TRADEMARK
PROCEEDINGS FAQs

Who may apply?

Any legal entity or an individual entrepreneur may apply to register a trademark.

What may and may not be protected and registered as a trademark?

Any words, designs, three-dimensional objects, or combinations of words and designs may be registered and protected as trademarks. A trademark may be registered in any color or combination of colors. Designations may not be registered as trademarks, if they do not have a distinguishing capacity or if they consist only of the following elements:

• that have gone into general use as the common name of goods of the specific type;
• that are generally accepted symbols and terms for the specific goods or services;
that are descriptive of the goods or services, including indicating their type, quality, quantity, nature, purpose, or value and also the time, place, or means of their manufacture or sale; or
that represent a configuration of goods that is determined exclusively or mainly by the function of the goods;

These unregistrable elements may be incorporated as non-protected components of a trademark if they do not occupy a dominant position in the trademark. If the designation or symbols have obtained a distinguishable capacity as the result of their use, the designation or symbols may be registered and protected. However, the designation or symbol may not be registered if they only consist of elements that are, as follows:

state or national coats of arms, flags, and other state symbols and marks or other confusingly similar indications;
abbreviated or full names or titles of international and intergovernmental organization, their coats of arms, flags, and other symbols and marks, or confusingly similar indications; and
official verification, guarantee or sample seals, stamps, awards, and other marks of distinction or confusingly similar designations.

Such elements may be included in trademarks as non-protected elements if there is consent from an appropriate authority.

How long does obtaining a trademark on an average take, and how much does it typically cost to obtain a trademark registration?

On an average, if there are no official actions requesting additional documents and/or further clarification, it takes between 12 and 14 months from the filing date, to receive an official issue of a trademark registration certificate.
The typical cost (for the first class of goods) is about 1,900 Euros, plus 100 Euros for each additional class. The cost is inclusive of both attorney and official fees.

What classification system is followed, and how does this system differ from the International Classification System of the goods and services that can be claimed?

The Russian Federation follows the current edition of the Nice International Classification of Goods and Service. Since 2007, the Russian Federation has used the ninth edition of the International Classification System, and therefore, does not differ from it.

Are applications examined for prior art and inconsistency with other trademarks? What is the procedure followed for such instances in the Russian Patent and Trademark Office?

Trademark applications are examined for inconsistency and prior art with already filed trademark applications and registered trademarks. The Russian Patent and Trademark Office (Rospatent) conducts a trademark search in relation to the mark as well as the goods and services for which it has applied to be registered. If the search reveals prior art, an inconsistency, or a divergence, Rospatent issues an office action to the applicant, which cites the relevant mark or marks with which there is an inconsistency. After the office action is issued, the applicant has six months from the issue date of the office action, to respond to the action by providing its own opinion on the citation or providing a letter of consent from the owner of the cited trademark.

Does the use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? If registration is granted without use, is there a time by which use must begin to either maintain the registration or renounce the trademark on the grounds of non-use?

The use of a trademark or service mark does not need to be claimed before a registration is granted; nor does a proof of use need to be filed with Rospatent. The trademark owner has three years from the date of registration to start to use a trademark. If the trademark is not used within three years, the registered trademark may be subject to early termination on grounds of non-use.

Is there an appeal process if the application is denied?

An appeal may be filed by the applicant with the Chamber for Patent Disputes. The following actions by Rospatent may be disputed and appealed:

refusal to accept for consideration a trademark application;
refusal based on the likelihood of confusion with a state registration of a trademark;
refusal of state registration of a trademark; or
recognition of a trademark and its application is withdrawn.

An objection may be filed within three months of the date of receipt of the official decision of refusal.

How long does a registration last and what is required to maintain a registered trademark?

The exclusive right to use a specific trademark (i.e. the registration of a trademark) is valid for 10 years from the date of filing the application. Registration of a trademark may be extended for additional 10-year periods upon the request of the owner, which must be filed during the last year of the trademark's validity.

What are the benefits of registration?

Registration of a trademark provides the applicant with the following rights and possibilities:

to identify infringers or grey market players;
to increase remedies for infringement;
to register a trademark in the Customs Register;
to control unauthorized distribution channels and shipments;
to prevent infringements taking place through imports or exports in or out of Russia;
to extend the market in Russia;
to stop competitors from benefiting from the owner's good reputation;
to identify underpayment of royalties from licensees;
to maximize revenue from the use of the trademark in Russia; or
to create a strong image and reputation of your intellectual property, enabling Russian consumers to enjoy the benefits derived from the quality of your goods or services earned through the good reputation of your products in Russia.

What words or symbols (if any) can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Trademark owners have the right to use the R or 'R' symbol of protection or the verbal indication 'trademark'. However it is not mandatory. Any of these symbols denotes that the designation with which it is used, is a trademark protected in the Russian Federation. The use of such registration symbol with non-registered marks is considered to be misleading to potential customers. In accordance with Russian Federation's criminal law, punishments for misleading use of the symbol of protection range from a fine (up to 600 euro) to imprisonment for up to two months.