INTA International Opposition Guide / Russian Federation jurisdiction30 September 2020
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.
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
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
A. Absolute, Relative and Other Grounds
B. First to Use or First to File
V. Costs and Fees
A. To Initiate
B. Monetary Bonds or Surety from Foreign Opponent
VI. Burden of Proof
VII. Substantive Examination
VIII. Standing and Other Opponent Issues
A. Valid Opponent/"Person" and/or "Interested Person" Defined
B. On Basis of Grounds
C. Assignees and Licensees
D. Concealing Identity of Opponent
E. Joint Opponents
F. Foreign Opponent
G. Opponent's Prior Rights and Use
IX. Term and Extension
A. Opposition Term: National Applications/Registrations
B. Opposition Term: International Registrations
C. Deadline Not on Normal Business Day
X. Filing Requirements
A. Minimum Filing Requirements
B. Payment of Official Fees
C. Public Inspection of Documents
D. Additional Grounds
F. Language and Translations
XI. Post-Filing Stages and Procedures
A. Sequence and General Considerations
B. Length of Opposition Procedure
C. Monetary Awards
D. Withdrawal of Oppositions or Applications
C. Cost/Monetary Bonds or Surety
D. Higher Appeals: Availability/Monetary Bonds or Surety
E. Other Circumstances
XIII. Other Issues
A. Subsequent Infringement Proceedings
B. Local Requirements/Perspectives
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.
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.