Brand Protection Strategies in Russia After Market Exit

Early cancellation of trademark protection due to non-use
Mechanisms for preserving control over a brand during temporary non-use
   1. Regular filing of new trademark applications
   2. Market exit does not make a brand free for registration: blocking a third-party filing citing the threat of misleading the consumer
   3. Russian courts are increasingly curbing bad-faith attempts to capture widely-known brands
Conclusion

Since 2022, many foreign companies changed the format of their presence in Russia. Some completely exited, selling their Russian assets, whereas others just suspended operations or continued through local subsidiaries or affiliates while distancing from their core brands. Yet all these scenarios raise the same legal question: does market exit render a widely known trademark free for registration by third parties? The article examines how Rospatent and the courts respond to attempts to capture famous brands, and outlines practical strategies for maintaining brand control even during periods of temporary non-use in Russia.

From a legal perspective, however, all these scenarios raise the same question: does the non-use mean that a famous brand becomes available for registration in the name of someone else? The emerging case law suggests that the answer is rather No. A company’s withdrawal from the Russian market does not in itself sever the link between a brand and its original owner. Attempts to capture a widely known designation through a similar trademark filing or through a non-use cancellation action are increasingly being resisted by both Rospatent and the courts. At the same time, recent practice shows that trademark owners, their Russian subsidiaries and affiliated entities still have workable mechanisms to retain brand control even where the mark is not currently used.

In practice, foreign companies and related entities that remain active in Russia are often forced to distance themselves from their core international brands. They may

1. rely on already registered brands originally targeted at the Russian market, including those previously bought out or acquired through the acquisition of local companies, or


2. file TM applications for new brands showing continuity with the earlier identity, or


3. register transliterations of English-language brands into Russian.


This article does not address who initiated such rebranding or filings — the original owner, its affiliate, or an unrelated third party acting with or without consent. Russian media, for example, often describe “STARS COFFEE” as a rebranding of “STARBUCKS”, although in fact these two brands belong to different parties and have already become the subject of disputes.

The purpose of preserving the brand also matters. For some companies, it is a way to keep open the option of re-entering the Russian market later. For others, it is a way to prevent goods from appearing on the market under the same brand, including counterfeit products, thereby supporting the business of a Russian subsidiary. For others, it is a way to reduce risks for their business and reputation in neighboring jurisdictions. In practice, these motives often overlap, but the priority among them influences the legal strategy chosen.

Early cancellation of trademark protection due to non-use

The main reason why a trademark owner must think strategically about brand preservation is the risk of early cancellation for non-use. The grounds and procedure are set out in Article 1486 of the Civil Code. A trademark may be cancelled in whole or in part if the mark has not been continuously used for three years in relation to the goods or services for which it is registered.

Russian law establishes a mandatory pre-trial procedure. A person intending to bring a non-use cancellation action must first send the trademark owner a proposal identifying the relevant marks and the relevant goods or services. In substance, this proposal is a demand made under the threat of litigation. It may include an offer to assign the exclusive right in the mark, to cancel the mark voluntarily, or to issue a letter of consent for registration of a similar designation. Only if the trademark owner does not agree within two months from the date of the proposal the interested party may file a claim.

Non-use cancellation disputes are heard by the IP Court as a court of first instance sitting in a panel of three judges.

In such proceedings, the court determines two key merits of the case.

First, whether there is evidence of use of the challenged trademark during the three-year period preceding the date of the proposal. Such evidence must show that the relevant goods or services were actually made available to end consumers. Mere intent to use, preparations for use, or token use aimed solely at preserving the monopoly are not sufficient.

Second, whether the claimant has a legitimate interest in seeking cancellation of the trademark for non-use.

Importantly, Russian legislation and case law do not provide foreign trademark owners with either special restrictions or special privileges as compared with Russian companies and individuals. In particular, public statements that a foreign company has suspended operations in Russia have not, in themselves, been treated by the courts as evidence of abuse of rights by the foreign owner, nor have they diminished the evidentiary value of proof of use submitted by that owner.

This article focuses only on cases where there is no evidence of use of the trademark in Russia during the relevant three-year period, whether for the challenged goods and services or for any other goods and services. For that reason, the issue of use itself is not examined here in greater detail.

Mechanisms for preserving control over a brand during temporary non-use

There is no universal solution for long-term brand preservation in Russia once operations are restricted or suspended. It is always a case-by-case decision, depending on the company's goals, brand awareness, product market, and other factors. Below, we shall describe key brand protection mechanisms and current practices for their application.

