Why is registration necessary?
In order that a right holder could effectively protect a designation that they use to individualize their goods, work or services, the designation must be registered as a trademark or service mark (hereinafter — trademark) with the Federal Service for Intellectual Property (the Rospatent).
The absence of state registration leads to the following difficulties:
- If the designation is not protected as a trademark, in case of its illegal use, it is necessary to collect evidence confirming that the right holder has an exclusive right to the designation;
- Other persons can register this designation in their own name and make claims to the right holder with reference to the illegal use of their trademark. As a result, the right holder will have to prove the designation usage legality.
In Russia, it is possible to protect a trademark within the following procedures:
- international registration with the World Intellectual Property Organization (WIPO) with a designation to the territory of Russia under the Madrid System. Application of this procedure is possible since Russia is a party to the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, which are collectively referred to as the Madrid System;
- national registration of marks (protection of designations exclusively in the Russian Federation).
International trademarks with a designation to Russia and national Russian trademarks are equally protected in Russia.
According to Paragraph 2 of Article 1247 of the Civil Code of the Russian Federation, foreign legal entities and citizens, permanently residing outside the territory of the Russian Federation, can apply to Rospatent only if they are represented by Russian Trademark and Patent Attorneys registered by the Rospatent.
Registration stages
National registration has several stages. The applicant needs to:
1. Prepare and submit to the Rospatent documents required to register the designation. A trademark application must include:
- the declared designation, which is inserted into the application form and additionally attached on a separate sheet;
- a list of goods and/or services for which the state registration is requested and which are grouped by classes of the International Classification of Goods and Services for the Purposes of the Registration of Marks under the Nice Agreement (the Nice Classification);
- other documents.
The full list of documents, as well as document requirements and rules for filing in the forms, can be found on the Rospatent's website: https://rospatent.gov.ru/.
2. File the trademark application with the Rospatent and receive its number. The application number is individual for each designation filed.
3. Pay state fees: a) the fee for registering a trademark application and making a decision based on the results of a formal examination; and b) the fee for conducting an examination of the declared designation.
These fees must be paid within two months from the date of trademark application filing. These fees can be paid in advance, i.e. before trademark application filing. However, it is better to pay the fees taking into consideration the application number, which makes it easier to identify the payment.
4. Pay fees: a) for the state registration of the trademark and b) the issuance of a trademark certificate if the Rospatent makes the decision to grant legal protection to the designation applied for registration.
After the applied designation examination, the Rospatent makes a decision:
- to grant state protection to the designation applied;
- to refuse state protection granting to the designation applied.
If the Rospatent makes the decision to refuse state protection granting, in some cases, it is still possible to obtain registration of the claimed designation by responding to the corresponding notification from the Rospatent. The response to Rospatent's notifications is not subject to additional state fees.
5. Obtain a trademark certificate, which must be issued by the Rospatent within two months from the date of the payment of the state fee for trademark state registration and of the state fee for the trademark certificate issuance.
Registration time frame
The above-described registration procedure is standard and takes on average from 12 to 18 months. There is also an accelerated registration procedure, which takes about 2-3 months and is significantly more expensive.
The period of validity of the exclusive right is 10 years starting from the priority date of the trademark. The priority date of the trademark is the date from which the right holder can protect their exclusive rights to the trademark if it has state registration.
As a general rule, the priority date is counted from the date of trademark application filing. However, there are opportunities to claim convention or exhibition priorities.
Claiming convention priority is possible if the foreign right holder registers their designation in the country of origin of the products and the trademark application in the Russian Federation is filed no later than six months from the date of submission of the application in the country of origin of the products.
Claiming exhibition priority is possible if the right holder starts displaying the products marked with the designation which is declared for registration at exhibitions or fairs and the trademark application is filed no later than six months from the date on which the designation was displayed at an officially recognised exhibition.
Prolongation of the trademark validity is possible for 10 years and it can be done an unlimited number of times.
Registration benefits
After the application is filed with Rospatent, the right holder will be protected from copying: no one else can register an identical or confusingly similar trademark.
Once the right holder receives the trademark certificate, they have an exclusive right to the trademark. Any person who uses the trademark without the permission of the right holder violates their exclusive rights.
The following liability is provided for illegal use of a trademark:
- administrative (the Code of Administrative Offenses of the Russian Federation, Article 14.10. Illegal use of means of individualization of goods (work, services));
- criminal (the Criminal Code of the Russian Federation, Article 180. Illegal use of means of individualization of goods (work, services));
- civil law (including additional methods of protection provided for by Article 1515 of the Civil Code of the Russian Federation).
The choice of a strategy for protecting the exclusive rights of right holders depends on a particular situation and an offence itself. In many cases, a trademark is an effective tool to fight against fraudsters who copy the right holder's brand.
If you are a right holder who is interested in registering your trademark with the Rospatent, we recommend contacting professionals. Our company uses an individual approach to each right holder and constantly informs them about the status of all stages of registration. Our Trademark Attorney will deal with all the difficulties that may arise during the registration process and register your trademark with the Rospatent. With us, your trademark will be reliably protected!