TM survival for brands absent or suspended from Russian market

Russian trademark protection depends on registration
Three-year non-use risks cancellation
Passive absence invites trademark attacks
Proactive refiling resets non-use clock
Three refiling strategies for trademarks
Fee changes demand narrower specifications
Current registrations secure Russia re-entry
Shift from passive to strategic approach

Transformation of the international business climate and the evolving geopolitical landscape have prompted many foreign companies to reassess their presence in the Russian market. Whether through suspension of operations, scaling back commercial activity or a complete exit, the practical consequence for brand owners is the same: trademarks registered in Russia risk falling into a state of non-use, with the attendant legal vulnerabilities that follow.

At the same time, the Russian consumer market remains one of the largest in the Eurasian region, and the prospect of a future return makes the question of preserving trademark rights not merely a legal formality but a matter of long-term commercial strategy.

Russian trademark protection depends on registration

In the Russian legal framework, trademark protection is strictly registration based. An exception is made to the so-called well-known marks, which can be granted protection/recognised as well known without formal registration. Exclusive rights arise on state registration and are certified by a certificate issued in respect of a specific list of goods and services, as provided by articles 1481 and 1484 of the Civil Code.

The scope of protection is accordingly bound by the register entry rather than by the actual market presence or commercial reputation. In commercial terms, a trademark concentrates the accumulated value of a brand – investments in marketing, quality control, distribution and consumer communication – in a single designation that enables purchasers to identify the origin of goods and services with confidence.

For many companies, registered trademarks represent one of their most valuable assets. Loss of registration does not merely eliminate a legal right. It removes a strategic instrument that may take years and significant resources to rebuild.

Three-year non-use risks cancellation

Under article 1486 of the Civil Code, legal protection of a trademark may be terminated prematurely – in respect of all or part of the registered goods and services – if it has not been used continuously for a period of three years. Any interested party may initiate cancellation proceedings by first sending a formal proposal to the rights holder and, absent agreement, filing a claim before the IP Court.

The burden of proving use falls on the rights holder. Use is recognised where a trademark is applied by the rights holder or by a person acting under the rights holder’s control. Use via parallel import channels, which has become more prevalent following partial legalisation of parallel imports for certain goods and brands in March 2022, does not meet this standard.

For companies that suspended or terminated supply operations in Russia during 2022, the three-year grace period elapsed in 2025, rendering their trademark portfolios directly vulnerable to cancellation actions.

Passive absence invites trademark attacks

The risks associated with a passive approach during a period of market absence are cumulative and mutually reinforcing. Competitors and bad-faith actors regularly monitor the register for marks that have entered a non-use period.

Applications for identical or closely similar designations – composite marks incorporating dominant elements of well-known brands, transliterations, or minor graphic variations – have been used to exploit the absence of the original rights holder.

In the Xiaomi case, the IP Court terminated legal protection for class 21 goods after the trademark owner failed to produce qualifying evidence of use and could not establish, as a matter requiring specific proof, that the mark enjoyed widespread recognition in Russia in relation to those goods (resolution of the IP Court, 16 February 2023, No. SIP1257/2021).

Marks belonging to Amazon, NEC, Lenovo, Victoria’s Secret and others have, meanwhile, been subjected to analogous attacks.

Beyond cancellation, prolonged absence creates conditions for dilution and loss of customs enforcement mechanisms, which are instruments of considerable practical importance in combatting counterfeit goods at the point of importation.

Russian courts are unlikely to regard voluntary market withdrawal as an excusable reason for non-use within the meaning of article 1486. While the law permits consideration of circumstances beyond the rights holder’s control, the decision to exit the market does not meet this threshold under current judicial practice.

Proactive refiling resets non-use clock

One of the most effective instruments available to rights holders in these circumstances is the proactive refiling of an application for a designation that maintains a legal connection with the original brand while establishing a new registration date, thereby resetting the three-year non-use period.

A fresh registration converts a legally vulnerable asset into one that is legally current.

Refiling is, however, subject to a structural constraint. Article 1481 of the Civil Code confirms that the exclusive right to a trademark is certified by a single registration certificate.

State registration of a designation identical to an already registered mark in the name of the same rights holder for an identical list of goods and services is inconsistent with the nature of the exclusive right and may be refused by the trademark agency Rospatent as contrary to public interests. A strategy therefore needs to be developed.

Three refiling strategies for trademarks

Three principal approaches are available in practice. The first, and legally most straightforward, involves modifying the designation itself: filing an application for a mark that is not identical to the registered trademark but preserves its essential recognition.

This is achieved by adding verbal elements such as a qualifier or product line identifier or alternatively registering the verbal component separately from the graphic logo or vice versa, or by introducing minor graphic refinements.

This avoids the exclusivity conflict while maintaining the commercial link with the original brand.

The second approach involves maintaining the designation, but modifying the list of goods and services. Filing an application covering a different set of goods and services does not conflict with the earlier registration and produces a fresh certificate with an independent priority date.

The third approach – filing for an identical mark for identical goods with the intention of subsequently abandoning the earlier registration – is legally possible but commercially the least desirable, as the priority date is irrevocably lost. This option should be considered only where the first two are inapplicable.

A combined strategy of co-ordinating several applications covering different designations and lists provides the greatest flexibility, and the most resilient legal position.

Fee changes demand narrower specifications

A recent amendment to the rules governing official fees for trademark filing and renewal has introduced an additional charge for each good or service designated beyond the first 10 in any class.

This change has direct practical implications for refiling strategies because the cost of maintaining broad, comprehensive lists of goods and services – a common practice designed to maximise the formal scope of protection – increases materially.

Accordingly, the drafting of the goods and services list now requires a more deliberate and commercially focused approach. Rights holders should conduct a careful audit of the existing list and identify the positions that represent actual or anticipated commercial interest.

Protection in respect of positions that are neither currently used nor realistically likely to be used in the foreseeable future generates additional fee liability without producing the corresponding legal benefit.

Precision in list drafting therefore serves both to reduce costs and to sharpen the scope of protection in relation to the goods and services that genuinely matter.

Moreover, such an approach significantly reduces the risk of potential collision with third parties’ rights that may result in cancellation actions or oppositions by those third parties aimed at removal of the conflicting marks from the register.

Current registrations secure Russia re-entry

Should conditions permit a resumption of commercial activity in Russia, the existence of a valid registration will be decisive.

A company with current registrations will be able to assert priority against conflicting marks filed during the period of absence and pursue enforcement through the available administrative and judicial mechanisms, which continue to function effectively and without discrimination against foreign rights holders.

Russian law and the consistent practice of Rospatent do not accommodate bad-faith registrations. Attempts by third parties to register designations confusingly similar to those owned by others can be successfully challenged, especially provided that prior registered rights exist and are asserted in a timely manner.

A company that has allowed its registrations to lapse will face a materially more complex re-entry, potentially requiring invalidation proceedings against marks filed in its absence.

Shift from passive to strategic approach

In conditions of forced reduction of market activity, the management of trademark rights must shift from a reactive to a strategic posture. A passive approach – proceeding on the assumption that the situation will resolve itself before the three-year non-use period expires – carries a level of legal risk disproportionate to the cost of the available preventive measures.

Proactive refiling is a legitimate and commercially rational instrument for preserving legal presence in a jurisdiction where physical commercial activity has been reduced or suspended.

Combined with a disciplined approach to list drafting – particularly in light of the amended fee structure – it allows rights holders to maintain the legal infrastructure of their brand at a manageable cost, ensuring that when the conditions for market re-entry are met, the legal gateway remains open.