New procedure for the Recognition of a Trademark as Well-known in Russia

Until recently, the recognition of a trademark as well-known in the Russian Federation was carried out by Rospatent in accordance with the Rules adopted back in 2000.

New Regulations on the recognition of a trademark or a designation used as a trademark as a well-known trademark in the Russian Federation came into effect on October 13, 2015 (Order No 602 of the Ministry of Economic Development of August 27, 2015).

The following provisions of the new Regulations can be noted over against the earlier procedure: Now, if necessary, the applicant can apply for a change of the date, stated by him in the application, from which he wishes that his mark be recognized as a well-known one. The applicant may also ask for amendments to certain elements of the mark stated in the application. Furthermore, the applicant may solicit for a reduction of the list of the goods and services in respect of which recognition of the trademark as well-known is sought. Previously, neither change of date nor change of the trademark was allowed, and only the expert commission of Rospatent could change (reduce) the list of goods and services when considering the application. The absence in the previously established procedure of the possibility to make such changes often resulted in the refusal of the recognition of a trademark as well-known so that the applicant was forced to file a new application.

The new Regulations fixed the right of the applicant or his representative to participate in the consideration of the application, give explanations, answer questions, submit petitions including those mentioned above. Also, the new Regulations set the time for consideration of the application, now it is 10 months (before the term was not set).