trademark enforcement system is quite effective and well developed. Infringement of trademark rights may primarily be prosecuted through civil, administrative and criminal proceedings. A special quasi-judicial procedure based on unfair competition is also available. Lastly, cease-and-desist or demand letters have become a popular and obligatory pre-judicial remedy for companies wishing to sue infringers in court and claim damages or monetary compensation.
Civil proceedings In the framework of civil proceedings, a trademark owner (or its registered/exclusive licensee) is normally entitled to seek the following legal remedies:
- injunctive relief (preliminary and permanent injunctions);
- monetary relief (damages or monetary compensation);
- seizure and destruction of counterfeit goods and related equipment/materials; and
- publication of the court order.
Civil proceedings begin with a statement of claims (lawsuit), which is to be filed with the competent court. Usually, the residence/location of the defendant will establish the jurisdiction.
Russia does not support a discovery system; therefore, all evidence must be collected and secured in advance of the lawsuit. If it is not possible to obtain certain evidence from the infringer before the action, or the latter refused to disclose the evidence, the plaintiff may discover the evidence through the agency of the court during litigation.
Each party to a civil action is obliged to prove the asserted facts:
- the plaintiff needs to prove that it is the registered trademark owner or registered exclusive licensee, and the defendant unlawfully uses the litigious trademark; and
- the defendant needs to prove that there are legitimate grounds for trademark use that exempt it from liability.
The duration of civil proceedings will vary depending on the specificity of the case at issue. Typically, the decision of the first-instance court may be obtained within six to nine months, unless the infringer appeals the decision.
Civil actions are widely used as the most efficient and viable enforcement option to tackle parallel imports and grey market goods, including trademarked products offered on the Internet, as well as contractual post-termination trademark issues.
Administrative proceedings In accordance with the applicable (administrative) law, the unlawful use of a trademark shall entail an administrative fine, as well as confiscation of counterfeit goods (and related equipment/materials) for the purpose of destruction.
Administrative proceedings usually begin with a complaint, which the trademark owner must file with the police or customs authorities, for example, so that they can take action against the infringer. Accordingly, the Police or Customs will be the plaintiff, while the infringer will be the defendant in such type of action. In the course of administrative proceedings, the trademark owner may be engaged as an injured (third) party.
An administrative action may take three to five months, unless the infringer appeals the decision.
Practically, an administrative procedure proves to be the most efficient and viable enforcement option to stop the importation of counterfeit goods into Russia. This measure is also applied when small stores offer for sale fake products on the internal market.
Criminal proceedings The illegal use of a trademark may also lead to criminal prosecution.
In accordance with the applicable (criminal) law, the unlawful use of a trademark shall entail criminal liability only in the event that the infringer’s illegal activities cause substantial damages, or if trademark infringement is repeated.
The typical statutory criminal sanctions are a criminal fine, forced labour, corrective measures and imprisonment. In the course of a criminal procedure, the trademark owner is also entitled to file a civil lawsuit to recover damages.
Criminal proceedings vary tremendously in length, but often last one to two years to reach a first-instance decision.
In practice, the criminal procedure is used against large-scale counterfeit operations or gross infringers that manufacture and distribute counterfeit goods in large quantities all over the country.
Unfair competition actions Trademark infringement may constitute an act of unfair competition. Passing off, as well as imitation of trade dress, are also treated as unfair behaviour, which may be prosecuted.
The Russian Federal Anti-monopoly Service, as well as its territorial divisions, are empowered to consider disputes related to unfair competition through a special quasi-judicial procedure.
This type of procedure starts on the basis of a complaint from the injured party (ie, trademark owner or its local distributor). Should the action on unfair competition be eventually successful, the respondent (infringer) would be forced to cease the illegal activities and pay an administrative fine of up to 0.15% of the infringer’s profits.
This procedure usually takes five to 10 months, although it can be longer if the binding order or decision of the Russian Federal Anti-monopoly Service/its territorial division is appealed in court.