1. Regular filing of new trademark applications

This approach is based on the three-year grace period following registration, during which trademark protection cannot be cancelled for non-use. To make this mechanism work in practice, the owner should support protection in advance by filing new applications for identical or similar signs. This makes it possible to build a chain of rights in which later registrations continue the protective function as earlier marks become vulnerable to non-use actions. As a result, even if older registrations are cancelled, a third party TM application may still be blocked by the owner’s newer marks.

Because examination may last for more than a year and may also be suspended, new applications should be filed well in advance. At the same time, Russian law does not allow the registration of identical marks for the same goods and services, so each new filing should contain at least minimal differences, both in the sign itself and in the specification of goods and services.

Russian media often interpret new trademark filings by companies that have left the market as evidence of an imminent return to Russia. In most cases, however, such filings do not signal a planned resumption of operations. Their main purpose is to preserve control over the brand.

Government Resolution No. 1209 of 2 September 2024 introduced the possibility of hiding information about the applicant from the publicly available register extract maintained by Rospatent. This measure was likely intended for foreign trademark owners wishing to avoid publicity when filing new applications in Russia. In practice, however, the mechanism does not appear to have become widely used. Foreign companies usually focus on preserving their most valuable and best-known brands, so the media often infer who stands behind a filing even without formal disclosure, although in recent years there has also been an increase in similar filings by bad-faith applicants. In addition, any person may obtain the file materials for any application by filing a request with Rospatent and paying the official fee.

It should also be noted that the 2023 review of case law approved by the Presidium of the Supreme Court included the position that new TM application for a designation similar to a mark previously owned by the same person, where the earlier mark had been cancelled for non-use, may in some situations be declared by court as an abuse of rights, because it seeks to circumvent the final court judgment and prevents another person from registering and using the sign. So far, however, this position has not developed further in relation to new filings by foreign brand owners who left the Russian market. Its application to widely known brands appears unlikely, because in such cases the obstacle to registration is often not only the owner’s new application, but also the likelihood of misleading consumers.

Accordingly, periodic filing of new TM applications remains one of the main tools for preserving control over a brand in circumstances of non-use. However, this tool alone may not be sufficient. Furthermore, it does not protect brand owners from the loss of earlier trademarks, which could have been used to combat counterfeiting.

2. Market exit does not make a brand free for registration: blocking a third-party filing citing the threat of misleading the consumer

If the TM holders lack evidence of use of the trademark for three years, they may voluntarily abandon it. Such abandonment will not result in the loss of the brand if there are other trademarks or applications that predate the opponent's. However, if there are no such trademarks or the opponent's application has an earlier priority, the brand owner still has the option to prevent the opponent's registration on another basis, as provided in Paragraph 3 of Article 1483 of the Civil Code: the threat of misleading consumers regarding the product, its manufacturer, or place of production.

This means that the mere fact that a foreign company has left the Russian market or suspended operations in Russia does not make its brand available for registration by someone else. Even if the earlier registration has already been cancelled for non-use, Rospatent may still refuse a third-party application if consumers continue to associate the sign with the original owner.

This is the logic behind the strategy under which the owner gives up a vulnerable unused registration, simultaneously blocks registration in the name of a competitor or other third party, and files a new application. To do that the owner must prove that the sign remains known in relation to the relevant goods and that consumers continue to associate it with a certain owner. In practice, Rospatent may take into account information from the internet where it supports that perception.

The “DR PEPPER” dispute is a good example. Historically, trademark rights for “DR PEPPER” brand in Russia belonged to The Coca-Cola Company group. A Russian seller of soft drinks filed similar applications and at the same time undertook non-use cancelation actions (NUCA) against a series of “DR PEPPER” marks in cases No. SIP-527/2022 and No. SIP-114/2023. In response, the owner made voluntary renunciation of the TM registrations against which the cancellation lawsuits had been filed, as a result of which the claims were dismissed and the question of actual use was not investigated and determined by the court on the merits. At the same time, the original owner submitted a written submission opposing registration of the applicant’s filings together with a sociological survey and other evidence to Rospatent, arguing that the sign remained known and that registration of such TM application in favor of Russian company would mislead consumers. Those arguments were accepted, registration was refused, and the IP Court later upheld Rospatent’s position in case No. SIP-44/2025 and stated that the Russian applicant’s conduct, aimed at taking over a widely known brand, amounted to an abuse of rights.

