Trademarks and Service Marks

Trademarks and service marks (further trademarks) occupy a special place among industrial property subject matter. In the first place, the number of applications for the registration of trademarks is constantly on the rise in Russia. In the second place, the use of trademarks is more easily carried out, and therefore, the infringements of the rights in a trademark are more widespread than the infringement of patents.

Trademarks are the most dynamic object of protection. The first decision taken by the Supreme Court of Russia in respect of industrial property subject matter relates in particular to a trademark. With regard to the number of disputes being given consideration by courts, trademarks occupy first place among other objects of intellectual property.

Legal protection of a trademark is provided on the basis of official registration. Verbal denominations, figurative, three-dimensional, audio, light and other signs or combination thereof may be registered as trademarks. A trademark may be made in any color or combination of colors.

Trademarks may not be registered that consist solely of signs:

that are commonly used as designations of goods of a particular type;
that are symbols or terms in common use;
that indicate the type, quality, quantity, properties, purpose, value of the goods, or the place and time of their manufacture or sale;
that constitute armorial bearings, flags or emblems of State, official designations of States, emblems, etc.;
that are inaccurate or liable to mislead a consumer as to the product or its producer;
that are contrary to the public interest, humanitarian principles or morality.

The Patent Office plans to supplement the list of absolute grounds for refusing registration of trademarks with designations which are the shape of a product that is determined mainly by the nature or purpose of the product.

A conditional basis for refusing registration is the presence of an earlier right by the owner of another trademark, firm name, industrial design or other objects.

Infringement of the rights of a trademark owner in accordance with the Law is deemed to be the unsanctioned production, use, import, offering for sale, sale, other introduction into marketing or storage therefore of a trademark or product designated by that mark, or a sign confusingly similar thereto in respect of a similar type of goods.

Registration of a trademark is valid for ten years, beginning from the filing date of the application in the Patent Office. The term of its validity may be renewed for each successive ten year period.

The validity of the trademark registration may be prematurely terminated, either entirely or in part, on the basis of a decision of the Higher Patent chamber, handed down at the request of any third party, where the trademark has not been used continuously for five years from the date of registration or for five years prior to the date of filing the aforesaid request.

When the decision is being taken on whether or not to terminate the validity of the trademark registration prematurely for lack of use, evidence submitted by the owner of the trademark to show that the lack of use was due to factors beyond his control may be taken into account.

Use of a trademark by a licensee is sufficient to avoid termination of registration. Furthermore, use may also be deemed to be the use of the trademark in advertisements, in printed matter, on signs, during the demonstration of exhibits at exhibitions and fairs held in the Russian Federation, where there are justifiable motives for not using the trademark on goods and their containers.

In the draft of amendments to be made in the Law on trademarks, it is planned to include an additional section dedicated to the legal protection of trademarks in accordance with the Madrid Agreement and the Record of Proceedings thereto, to which Russia is a party.

Protection of the right in a trademark against the unlawful use thereof, in addition to the requirements relating to termination of an infringement and compensation for damages sustained, is also carried out by:

publication of a judicial decision for the purpose of restoration of the business reputation of the injured party;
removal from the product or the packaging thereof of the illegally used trademark or a sign confusingly similar thereto, or destruction of existing reproductions of the trademark or of the sign confusingly similar to the trademark.

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