Cease-and-desist letters Sending a cease-and-desist or demand letter has become a pre-requisite to a court action in certain instances. In particular, a trademark owner will not be able to claim damages or monetary compensation in a civil action if it has not first sent a cease-and-desist letter to the infringer.
The infringer has 30 days to respond to the cease-and-desist letter. The infringer’s failure to respond or refusal to comply with the terms of the letter provides the trademark owner with a legal standing to sue and claim monetary relief in court.
Sending a demand letter to the alleged infringer claiming a voluntary cessation of trademark infringement may be the easiest and the most effective out-of-court enforcement option in many situations.
Who can file a trademark infringement action?
Generally, the valid registrant (ie, trademark owner), its registered assignee or registered exclusive licensee is entitled to file trademark infringement actions, provided that their rights and legitimate interests are affected by the unlawful/unauthorised trademark use. Non-exclusive licensees, distributors or other authorised trademark users do not have the same privilege.
What is the statute of limitations for filing infringement actions?
The general statutory period of limitations for filing a trademark infringement action is three years from the date when the claimant became or should have become aware of the infringement. The same period applies to the procedure for the execution of the effective court decision concerning the trademark infringement matter.
What is the usual timeframe for infringement actions?
Please see the section on actions above.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
Preliminary and permanent injunctive reliefs are generally available and may be granted in trademark infringement disputes.
Preliminary injunctive relief will be awarded where the claimant can demonstrate that failure to stop the infringement will lead to substantial damages and/or make any subsequent court order unenforceable.
In a trademark infringement matter involving unauthorised domain name registration and use, a special pre-trial procedure exists for obtaining temporary restraining order through a domain registrar. This pre-trial security measure is aimed at ‘locking’ the conflicting domain name; the pre-trial measure is valid for 14 days to enable trademark owner to file complaint with the competent court, provided that the mark owner gives a warranty for indemnification in the complaint.
Permanent injunctive relief will be granted where a claimant can prove the trademark infringement. A plaintiff must typically provide evidence of the following four elements:
- the defendant used the mark without authorisation of the trademark owner;
- the mark used by the defendant is identical or confusingly similar to the owner’s mark;
- the disputed mark is used in connection with goods or services similar to those for which the owner’s mark is registered; and
- this creates a likelihood of confusion.
Where the plaintiff fails to prove one of these elements, the court will not make a finding of trademark infringement and, accordingly, will not grant the injunctive relief.
Evidence that may be submitted to prove trademark infringement include:
- bills of ladings, contracts and other sale and purchase confirmation documents;
- samples of counterfeit or grey market goods;
- expert opinions and public survey results;
- private detective reports and notary public protocols; and
- audio and video records.
Evidence needs to meet the requirements of relevance and be admitted for consideration.
Essentially, when claiming trademark infringement, the plaintiff must act in good faith. Abuse of rights shall lead to the dismissal of the case.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
In addition to preliminary and permanent injunctive reliefs, the owners of the infringed mark can claim the following monetary relief:
- damages, including actual damages or lost profits; or
- punitive/statutory damages (known as ‘monetary compensation’) in any of the following form:
- a fixed amount ranging between RUB10, 000 and RUB5 million;
- double the price of the counterfeit goods; or
- double the cost of the trademark licence.
The trademark owner can also seek and obtain:
- the removal of the trademarks from documents, advertisements and signboards;
- the seizure and destruction of the counterfeit goods; and
- the publication of the court order.
What customs enforcement measures are available to halt the import or export of infringing goods?
The Russian customs authorities are required to suspend the release of products discovered in the course of customs operations that they suspect infringe trademark rights registered in the Russian Customs IP Register.
Where products are suspended, the customs authorities must immediately give notice of the interception to the trademark owner by sending the latter an official notice of suspension along with a presentation of the facts and pictures of the seized products. Upon receipt of the said notice, the trademark owner may inspect the products and decide whether to initiate (in case of trademark infringement) or not (in case the shipment is authorised) a legal action against the infringer (importer) within the statutory period.
