Offices & Countries / Russia / Trademarks / FAQ

	Trademarks Official Fees Filing requirements FAQ

1. Definition of a trade/service mark
A trademark and service mark (hereinafter referred to as "the trademark") are signs intended to individualize goods manufactured, works performed or services furnished (hereinafter referred to as "goods") by legal or natural persons.

2. Who qualifies as an applicant (right holder)
The exclusive right to a trademark (the possibility to appear as a right holder) may be granted to any legal entity or natural person engaged in entrepreneurial activity.

3. How the infringement of trademark owner rights is determined
Any unauthorized use, within the framework of civil circulation on the Russian Federation territory, of the trademark or a sign confusingly similar thereto in respect of goods whose identification is covered by the trademark registration, or of goods of the same type is considered as an infringement of the right holder's exclusive rights (unlawful use of the trademark), including the placement of the trademark or a sign confusingly similar thereto

- on goods, labels, packages for such goods that are manufactured, offered for sale, sold, demonstrated at exhibitions and fairs or otherwise introduced into civil circulation on the Russian Federation territory, or stored and (or) transported to this end, or imported into the Russian Federation;
- in performing works and furnishing services;
- on documentation associated with the introduction of goods into civil circulation;
- in offers for selling goods;
- on the Internet, in particular within a domain name or when using other modes of addressing.

Any goods, labels or packages for such goods carrying an unlawfully used trademark or a sign confusingly similar thereto will be considered counterfeit.

4. Marks which can be registered
Verbal denominations, figurative or three-dimensional signs and other signs or combinations thereof may be registered as trademarks.

5. Marks which are prohibited from registration
Trademarks may not be registered if they are devoid of distinctive ability or consist solely of elements that:

- have become the customary designation for goods of a particular type;
- are symbols or terms in common use;
- characterize the goods, in particular specify the type, quality, quantity, property, function or value thereof, as well as the time, place and method of manufacturing or sale;
- represent the form of the goods, which form is exclusively or primarily determined by the properties or the function of these goods.

The elements mentioned in paragraphs two through five of this Item may be incorporated in the trademark as unprotected elements provided that they do not occupy the predominant position therein.
The provisions of this Item do not apply to the signs that have acquired the distinctive ability as a result of their use.

6. Marks which can not be registered
Those trademarks may not be registered that are identical or confusingly similar to:

- trademarks of other persons applied for registration (if the corresponding applications have not been withdrawn) or protected in the Russian Federation, in particular under the international treaty to which the Russian Federation is a party, for goods of the same type, and having an earlier priority;
- trademarks of other persons that are declared, in conformity with the procedure established by the present Law, well-known in the Russian Federation in relation to goods of the same type.

Registration of a sign, confusingly similar to the trademark mentioned in paragraph two or three of this Item, as a trademark for goods of the same type is allowed with the consent of the right holder only.

7. When representation of the patent attorney is necessary
Foreign legal entities or natural persons permanently residing outside the Russian Federation, or their patent attorneys, will conduct cases before the Russian PTO through the patent attorneys registered with the Russian PTO. The powers of the patent attorney shall be attested by a power of attorney granted by the applicant, right holder or other person concerned.

8. Determination of priority
The priority of a trademark shall be determined by the date of filing the application with the Russian PTO.
The priority of a trademark may be determined by the date of filing the first application in a member-state of the Paris Convention for the Protection of Industrial Property (hereinafter referred to as "Convention priority"), provided that the application was filed with the Russian PTO within six months following the said date.
The priority of a trademark affixed to a product displayed at an official or officially recognized international exhibition held on the territory of one of the member-states of the Paris Convention for the Protection of Industrial Property may be determined by the date as from which the product in question was on public display at the said exhibition (hereinafter referred to as "exhibition priority"), provided that the application was filed with the Russian PTO within six months following the said date.
The applicant wishing to enjoy either Convention or exhibition priority shall so declare when filing the application for trademark registration or within two months following the date of filing the application with the Russian PTO, and shall file at the same time the necessary documents substantiating the validity of his claim, or submit those documents within three months following the date of filing the application with the Russian PTO.

9. Tasks of preliminary examination
The formal examination of the application shall be carried out within one month following the date of filing of the application with the Russian PTO.
The presence of the necessary elements of the application and their compliance with the prescribed conditions shall be ascertained in the course of the formal examination. Depending on the outcome of the formal examination, the application is taken into consideration or a decision of refusal to take it into consideration is issued, the applicant being informed thereon.

10. Tasks of substantive examination
The examination of the mark applied for registration shall be carried out after the formal examination has been completed.
In the course of the examination it shall be verified whether the mark applied for registration meets the conditions set forth in Articles 1, 6 and Article 7, Items 1 and 2, of the Law (see the information above in the items 5 and 6 of this section), and the priority date of the trademark shall be determined.

11. Reconsideration of the decision of registration
The decision to register a trademark may be reconsidered by the Russian PTO prior to registration of the trademark owing to:

- the receipt of an application for registration of a trademark identical or confusingly similar thereto in respect of goods of the same type, having an earlier priority according to Article 9 of the Russian Trademark Law (convention or exhibition priority);
- registration of an appellation of origin identical to this trademark or confusingly similar thereto;
- revealing of an application containing an identical trademark, or of a protected identical trademark, for the goods that are fully or partly coinciding, having the same or earlier priority of the trademark;
- the satisfaction of a request of the applicant's change that may result, in case of registration of the trademark, in the possibility of misleading customers as to the product or manufacturer thereof.

