RUSSIA FEDERATION TRADE MARK APPLICATIONS
Trade Marks and rights of Trade Mark owners are governed under Part IV of the Civil Code of the Russian Federation. Russian law provides an open list designations that can be registered as trade marks, these include, words, images, sounds, three-dimensional shapes, animations, holograms, position marks, single colours or colours, and smells. Not withstanding, the wide range above, there are designations that cannot be registered in the Russian Federation, such as commonly used names of particular goods, commonly accepted symbols and terms, or appellations of origin.
The Russian Federation is also a signatory to international treaties regulating trade mark registration and protection issues such as :-
The Paris Convention for the Protection of Industrial Property (since July 1, 1965)
The Trademark Law Treaty (since May 11, 1998)
The Madrid Agreement Concerning the International Registration of Marks (since July 1, 1976) and the Protocol Relating to the Madrid Agreement (since June 10, 1997)
The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (since July 26, 1971)
The Agreement on Trade-Related Aspects of Intellectual Property Rights (since August 22, 2012, when Russia joined the World Trade Organisation)
As such, prospective trade mark applicants are able to utilize the priority claims or designate the Russian Federation as part of their international registration.
1. Pre-Registration Requirement
There are no strict pre-registrations requirements imposed by Russian law before the commencement of a trade mark application, but the Applicant will need to ensure that the prospective trade mark corresponds with the requirements of Russian law
Due to the strict and specific requirements of designations that cannot be registered, a prior trade mark search is highly recommended to determine the availability and registerability of the prospective trade mark.
2. Professional Representation
Foreign applicants must be represented by a Russian Trade Mark Attorney that is registered with the Federal Service for Intellectual Property (Rospatent). As such, it is necessary for an entity residing outside of Russia to appoint a Russian Trade Mark Attorney to represent it in all trade mark matters.
The most common manner is to execute a power of attorney, appointing the selected Russian Trade Mark Attorney, and submitting the power of attorney at the time of the trade mark application. Neither notarization nor legalisation of the power of attorney is required.
The whole process of registering a trade mark in the Russian Federation will usually take about fourteen to fifteen months, this will include a formal examination within one month of the application, a substantive examination period of twelve months, and the final registration and publication stages one month thereafter.
Notwithstanding, in the event that there are obstacles raised by the Rospatent or third parties during the registration process, the total registration process can possibly be increased to take between eighteen to twenty-four months.
4. Validity Of A Registered Trade Mark
A registered trade mark in the Russian Federation is valid for ten years from the date of the trade mark application.
Thereafter, the registered trade mark is able to be renewed for subsequent ten year periods, through an application of a renewal petition together with the payment of the Rospatent official fee.
5. Eurasian Trade Mark Framework
The Russian Federation signed the Treaty on the Eurasian Economic Union (“EAEU”) on May 29, 2014, together with Belarus and Kazakhstan. The EAEU was subsequently ratified by the parliaments of these countries in October the same year, and came into force on January 1, 2015. Armenia joined the EAEU in January 2, 2015, followed by Krygyzstan in August 12, 2015.
Chapter 23 of the Treaty contains provisions on harmonisation of national legislation in the area of IP protection and cooperation between the parties for the purposes of protection of IP rights, including the establishment of effective customs measures and the unitary customs register of IP rights. Moreover, the members of the EAEU agree on introducing a system of trademarks and service marks of the EAEU, as well as of appellations of origin of the EAEU.
The EAEU is in the final consultation stages of introducing a Eurasian Trade Mark System, similar to what is seen at the European Union Intellectual Property Office. The agreement will introduce a concept of a Common Economic Space (“CES”) trade mark, and this will give any prospective trade mark holders to obtain rights in the territory of EAEU member states by filing a single application. Furthermore, CES trade mark register will co-exist alongside national registers, which will continue as before, and brand owners will have the option of applying to register either, or both, CES trademarks and national trademarks.