The statutory period is 10 working days, which may be extended by another 10 working days if the mark owner files a motivated request reasoned by a corresponding enforcement action. Within this period (ie, 20 working days), the trademark owner may also request samples of the products seized.
In case of trademark infringement, the mark owner can enforce its rights by applying for various enforcement actions. In practice, administrative proceedings will be the most efficient enforcement option against the importation of counterfeits, while civil proceedings will be the only viable enforcement measure against parallel imports.
What defences are available to infringers?
An alleged infringer may use the following material defences:
- the mark used is not protected with regard to the goods at issue;
- the sign at issue was not used in a trademark sense, but for descriptive or informational purposes;
- there is no similarity and likelihood of confusion between the conflicting marks;
- there is no similarity between the conflicting goods and the goods as to which the respective mark is registered;
- the defendant has a licence and/or the consent of the owner to use the mark;
- the plaintiff has no priority right over the conflicting designation (eg, domain name);
- the plaintiff’s trademark rights are exhausted; or
- the plaintiff is abusing its rights.
In addition, the defendant can raise the following procedural defences:
- the period of limitation applies;
- the plaintiff chose the incorrect jurisdiction or forum; or
- the plaintiff filed a lawsuit against the wrong defendant.
Further, the defendant can initiate an invalidation action against the disputed trademark. An invalidation action is considered by the Chamber of Patent Disputes of the RUPTO and such action may not stay the infringement proceedings. In other words, the trademark infringement action and the invalidation action will be independent from each other. Otherwise, the defendant can commence an unfair competition action based on unfair acquisition and use of the disputed trademark. Last but not least, the defendant can file an action for trademark non-use with the Russian IP Court.
What is the appeal procedure for infringement decisions?
The appeal venues described below are generally available in trademark infringement matters:
- For commercial court cases:
- appellate courts review existing evidence, as well as any new evidence if there is a legitimate reason for not submitting it at first instance;
- the Russian IP Court, acting as the first cassation appeal court, hears cases on the existing case records, but does not re-evaluate the evidence or facts;
- the Economic Board of the Russian Supreme Court, acting as the second cassation appeal court, also has no power to re-evaluate evidence and facts; and
- the Russian Supreme Court, in supervision appeals, may review a case and ascertain whether there is a substantial breach in law enforcement.
- For general jurisdiction court cases:
- the supreme courts of the constituent subjects of the Russian Federation (eg, in Moscow – the Moscow City Court) review the existing evidence, as well as any new evidence if there is a legitimate reason for not submitting it at first instance;
- the presidium of the supreme courts of the constituent subjects of the Russian Federation (eg, in Moscow – the Presidium of the Moscow City Court), acting as the first cassation appeal court, hear cases on the existing case records and do not re-evaluate the evidence/facts;
- the Economic Board of the Russian Supreme Court, acting as the second cassation appeal court, also has no power to re-evaluate evidence and facts; and
- the Russian Supreme Court, in supervision appeals, may review a case and ascertain whether there is a substantial breach in law enforcement.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
A trademark can be assigned in whole or in part, with or without goodwill, and with certain jurisdictional restrictions (for international trademark registrations). Trademark applications can also be assigned during the examination process.
Trademark assignments are deemed to be entire transfers or sales of the exclusive (trademark) rights. Therefore, trademark assignment agreements cannot contain any restrictions or limitations on further trademark exploitation.
An assignment in relation to trademarks may not be possible where:
- the assignor wants to retain other confusingly similar trademark registrations, designs and/or company names; or
- the assignor wants to keep in its name the trademark registration in connection with certain goods or services similar to the assigned ones.
There may be other grounds for misrepresentation or risks of confusion in the context of trademark assignments.
An assignment of trademark rights must be made in writing and signed by both parties. The notarisation and legalisation of the deed of assignment or trademark assignment agreement is not required. However, it is mandatory to register the assignment of a trademark, whether it is registered nationally or internationally.
