Protection of Trademarks in Russia
- Russia
- 01/01/2000
As a general rule only registered trademarks enjoy legal protection in Russia. Under the 1992 RF Law No 3520-1 “On Trademarks, Service Marks and Appellations of Origin of Goods”, trademarks can be registered with the Russian State patent authority (Rospatent) or be protected under international treaties ratified by Russia. Russia is a party to the Paris Convention for the Protection of Industrial Property and the Madrid Agreement Concerning the International Registration of Marks.
Practice shows that apart from “traditional” infringements of trademark rights (use of a registered trademark without consent, etc.) certain specific forms of trademark abuse have taken shape in Russia over the last few years.
Trademarks “squatting”
A number of companies are engaged in what is sometimes referred to as “trademark squatting”: whereby somebody registers an established brand in its own name taking advantage of the fact that the trademark is not protected in Russia. Then the “squatter” approaches the trademark “owner” and threatens legal action unless a trademark license or assignment is signed. The real brand owner could theoretically plead that its trademark is well-known in Russia and thus implicitly protected, albeit without registration. Under the Paris Convention a trademark must be officially recognized as well-known in the country where it is used. In Russia such recognition falls within the competence of the High Patent Chamber of Rospatent. However, up to now there exists no procedure which would allow to obtain such recognition. While several requests are pending with the High Patent Chamber no decisions have been rendered. The cases are suspended on the ground that the evidence in support of the fact that the trademark is well-known in Russia is lacking. For the time being not a single trademark or service mark has thus been recognized as being well-known in Russia.
The fight against a “squatter” is difficult. It is possible to apply to the State authorities which deal with unfair competition (Ministry of Anti-monopoly Policy), but Russian law on unfair competition was changed in 1995 and the scope of activities considered as unfair competition narrowed. Moreover the Ministry of Anti-monopoly Policy has a lot of discretion in such matters.
A solution might be found in court. A recent decision of the Moscow City Court of Arbitration is of some interest. The court considered “squatting” to be “an abuse of a right” and held that the registered trademark owner (“the squatter”) cannot forbid the foreign company (whose trademark had been “squatted”) from using this trademark. This decision obviously does not assist the foreign company in stopping the abusive use of its trademark by the “squatter” but merely makes it possible for the former to sell its own brand products without fearing legal action.
In our opinion it is therefore extremely important for foreign companies to make sure their trademarks are properly registered in Russia. This should be done before the company enters the market with its products. The registration is not expensive (for foreign applicants it costs USD 1’200 – 1’500 including both State duties and professional fees) and not very time-consuming (one year and a half with the possibility of accelerating the procedure and completing it within 6-8 months). This is a good investment as it helps to avoid future problems which may entail years of litigation and cause substantial expense.
Abusive registration of registered trademarks in other classes
A different form of trademark “squatting” consists in the registering of pre-registered trademarks which are popular in Russia in other classes of the International Classification of Goods and Services. This “secondary” registration is usually made in the “auxiliary” classes (16, 35, 39, 42), but not only: a small company from Saint-Petersburg recently registered in its name the trademark “Windows” for food-stuffs, drinks and tobacco and began selling a beer “Windows’99”. Although according to the Law “On Trademarks…” identical or confusingly similar trademarks may coexist if registered in different classes, in many cases such registration is abusive as the “squatter” saves the investment necessary to promote its brand and simply misleads customers.
It is obviously difficult to obtain protection against these forms of “squatting” but care should be taken to register trademarks properly (words, design, classes, etc.) so as to obtain the maximum protection possible under the law within what is commercially needed by the trademark owner. Another possibility is to file an objection against the “secondary” registration with the Chamber of Appeal of Rospatent or to go to court. It should, however, be considered that the practice of applying trademark law is not yet stable in Russia.
Registration of a third person’s trade name as a trademark
According to the Law “On Trademarks…” a company cannot register a trademark identical to the trade name (or part of it) of another company if this trade name is known in Russia and if the company registered with this trade name existed before the other company applied for registration of its trademark. This provision is difficult to implement. First, in the absence of a unified system of registration of legal entities (Trade Register), it is impossible to check whether there exist trade names identical to the mark filed for registration. Secondly, the term “trade name known on the territory of the Russian Federation” is vague and lacks precision.
In practice there are many cases where the owner of a trademark and a company with the identical trade name purposely or accidentally collide on the market. Normally the one whose rights are “older” wins. If a trade name is known in Russia and was registered earlier than a trademark the registration of the trademark can be contested in the Chamber of Appeal of Rospatent. If a trademark has the priority its owner may try to cancel the competing trade name in court.
It is worth mentioning that though it is impossible to check trade names at the moment of trademark registration the reverse situation is quite possible: a company may check whether a trademark identical or similar to its trade name has been registered and so avoid future collisions.
