1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Russia. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
There is no legal requirement to register a mark, but rights against infringers are only acquired through registration. If a mark is not registered, there is a risk that others may register it and prevent the first user from fully using it.
3. What is registrable?
Any term, word, device, color combination or shape distinctive of the goods or services is registrable.
4. Can a trademark be registered for retail and like services?
Yes. A Russian trademark attorney should be consulted on this issue.
5. How are domain names protected?
Under the new Trademark Law it is prohibited to use another party抯 trademark on the Internet (in particular, in a domain name). Those wanting to create their own site on the Internet must register a domain name with the Russian Research Institute of Public Nets Development (RosNIIROS). When being registered, a name is checked for its uniqueness vis-?vis already-given names. However, it should be pointed out that a loophole is still present in the law: to reserve a domain name, it is sufficient for a cybersquatter simply not to use it in any way or to use it for goods (services) different from the ones covered by respective trademark registration(s).
6. Should a trademark be searched before filing?
The search is not obligatory but recommended to reveal any evident obstacles that may block the captioned mark application. This procedure will save the client time (examination takes about two years) and money for filing an application. If the mark is to be used in many ex-USSR countries, a prefiling search is recommended in each country to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant (non-Russian resident) may file only via a home trademark attorney.
8. What information must be provided before filing?
Before filing, an applicant must provide ten specimens of the mark unless the mark can be represented in plain block capital letters, full details of the applicant (full name and full address), a list of goods/services to be covered in accordance with the Nice Classification (45 classes), and a simple power of attorney appointing a Russian trademark attorney.
9. Is local registration the only option, or are there international alternatives?
A Russian application only has effect in Russia. International registrations are also available (see Guide on the Madrid Agreement and Protocol).
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. It is only necessary to file one application and pay additional class fees. Since January 18, 2002 official fees are in Russian Rubles.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a Russian application, the filing date of the home application can be claimed as the filing date in Russia. An International registration based on a home registration can cover Russia as well (see Guide on the Madrid Agreement and Protocol).
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A registration becomes vulnerable to cancellation for nonuse initiated by a third party if the mark has not been used for three years from the registration date or for the three-year period preceding the filing of a cancellation action.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not alter the substance of the registration, use of the different form would not affect the validity and enforceability of the applicant抯 registration. However, if the difference is significant, a new application may be necessary, because it is not possible to amend a registration substantially. A Russian trademark attorney should be consulted on this issue.
14. Is there any advantage to using a trademark before filing an application?
No. Russia does not recognize prior use. Moreover, to avoid trademark piracy, use of the trademark before filing an application is not recommended.
15. For an application to be valid, are there any particular requirements that must be met?
No. Anyone using or having an intention to use the mark, directly or through licensees, may apply.
16. What information is first published about an application/ registration and when is it published?
The registered trademark (filed in accordance with the national procedure) is published in the Official Trademark Gazette within six months from the date it is entered on the Register. Publication (in the Russian language) includes the following information: representation of the trademark, application number and filing date, priority date, registration number and registration date, validity date, name of the owner (without address), list of goods or services, colors claimed (if any), and disclaimed elements (if any).
17. What kind of examination (if any) will a new application undergo?
The application is examined to determine if the mark complies with local rules as to distinctiveness and deceptiveness. A search is also conducted for prior conflicting marks that can be cited against the application.
18. What response to official objections is required?
The applicant is entitled to reply to the examiner抯 objections within two months from the receipt date of the official action. Extensions of term are possible.
19. How long is the registration process?
In the absence of objections, the registration process takes approximately 10-18 months. Acceleration (within 6 months) is possible for an additional fee.
20. What rights does an application confer?
The application can be cited against a subsequent conflicting application (registration).
21. What is the legal effect of a registration?
The registrant can sue for infringement and cancellation of subsequent registrations.
22. Can an application be opposed or cancelled by third parties?
Russian law contains no provisions governing opposition, but does permit third parties to request cancellation of registered trademarks. An informal opposition is possible only against an application. An official search is not required to proceed with an informal opposition against an application.
23. Can an application or registration be assigned?
Yes. An application and a registration can both be assigned, for all or some of the goods/services covered.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
Yes.
26. Can an application or registration be licensed?
Only registrations may be licensed (applications are not subject to license agreement). A short form of a license agreement with the obligatory items may be recorded. Consult a Russian trademark attorney.
27. Does a license have to be recorded?
Yes.
28. What is the territorial limit of a registration?
The territorial jurisdiction is the Russian Federation. It is possible to use the registration as the basis for an application under the Madrid Agreement, provided the applicant has his/its domicile or a real and effective industrial or commercial establishment in the Russian Federation (see Guide on the Madrid Agreement and Protocol).
29. How long does a registration last?
The term of registration is ten years from the filing date, and is renewable for like periods.
30. What is required to renew a registration?
The original certificate of registration is not obligatory (however it is recommended to submit it). A simply signed power of attorney form (optional). Payment of the renewal fee is required.
31. Is it necessary to indicate a trademark registration on goods or services?
No. Marking is optional.
32. Does the International Classification System apply?
Yes, since January 1, 2002-the 8th edition.
33. Is your national office accessible online?
The official Internet site is www.fips.ru. Information is available both in Russian and English. Applications cannot be filed online. |
