Trademark registration in the Russian Federation
Russian trademark registrations increased by 46% from 2004 to 2009, the largest increase of any major trademark-protecting country, including Brazil, China, France, Germany, Great Britain, and the United States, which increased by 40%, 3%, 23%, 5%, 5%, and 6%, respectively. These numbers are testament to the growing awareness of Russia as a viable market and the country’s emergence as a capital-focused, industrialized nation.
According to the April 2010 World Economic Outlook from the International Monetary Fund (IMF), the emerging Russian economy is expected to grow by 4% this year, which is higher than the expected growth in the U.S., Germany and Japan. Such growth underscores the need for IP professionals and business strategists to pay close attention to Russia as a jurisdiction in which to conduct business and protect trademarks.
Perhaps the most fundamental aspect of Russian trademark legislation is that trademark rights are acquired through registration with Rospatent or on the strength of international agreements with the Russian Federation. As a general rule, the first person to register a mark has overriding rights.
This first-to-register system means that registration is absolutely essential for the protection of trademarks. There are a few exceptional cases where claims can be made with respect to well-known trademarks that have not been registered. However, even in such cases, the legal concept of being “well known” is established through a quasi-registration system. Here, a “wellknown” petition is filed with the Russian PTO (Rospatent) which, if accepted, will result in the issue of a well-known trademark certificate by Rospatent.
Trademarks should be registered as they are used or are intended to be used in the Russian Federation. One of the first decisions to make is whether to use Cyrillic and/or Latin characters. If a company intends to use the Cyrillic equivalent of its trademark, it is strongly recommended that it be registered. Even if the company does not plan to use a Cyrillic version, it may still be a good idea to file an application for the mark’s Cyrillic equivalent. Doing so can expand the scope of protection, as the third-party use of a similar mark in Cyrillic may tip the balance in favor of a lack-of-similarity finding.
Trademark and service mark protection in the Russian Federation applies for a period of 10 years from the filing date and may be renewed during its last year of validity for subsequent 10-year periods.
“Thomson CompuMark” 06.2010