From Asia to Russia: Trademark laws for Asian businesses

Despite the political turbulence in recent years, our practice shows that many companies from Asian countries are entering or planning to enter the Russian market. For such companies, it is important to know how to protect and enforce their intellectual property rights to avoid unnecessary disputes and costs. So, what should applicants from Asian countries know about Russian trademark legislation and practice?

Q: Why is it crucial to file a trademark application with the Russian Patent and Trademark Office (PTO) before using it?

According to the trademark legislation, a trademark is defined as “a designation used to individualise goods of legal entities or natural persons”. Therefore, any protectable word, design, slogan, sound, symbol, etc., can serve as a trademark that identifies goods or services of a particular trader. The list of signs that may function as trademarks is also non-exhaustive, allowing for the registration of non-traditional marks.

Russia is a first-to-file jurisdiction, which is why it is important to apply for registration of a trademark before starting to use it. The trademark legislation does not recognise prior use rights (as a general rule, the exclusive right to use a trademark arises as a result of state registration).

Q: Is it possible for Asian companies to file trademarks in native characters?

The overwhelming majority of consumers in Russia do not understand Asian languages (e.g. Chinese, Japanese or Korean). As a result, designations consisting of characters in these languages are considered by the PTO as graphical marks, and they are not regarded as being non-distinctive per se. Also, there are no special requirements for filing applications for the registration of such designations.

That said, it is necessary to note that for a designation to be registered as a trademark, it shall meet certain requirements. Particularly, it shall not contain false or misleading elements, and it shall not be descriptive with respect to the applied list of goods.

Therefore, even though designations consisting of characters in Chinese, Japanese or Korean languages are generally considered as graphical designations, the examiner may issue an inquiry requesting the semantic meaning of them – in case the semantic meaning is not provided at the time of filing – and apply a standard legal approach to their registrability.

Taking into account that word marks are commonly used in oral speech, since they may be easily remembered and pronounced by the consumers, it is reasonable for Asian companies to consider applying for the Latin and/or Cyrillic versions of their marks as well. This allows the consumers to recognise the brand more easily. Such registrations will strengthen and widen the scope of legal protection and may prevent the potential registration of confusingly similar Latin or Cyrillic trademarks by third parties.

One of the latest examples showing the importance of registering Latin and Cyrillic versions of designations in Asian characters is the DOSIRAK case.

A third party applied for a combined designation with the word element KARISOD in Cyrillic; however, this designation was refused registration due to its confusing similarity with DOSIRAK marks registered in Latin and Cyrillic, being a mirror anagram of the South Korean company’s brand, DOSIRAK.

Another important consideration when selecting between the Latin or Cyrillic versions of a trademark is ensuring that the mark aligns with public interests and moral principles. This is particularly relevant because certain words in Asian languages, when pronounced, may sound similar to vulgar terms in Russian.

Such similarities could lead to an outright refusal of trademark registration, as the mark might be deemed contrary to public interests and moral standards. To prevent such issues, it is highly recommended to consult with your Russian distributors or trademark attorneys before submitting a trademark application.

Q: What happens next after the application is filed?

The Russian PTO has about 18 months from the filing date to examine a trademark application, according to the existing administrative regulations. However, the PTO is actively working to reduce examination timelines, which now average between six to eight months. An expedited procedure of up to two months is available, subject to an extra fee.

Q: Is a letter of consent acceptable?

If a prior trademark is cited by the examiner as an obstacle, a letter of consent from its owner may be considered during the examination process. However, if a letter of consent is provided, the examiner is not obligated to accept it unconditionally. Its acceptance depends on the risk of confusion between the trademarks, which means that in cases of close similarity between trademarks, the consent may not be taken into consideration, even if provided.

Q: Is the refusal issued by the examiner final?

If the examiner’s decision is unfavourable, it can be appealed to the Chamber of Patent Disputes within four months. If this deadline is missed, the appeal may still be re-instated within six months, subject to a fine. If the chamber does not accept the applicant’s arguments, it will uphold the examiner’s decision, which can then be further appealed within three months to the IP Court.

Q: How should a trademark be used in accordance with the law?

Under use requirements, a trademark must be used as registered, or in a slightly modified form that does not alter its essence or distinctive features. Therefore, when it comes to a cancellation action for non-use, it is necessary to prove the use of a trademark in accordance with the issued certificate of registration or with immaterial alterations. In case the trademark is used in a form different from the one that was registered, the question of whether this change is essential or not will be a matter of dispute. Therefore, it is recommended to file trademarks as they are used, or will be used in the future.

It is also worth noting that the use is obligatory and non-use may lead to early termination of trademark registration upon request of an interested third party. A trademark becomes vulnerable to cancellation for non-use three years after the registration date. If the mark has not been in use for more than three years for some reason, it is advisable to consider re-filing the mark to try to retain the trademark rights in light of possible risks due to non-use or lack of use.

Q: How can a company prevent the registration of a similar mark by third parties?

In Russia, there is no opposition procedure in respect of pending applications. However, before decisions are issued on pending applications, it is possible to file observation letters to draw the examiner’s attention to third parties’ prior rights for similar marks registered in respect of similar goods or services.

An observation letter is a very effective tool to try to prevent conflicting marks from being registered at the stage of examination. To reveal similar marks and timely file observation letters, monitoring of the database and trademark registers should be in place in advance.

Q: What if a similar mark is already registered?

If a revealed mark is already registered, an official invalidation action based on prior rights or other grounds, such as misleading elements, may be filed with the Chamber of Patent Disputes of the PTO. Invalidation action based on prior rights may be filed within five years after the publication date (this deadline cannot be extended), and an invalidation action based on absolute grounds may be filed at any time during the validity of a mark.

In conclusion, it is important to note that all foreign applicants must be represented before the PTO by registered trademark attorneys. Therefore, when carrying out all the above-mentioned actions, a trademark owner should receive professional assistance from a qualified trademark attorney, who will provide guidance related to the availability and registrability of the mark, its proper use and the need to file new or additional applications. They will also carry out timely monitoring of the PTO’s database to identify the filing of similar marks by third parties.