Trademark registration in the Russian Federation
Legal protection of the trademark (brand) in the Russian Federation shall be provided for on the basis of its state registration. The relations arising from legal protection and use of trademarks, service marks and appellations of origin shall be regulated by the “Russian Federation Civil Code, Part Four, “The Right to the Trademark and the Right to Service Mark”.
A trademark (brand) may be registered in the name of a legal entity, as well as an individual engaged in business activity.
A trademark (brand) application should be submitted to the Federal Executive Authority on Intellectual Property.
The application shall contain:
- an application for registration of a trademark with the indication of the applicant, as well as its location or residence;
- the claimed mark (8 representations, size 8 x 8 cm ) and its description;
- the list of goods for which the trademark registration is requested grouped in accordance with the International Classification of Goods and Services for the Registration of Marks.
In addition, the application shall be accompanied by:
- a document confirming the payment of the official filing fee in the required amount;
- the Bylaw of the collective mark if the application is to be filed on a collective mark;
- a copy of the Individual unincorporated entrepreneur registration certificate if the trademark is to be registered in the name of an individual engaged in business activity;
- a Power of Attorney from the Applicant in the name of the Patent Attorney signed by the director of the company and sealed if the application is filed via a Patent Attorney.
To avoid any collision with prior registered trademarks or pending applications, it is recommended to carry out preliminary search of identical/similar registrations/applications. Primary identity and similarity check shall be free of charge on the Rospatent base in the Internet (only registered trademarks, the search by verbal element). Advanced search (including the priority pending applications) shall be carried out on the base of payments at the Russian Patent Office.
Trademarks are registered and trademark certificate is issued to the applicant if the submitted for registration marks comply with the requirements of the Russian Federation Civil Code, Part Four, “The Right to the Trademark and the Right to Service Mark” (trademark shall not refer to the type, quality, quantity and characteristics of the goods or services, be a specific term in the area the trademark is claimed for, consist of consonants only, infringe copyright owned by third parties , be confusingly similar to the prior registered or claimed for registration trademarks, etc.).
Period for trademark examination by the Federal Executive Authority on Intellectual Property is not regulated, but the average term is about a year after the date of application submission.
Frequently asked questions on trademarks (brands)
Registered trademark, trademark, protected in the Russian territory without registration by virtue of an international treaty, or mark used as a trademark, but which has no legal protection in Russia, may be recognized as a famous trademark. A necessary condition for the recognition of a trademark as famous shall be the fact that the trademark due to its prolonged and intensive use has become widely known. If the trade mark or prior unregistered mark is recognized as famous trademark at an earlier date than the priority date of identical or similar trademark registration in the name of other person, that fact may serve as the basis to nullify the said registration.
Examples of famous trademarks: LUKOIL oils, catalogues of ROSPECHAT, MIG aircrafts, PENTIUM microprocessors, etc.
The concept of a trademark is legally defined by the “Russian Federation Civil Code, Part Four, “The Right to the Trademark and the Right to Service Mark”: A trademark is a mark that serves to individualize goods, works or services (hereinafter – the commodities) of legal entities or individuals. A trademark may be verbal, visual, combined, three-dimensional, sound, etc. Trademark registration legislatively protects the right to use it.
Trade name is a broader concept than the trade mark and this term is not legislatively defined. Typically, the terms “trade name”, “trademark”, “brand name” are used in the absence of a legal component of the question. The actual content, which is laid in the use of these terms, may be described as follows: “trademark + all that it is known about it and what is expected from it”.
“Brand” – another word often used in connection with the mark that individualizes goods. In foreign sources term “Brand” is used primarily with the definition of “international brand”, “national brand”. In respect of unknown or little-known marks the term “no brand” is commonly used. Thus, it is appropriate to use the term “brand” in relation to very strong and well-known trademarks.
Of course, there is some subjectivity of the experts in determining the similarity of marks filed for trademarks registration. The reason for this is that the rules governing the assessment of similarity rather generally specify the evaluation criteria, for example, sound (phonetic), graphic (visual) and sense (semantic) similarity is taken into account concerning verbal marks.
Sound similarity is determined on the basis of the following indications (these indications may be taken into account both individually and in various combinations):
- Presence of similar and coincident sounds in a comparable marks;
- Proximity of the sounds that make up the mark;
- Location of similar sounds and sound combinations to each other;
- Presence of coincident syllables and their location;
- Number of syllables in the mark;
- Location of coincident sound combinations in the marks;
- Proximity of vowels;
- Proximity of the consonants;
- Nature of coincident parts of marks;
- Occurrence of one mark to another;
- Stress.
Graphic similarity is determined on the basis of the following indications:
- Overall visual impression;
- Type of font;
- A graphic way of writing with view of the nature of writing letters (for example, printed or written, uppercase or lowercase);
- The location of the letters to each other;
- The alphabet, letters of which are used to write a word;
- Color or color combination.
The semantic similarity is determined on the basis of the following indications:
- Similarity of laid in the mark concepts, ideas; in particular the coincidence of mark meaning in different languages;
- Coincidence one of the mark element, which a logical stress falls on and which has an independent meaning;
- Opposite of laid in the mark concepts and ideas.
