INTA International Opposition Guide / Russian Federation jurisdiction

This material is only intended to provide an introduction to and simplified profile of an area of this jurisdiction's trademark law and practice and has primarily been prepared for practitioners considering the merits of filing an opposition in this jurisdiction. This material does not take the place of professional advice given with full knowledge of the specific circumstances of each case and proficiency in the laws of this jurisdiction such as might be provided by a local trademark attorney.

For more information about particular areas of practice, please see INTA's companion online publications: Trademark Cancellations.

I. Availability

A. Pre- or Post-Grant

Opposition is not available. There is no "opposition" procedure in Russia per se, i.e., trademarks are not published for opposition by third parties. As of October 1, 2014, third parties are allowed to submit a notification (a kind of "warning letter") against a trademark application with arguments why the mark should not be registered. Additionally, it is possible to cancel a registered trademark on relative or absolute grounds. This procedure, when based on relative grounds, usually is called an "opposition" or an "objection."

B. International Registrations

Not Applicable

C. Collective Marks and Certification Marks

Collective marks are registrable.

Opposition to an application for a collective mark is not available.

Opposition to a registration for a collective mark is not available.

Certification marks are not registrable as certification marks (they are registrable only as general trademarks).

II. Effect on Registration Rights

Not Applicable

III. Grounds

A. Absolute, Relative and Other Grounds

Not Applicable

B. First to Use or First to File

Not Applicable

IV. Forum

Not Applicable

V. Costs and Fees

A. To Initiate

Not Applicable

B. Monetary Bonds or Surety from Foreign Opponent

Not Applicable

VI. Burden of Proof

Not Applicable

VII. Substantive Examination

Not Applicable

VIII. Standing and Other Opponent Issues

A. Valid Opponent/"Person" and/or "Interested Person" Defined

Not Applicable

B. On Basis of Grounds

Not Applicable

C. Assignees and Licensees

Not Applicable

D. Concealing Identity of Opponent

Not Applicable

E. Joint Opponents

Not Applicable

F. Foreign Opponent

Not Applicable

G. Opponent's Prior Rights and Use

Not Applicable

IX. Term and Extension

A. Opposition Term: National Applications/Registrations

Not Applicable

B. Opposition Term: International Registrations

Not Applicable

C. Deadline Not on Normal Business Day

Not Applicable

D. Extensions

Not Applicable

X. Filing Requirements

A. Minimum Filing Requirements

Not Applicable

B. Payment of Official Fees

Not Applicable

C. Public Inspection of Documents

Not Applicable

D. Additional Grounds

Not Applicable

E. Representation

Not Applicable

F. Language and Translations

Not Applicable

XI. Post-Filing Stages and Procedures

A. Sequence and General Considerations

Not Applicable

B. Length of Opposition Procedure

Not Applicable

C. Monetary Awards

Not Applicable

D. Withdrawal of Oppositions or Applications

Not Applicable

XII. Appeals

A. Availability/Deadline

Not Applicable

B. Forum

Not Applicable

C. Cost/Monetary Bonds or Surety

Not Applicable

D. Higher Appeals: Availability/Monetary Bonds or Surety

Not Applicable

E. Other Circumstances

Not Applicable

XIII. Other Issues

A. Subsequent Infringement Proceedings

Not Applicable

B. Local Requirements/Perspectives

Not Applicable

C. Anticipated Revisions of the Law

Important changes in relevant law are not anticipated in the near future. Major amendments to the Civil Code of the Russian Federation, in particular, to the provisions regulating intellectual property, came into force on October 1, 2014.

XIV. Alternatives

A. Cancellation

There are procedures available whereby third parties can apply to cancel or partially cancel a registration (whether or not an opposition has been filed).

These procedures are known (or translate into English) as:

• cancellation (There are two types of cancellation. Protection of a trademark can be challenged and recognized as invalid (i.e., never been granted) in the invalidation procedure. Termination of a trademark means no future protection.).

The grounds to initiate a cancellation are:

• the mark is descriptive;
• the mark is misleading and/or deceptive;
• the mark lacks distinctiveness;
• the mark is generic;
• the mark consists of a geographical indication;
• the mark is functional;
• the mark is against public policy or principles of morality;
• the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;
• the mark includes a badge or emblem of particular public interest;
• the application for or registration of the mark was made in bad faith;
• there is an earlier application or registered mark;
• the mark is covered by a copyright;
• the mark is a company name (a company name protected in Russia);
• the mark is notorious or well known (Article 6bis of the Paris Convention);
• the trademark application was filed or the registration was granted in the name of an agent or other person with a business connection to the owner of the mark (Article 6septies of the Paris Convention);
• the mark is a trade or business name (a trade or business name protected in Russia);
• the mark is identical or confusingly similar to the official name or image of high-value objects of cultural heritage of the peoples of the Russian Federation or to objects of the world's cultural or natural heritage, as well as to the images of cultural valuables, if the owners thereof or other duly authorized persons have not granted their consent to the registration of the mark;
• the mark is identical to a name, pseudonym or a derivative thereof, a portrait or facsimile of a person who was famous in the Russian Federation as of the application filing date, if such person or heirs thereof have not granted their consent to the registration of the mark;
• the mark is identical to an industrial design or a certification mark the rights to which were created before the priority date of the mark;
• the mark has not been in use for any three consecutive years from the trademark registration date;
• the dissolution of the legal entity or termination of entrepreneurial activity of the private entrepreneur who is the trademark owner;
• for collective marks: the use of a collective mark for goods that do not have the specific quality or other common characteristics;
• for well-known marks: the loss by a well-known mark of its well-known characteristics.

The burden of proof is on both parties to prove the allegations and defenses on which they rely in the cancellation action.

B. Observations and Letters of Protest

There are procedures for official consideration of third-party objections to grant (e.g., observations, letters of protest, etc.), but these cannot be relied upon to be reviewed and result in official objection even if well based. Third-party observations are taken into consideration by the PTO examiners but will not necessarily result in an official objection. The decision is left at the discretion of the examiner.

The deadline for raising such objections is: They may be raised after the publication of a trademark application and until an official decision is issued.

Such objections must be made to the Trademarks Registry/Office.

The legal representative need not identify his client in such objections.

The following grounds may be raised in such objections:

• only absolute and relative grounds.