A similar approach was applied in case No. SIP-457/2023 concerning the “Latisse” brand. The court likewise upheld refusal of registration on the ground that the sign would mislead consumers and found the applicant’s claim to a designation previously used by another person for goods of the same kind to be unfounded. The fact that the foreign company had left the Russian market or suspended operations in Russia was not treated as having independent legal significance.

Meanwhile such voluntary renunciation of the own registration in the hope that Rospatent will then refuse the third party’s application should be regarded as a highly risky step. The examples above show that these tactics may work in some cases, but its success depends on the specific facts and is far from guaranteed. The owner loses marks with earlier priority and creates a period of vulnerability during which, until a new mark is registered, the ability to act against counterfeit goods and other infringements becomes more limited.

At the same time, the more important general conclusion from “DR PEPPER” and “Latisse” brands cases is this: market exit and even the cancellation of an earlier registration do not mean that a widely known sign can freely be registered in the name of another person. If the brand continues to have a strong association with the original owner, Rospatent and the courts will consider those and can refuse registration of signs that would mislead consumers.

In practical terms, these mechanisms remain available after 2022, but they require regular monitoring of identical and similar applications and timely submission to Rospatent of a comprehensive package of evidence together with a written submission opposing registration. In practice, it is much easier to prevent registration at the examination stage than to attack an already registered mark later.

3. Russian courts are increasingly curbing bad-faith attempts to capture widely-known brands

Challenges to the claimant’s legitimate interest, abuse of rights and unfair competition all reflect the same underlying idea in this category of disputes: claims to a widely known brand should not receive judicial protection where they are not aimed at bona fide market use, but at misappropriating the reputation already built by someone else. This line of reasoning has become increasingly visible in recent non-use cancellation cases.

A claimant’s interest is a mandatory element in a non-use cancellation action. Usually, it is framed as the claimant’s intention to use an identical or confusingly similar sign for similar goods or services. The law does not provide a limited list of evidence, and the courts have traditionally taken a relatively flexible approach. As a result, proving interest has often not been particularly difficult, especially for mass-market brands.

This created the central contradiction. On the one hand, the claimant could show a formal interest in the designation. On the other hand, trademark owners argued that even if their mark were cancelled, the claimant would still be unable to register the sign because of the likelihood of misleading consumers. For a long time, however, the courts tended to support position that this issue belonged to the registration process of Rospatent rather than to the NUCA dispute itself. That left uncertainty as to whether such claims could be rejected as abusive or as a form of unfair competition.

The practice developed unevenly. In 2016 there were several decisions in which non-use cancellation claims against widely known marks were treated as abuse of rights and as unfair competition within the meaning of Article 10bis of the Paris Convention. In case No. SIP-530/2014, the courts held that cancellation of the mark “Dr. Theiss Angi Sept” would facilitate consumer confusion and unfair competition. Similar conclusions were reached in case No. SIP-299/2015 concerning “HENNESSY” and case No. SIP-448/2015 concerning “ЮНИТОН”.

Later, decisions with this reasoning largely disappeared. The courts began to state that arguments about free-riding on a widely known brand should be examined either by Rospatent during examination of the application or in a separate dispute on unfair competition or abuse of rights in connection with registration and use of a trademark. Thus, in case No. SIP-334/2024 concerning the “ERICSSON” series of trademarks, the court rejected the argument that the claimant intended to exploit the reputation of a famous brand and explicitly stated that such issues could be raised in an opposition submission against registration under Article 1483, but not within the NUCA itself. The same approach was repeated in cases No. SIP-492/2024 and No. SIP-493/2024 concerning “SPRITE” and “FANTA” trademarks. Although the court refused cancellation on other grounds, it did not accept arguments on the abuse of rights by the claimant.

A further development of this logic emerged once the three-year period after 2022 had elapsed and many foreign companies had already been absent from the Russian market for a substantial time. In case No. SIP-489/2024 concerning the “CANON” trademarks series, the courts rejected the non-use cancellation claim, holding that in light of the wide recognition of the marks, the claimant’s materials did not show a genuine business need to use the sign, but merely an attempt to benefit from the fame of the defendant’s mark. On that basis, the courts held that the claimant’s interest was illusory. The owner’s argument that the claim demands were an abuse of rights was not accepted, however, because the court found no evidence that the action had been filed exclusively to harm the owner.

Thus, the “CANON” case developed the idea that even where the claimant can show a formally documented intention to use the sign, the interest may still be defective in substance. The court described this as an “illusory interest”, apparently borrowing terminology from the case law on nominal use of trademarks. This approach was then reinforced at the level of the Supreme Court, where the assessment of legitimate interest was expressly linked not only to formal intent but also to the claimant’s practical ability to use the sign lawfully.