Failure to register the trademark assignment will result in the assignment being invalid against third parties.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
Trademarks can be licensed in whole or in part (under certain circumstances), with or without goodwill, and with jurisdictional restrictions (for international trademark registrations). Pending marks or trademark applications cannot be licensed.
Licensing of trademarks can be done on a sole, exclusive or non-exclusive basis. Trademark licences must also provide a term (the default term is five years) and specify the territory (the default territory is the whole of Russia) covered by the licence.
Trademarks can be licensed either in connection with all goods or services covered by the relevant trademark registrations, or in connection with specific goods or services covered by the trademark registrations. Goods and services that are not indicated in the trademark registrations may not be licensed.
A licence agreement must be made in writing and signed by both parties. The notarisation and legalisation of the licence agreement is not required. However, it is mandatory to register the licence of a trademark, whether it is registered nationally or internationally.
Failure to register a trademark licence will result in the licence being invalid against third parties
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
The main provisions that must be included in a trademark licence are the following:
- details of the parties (ie, company names and addresses of licensor and licensee, as well as their authorised officers/signees);
- subject matter of the licence (ie, the trademark registration number);
- details of the licensed goods or services subject to the licensed trademark registration (goods and services must match those indicated in trademark registration or certificate);
- type of licence (ie, whether it is sole, exclusive or non-exclusive);
- licensable rights (ie, the specifically permitted use of the licensed trademark);
- compensation clause, (this is especially applicable to a licence arrangement between business entities or companies);
- licensed territory (the default territory is the whole of Russia);
- licensed term (the default term is five years);
- sub-licence clause (ie, whether sub-licensing is permitted automatically or whether it is subject to the consent of the licensor); and
- ‘termination for convenience’ clause (ie, whether the licensor and licensee have the right to unilaterally terminate the licence).
Other provisions may be added depending on the contract structure and the parties’ negotiations.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
Security interests over trademarks are usually taken in the form of a pledge or fixed charge. Trademark security interests are currently the most common pledges or charges in Russia (out of other IP subject matters).
A security agreement must be in writing and signed by both parties. The notarisation and legalisation of the security agreement is not required. However, to be able to enforce the contacted security interest, the trademark pledge or charge over trademark, whether protected under a national or international registration, must be registered.
Failure to register the trademark security interest will result in the security interest being invalid against third parties.
In practice, judicial and non-judicial foreclosures are used to enforce trademark security interests.
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Yes, trademarks can be protected under other IP rights, including by virtue of:
- copyright law (eg, logos);
- industrial design patent law (eg, three-dimensional marks); and
- unfair competition law (eg, trade dresses).
The existence of one form of IP protection does not exclude the other and, therefore, dual or even triple legal protection is possible.
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
Trademark rights are afforded protection online as well. Therefore, any unauthorised use of a trademark in a domain name or on a website constitutes trademark infringement.
Alternative dispute resolution (ADR) systems, such as the Uniform Domain Name Dispute Resolution Policy (UDRP) or Uniform Rapid Suspension System (URS), do not apply to infringement matters involving ‘.ru’, ‘.su’ and ‘.ÐÔ’ domain names. Thus, domain name cancellations or transfers are usually achieved based on trademark infringement litigation initiated in local courts.
When the competent court makes a trademark infringement finding, the involved domain registrar has to cancel the disputed domain name registration; the trademark owner has a priority (‘preemptive right’) to register the domain name in its own name within the statutory period.
Even though the UDRP does not apply to ‘.ru’, ‘.su’ and ‘.ÐÔ’ domain name disputes, the Russian courts support the international principle of ‘unfair competition repression’ and apply the UDRP’s three-prong test through the implementation of Article 10bis of the Paris Convention for the Protection of Industrial Property. In other words, a trademark owner must prove the following elements in court:
- the domain name is identical or confusingly similar to a trademark in which the plaintiff has rights;
- the defendant has no rights or legitimate interests in respect of the domain name; and
- the defendant’s domain name has been registered and is being used in bad faith.
It will typically take three to five months to obtain a first-instance court decision in a trademark infringement case involving an unauthorised domain name registration and use.