12. Term for filing an objection against the Examiner's decision
If the applicant disagrees with the decision of refusal to take the application into consideration, made on results of the formal examination, or with the decision taken on the results of the examination of the mark applied for registration, or with the decision on declaring the application withdrawn, he may lodge an appeal with the Chamber of Patent Disputes within three months following the date of receipt of the corresponding decision or copies of the opposed references that were requested from the Russian PTO, provided that the applicant requested them within one month from the date of receipt of the corresponding decision.
If the applicant missed the terms, the Russian PTO may restore these terms at the applicant's request, that shall be filed no later than two months after their expiration, provided that the reasonable excuses are confirmed and the prescribed fee is paid.

13. State Trade/Service Marks Register
The following elements shall be entered in the Register: a reproduction of the trademark, the particulars concerning the right holder, the priority date of the trademark, the date of registration thereof, the list of goods for which the trademark is registered, other particulars concerning the registration of the trademark and any amendment subsequently made to those particulars.

14. Term of validity of a trademark
The trademark registration is valid within ten years following the date of filing the application with the Russian PTO.

15. Possibility of late renewal
For the purposes of the renewal of the term of validity of the trademark registration, the right holder may obtain, on request and against payment of an additional fee, the benefit of an additional period of six months after expiration of the term of the registration.

16. Trademark use
A trademark is deemed to be used if it is affixed on goods for which it is registered and (or) on the packaging thereof by the right holder or by any person to whom the right to use the trademark has been granted under a license contract.

17. Non-use and consequences of non-use
The legal protection of a trademark may be terminated earlier in respect of either all or some of the goods due to non-use of the trademark continuously during any three years after its registration. Any person may file a request to terminate the legal protection of the trademark earlier due to non-use with the Chamber of Patent Disputes after the expiration of the prescribed three years, provided that this trademark was not used before filing such a request.
The evidences of the use of the trademark have to be presented by the right holder.
Within the scope of this Item, the use of the trademark with alterations in some distinct elements thereof, not causing a change in its essence, is deemed to constitute the use of the trademark.
The decision on whether or not to terminate the legal protection of the trademark earlier due to non-use may be made subject to the consideration of evidences submitted by the right holder to show that the lack of use was due to factors beyond his control.

18. Assignment of a trademark
The exclusive right to the trademark in respect of either all or some of the goods for which it is registered may be transferred by the right holder to the other legal entity or natural person engaged in entrepreneurial activity by virtue of a contract of transfer of the exclusive right to the trademark (contract of the trademark assignment).
No assignment of a trademark shall be allowed if it would be liable to mislead customers regarding the product or the manufacturer thereof.

19. License agreement, necessary conditions
The right holder (the licensor) may grant the right to use the trademark to the other legal entity or natural person engaged in entrepreneurial activity (the licensee) under a license contract in respect of either all or some of the goods for which it is registered.
The license contract shall contain a clause to the effect that the quality of the licensee's goods shall not be inferior to that of the licensor's goods, and the observance of the said clause shall be ensured by the licensor.

20. Compulsory registration of assignment and license agreement
A contract of transfer of the exclusive right to the trademark (contract of the trademark assignment) and a license contract shall be registered by the Russian PTO. In the absence of registration, the said contracts shall be deemed null and void.

21. When a trademark registration may be contested and invalidated:
The provision of legal protection to a trademark may be contested and invalidated:

- fully or in part, during the entire term of validity of the legal protection, if it was granted contrary to the requirements specified in Article 6 and Article 7, Item 3, of the Law, or during five years from the date of publication of the trademark registration particulars in the Official Gazette, if it was granted contrary to the requirements specified in Article 7, Items 1 and 2, of the Law;
- fully, during the entire term of validity of the legal protection, if it was granted contrary to the requirements specified in Article 2, Item 3, of the Law;
- fully, during the entire term of validity of the legal protection, if it was granted in the name of an agent or representative of the person possessing the exclusive right to this trademark in one of the member-states of the Paris Convention for the Protection of Industrial Property contrary to the requirements specified in this Convention;
- fully or in part, during the entire term of validity of the legal protection, if the right holder's actions connected with the trademark registration are admitted, under the prescribed legal procedure, to be an act of unfair competition.

22. How and when a trademark registration shall be ceased
The legal protection of a trademark is ceased:
- in connection with the expiration of the term of validity of the trademark registration;
- on the basis of a valid judgment on early cessation of the legal protection of a collective mark because of the use of this mark on goods that do not have common qualitative or other characteristics according to Article 21, Item 3, of the Law;
- on the basis of a decision, taken under the prescribed procedure, on early cessation of the legal protection of a trademark due to its non-use according to Article 22, Item 3, of the Law;
- on the basis of a decision of the Russian PTO on early cessation of the legal protection of a trademark in case of liquidation of the right holder represented by a legal entity or cessation of the entrepreneurial activity of the right holder represented by a natural person;
- if the right holder renounces the legal protection of the trademark; and
- on the basis of a decision taken on a request for early termination of legal protection of the trademark, filed by any person with the Chamber of Patent Disputes, in case the registered trademark has become the customary designation for goods of a particular type.

23. Responsibility for an unlawful trademark use
Any person who, in a manner contrary to the provisions of Article 4, Item 2, or Article 40, Item 2, of the Law, uses a trademark or an appellation of origin, or a sign or designation similar to the trademark or appellation of origin, shall incur civil, administrative, criminal liability in accordance with the legislation of the Russian Federation.

24. Application of international treaties
Where an international treaty to which the Russian Federation is a party contains provisions different from those specified in the Law, the provisions of the international treaty shall apply.