An important step in development of this approach was case No. SIP-1077/2023 on the early termination of legal protection of a trademark #502206. The Judicial Chamber for Economic Disputes of the Supreme Court set aside the lower decisions and disagreed with the conclusion that the claimant had a real legitimate interest in seeking cancellation. The Supreme Court emphasized that such interest must consist in an intention to register one’s own mark and/or use the disputed or similar sign lawfully. Where the claimant had already been found, in another case, to infringe not only trademark rights but also copyright in the work embodied in that trademark, the reality of his intention became doubtful, because such a person would be unable either to register the sign or to use it lawfully in trade. In this way, the Supreme Court effectively confirmed that legitimate interest may be assessed not only formally, but also from the perspective of the lawfulness of subsequent use.

The same reasoning was developed further in case No. SIP-803/2024 concerning the “VICTORIA’S SECRET” TM series. The claimant relied on its own application covering a broad list of goods and services, but the court refused cancellation of those goods for which the owner proved that the marks remained known to consumers. The court referred to the absence of proper legitimate interest and to abuse of rights. In substance, the court found that the claimant’s formally stated interest was aimed only at taking over the reputation of a globally recognized brand and using it in his own business for similar goods and services. The interest was therefore characterized as malicious. In effect, the court applied the same logic as in “CANON” case, but used what may be a more precise term - “malicious interest” instead of “illusory interest”.

Similar conclusions were later reached in cases No. SIP-331/2024 and No. SIP-1035/2024 involving the “XIAOMI” brand, in case No. SIP-582/2025 involving the “RAY-BAN” brand, and in case No. SIP-423/2024 involving “ZANUSSI” brand.

The development of this practice may be explained not only by the passage of time, but also by the courts’ need to respond to more than twenty non-use cancellation actions filed in 2024 by MULTIGOODS PRODUCTION LIMITED from Hong Kong against famous brands. Besides the cases mentioned above, there were partial or full dismissals based on lack of bona fide legitimate interest in cases concerning “MICHELIN”, “Nokia”, “Bershka” and “HUGO BOSS” brands. In several other cases the claims were fully granted, but the decisions indicate that the trademark owners did not appear or did not submit a position, for example in matters concerning “MOLEKULE”, “AMAZON” and “Nokia Solutions & Networks”. This again shows that even where a brand is extremely well known, a clear and well-supported legal position remains essential.

Accordingly, since mid-2025 a more visible line of authority has begun to emerge in which the courts refuse non-use cancellation through the prism of defects in the claimant’s legitimate interest. In the first instance, courts increasingly rely on the absence of a genuine and proper interest rather than on abuse of rights or unfair competition as standalone grounds. For foreign brand owners, this sends an important signal: even where use cannot be proven, Russian IP protection does not simply disappear, and questions of good faith are playing an increasingly meaningful role.

More broadly, one can see a return to the logic expressed in the 2016 case law: claims seeking cancellation of famous trademarks must be not only formally structured, but substantively justified. For foreign trademark owners, their Russian subsidiaries and affiliated entities, this is significant. If this line of authority continues to consolidate, it will materially simplify defense strategies in cases where evidence of use is unavailable or limited.

Conclusion

Over the four years since 2022, Russian practice has developed a range of workable mechanisms that allow foreign brand owners to preserve control over widely known brands even during periods of temporary non-use in Russia.

Several principal conclusions follow.

First, a trademark owner’s exit from the Russian market does not, by itself, make the brand free for registration in someone else’s name. The fame of the sign, its continued association with the original owner and the risk of misleading consumers all remain legally relevant even where the mark is not currently used.

Second, attempts to capture a widely known brand through similar applications or through non-use cancellation actions are increasingly receiving a negative response from both Rospatent and the courts. A formally stated interest in the designation is no longer enough in itself. Russian courts are paying growing attention to questions of good faith and to whether the claimant’s conduct is genuinely justified.

Third, foreign trademark owners, their Russian subsidiaries and affiliated entities still have real legal tools available to protect their brands. These include periodic filing of new applications, use of written submissions opposing registration of similar signs at the examination stage, and procedural defenses in non-use cancellation litigation.

At the same time, such protection does not operate automatically. The courts have repeatedly emphasized that the fame of a trademark must be proven in each individual case and cannot simply be presumed as a matter of common knowledge. The effectiveness of protection therefore depends not only on the strength of the brand itself, but also on the timing, consistency and quality of the owner’s legal strategy.