PETOŠEVIĆ

June 2020

How to Register a Trademark in Russia – a Quick Guide

Although Russia has gone through numerous political crises throughout its history, it still remains a desired market for many. Indeed, post-Soviet times have forged several generations of avid consumers who make the Russian market appear as deep and fertile as a Siberian oil well. This phenomenon makes Russia attractive to many producers in a vast variety of businesses.

So, what does it take to register a trademark in Russia?

It takes time. However, it must be admitted that the Russian Intellectual Property Office has improved in this regard during the last several years and that now applicants do not have to wait for more than a year for the examination to complete - most applications are processed within six or seven months from their filing dates. Formal examination has become rather quick and may result in an official acceptance within a month, given that all the fees have been paid. Substantive examination is less predictable in terms of time frames, but improvements have been noticed recently.

It takes money. That said, the official fees in Russia are relatively low compared to neighboring countries of the former Soviet Union. A single class application costs less than EUR 500 (USD 565) from filing to registration, which is inexpensive indeed.

It also takes patience and understanding of how the examination process goes in Russia, which is where we would like to slow down for a little more detail.

The Russian IPO is a “full-service” office, which means that the focus is not only on absolute grounds for refusal; a search of prior registered marks is conducted and conflicting marks can be cited.

The IPO does publish new applications, usually within a week from the filing date, but for information purposes only and not for opposition. This however does not mean that opposing a new trademark application is completely impossible. There is an option to address the examiner in charge in a letter informing them of a possible conflict and the subsequent invalidation action, and asking them to consider rejecting the application. These letters are called informal observations, and even though examiners are not bound to act on them, they often serve the purpose of impeding undesired marks.

The first thing that any business or counsel has to bear in mind while considering trademark protection in Russia is the specificity of the common Russian consumer. In general, Russians do not speak English or other foreign languages. The overall level of English is ranked in the 48^th in the world, right behind Guatemala and Belarus, and it ranks in the 28^th place among 33 countries in Europe. This means that in most cases applicants may need to protect the Russian equivalent of the trademark as well. Deciding what exactly this equivalent should be can be rather tricky. Prima facie, a translation would work, but what to do with marks that cannot be translated? And why protect translations if semantically they represent the same word? This requires a brief explanation.

There are obvious cases when the basic mark is so simple and comprehensive that it is not necessary to protect its Russian equivalent – certain words are international due to their origin (be it Latin, ancient Greek, or else) or extensive use. In such cases, the basic mark would suffice and provide the brand with the full scope of protection.

When will a simple translation not work or not be obvious? First of all, there are many polysemic words that have multiple meanings and that therefore can be translated in multiple ways. It is convenient if the correct meaning can be inferred from the trademark’s context, but often it cannot. It is even more complicated with complex words and personal names. This is why some applicants chose to protect as many Russian versions of the trademark as they can.

There is no one solution, and the approach to this problem varies from case to case. However, in general, the applicants may want to choose equivalents that cover the Russian phonetics and at the same time steer clear of any unnecessary connotations. Your Russian attorneys should know how to deal with this issue, and it should be actually considered when conducting trademark searches.

Getting back to the examination – the western world may view the Russian IPO as rather old-fashioned because of its trademark examination process, and this is not surprising since most of the world tends to let the public and the market decide which trademarks should exist and which should not. The rigorous evaluation of all the factors and grounds for refusal often creates the impression that the Russian IPO was designed to reject rather than to accept. The grounds for refusal can be:

• Basic lack of distinctiveness;
• Descriptiveness;
• Deceptiveness;
• Similarity to official and/or recognized names, images, signs, emblems and other symbols;
• Contradiction to accepted moral principles;
• Contradiction to public interest; and
• Relative grounds related to third-party rights.

The first four refusal grounds are common in every modern trademark law. It is just important to note that abbreviations are often refused, especially if they consist of consonants only – in such cases, the acquired distinctiveness will most likely have to be proven.

What is interesting is the IPO’s approach to morality and public interest. Most rejections on this basis are related to marks for alcoholic beverages. Although Russia is the second largest alcohol market in the world, the Russian IPO seems to be very critical when examining trademarks intended for alcoholic drinks – a simple star device mark was once refused for being contrary to public interest because of its possible association with Kremlin stars, installed in the 1930s on five towers of the Moscow Kremlin. The examiner even mentioned the Kremlin being on the UNESCO World Heritage List to emphasize that a star device mark would be contrary to public interest and would require a special permission from the Kremlin administration.

Contradiction to public interest is also often used to justify the refusal of applications for trademarks intended for cryptocurrencies. Although the status of cryptocurrencies in Russia is still uncertain, they seem to be outlawed by the Russian IPO – all recent applications for such trademarks have been refused.

Relative grounds for refusal include objections concerning third-party rights. Some of these third party rights are within the scope of the examination and some go beyond. For example, it is unlikely for an examiner to cite a trade name or company name as grounds for refusal, even though they are within the scope of relative grounds for refusal according to the law, unless the examiner is notified by the holder of such rights. Also, the citation of a company name as an obstacle to a similar trademark registration may be overcome if the examiner does not provide the full scope of relevant arguments, including the company’s registration data and additional information about the business.

Russian legislation also provides for a special status of a well-known trademark. Trademarks are recognized as well known through a special procedure before the IPO’s Chamber of Patent Disputes (CPD). We know it is a somewhat misleading name, but this is how it is commonly referred to. Although Russian trademark legislation allows for broader protection of well-known trademarks (not only in respect of the goods for which they are well known), during the examination they will most likely be cited only in respect of such goods.

Any examiner’s decision may be appealed before the CPD, but the CPD rarely overturns examiner’s decisions. Only a few appeals were successful in 2020, while dozens have been considered.

It is also possible to challenge a registered trademark – Russian law allows for an invalidation action on relative grounds within the first five years from the trademark’s publication date and on absolute grounds at any time throughout its validity term. Invalidation actions based on relative and absolute grounds can be lodged with the CPD. A trademark can also be invalidated on unfair competition grounds – such cases can be brought before the specialized IP Court or the Federal Antimonopoly Service at any time throughout the trademark’s validity term.

The CPD also tends to keep the examiners’ decisions in force in case of invalidation actions, so it may be more effective to tackle conflicting marks with informal observations at the examination stage. However, this current tendency of the CPD has evolved over time and it may be expected to change in the future.

Finally, there is a three-year grace period for the trademark owner to begin using the trademark in Russia. Before bringing a non-use action to court, there is a mandatory two-month cooling-off period that must be initiated by the potential plaintiff by sending a warning pre-trial letter to the trademark owner. The plaintiff also has to qualify as an interested party in respect of certain goods or services, and this would allow them to cancel the challenged mark only in respect of those goods and/or services, as well as similar ones, while the rest of the trademark’s scope of protection may remain valid.

By: Pavel Seleznev

For more information, please contact Pavel Seleznev at our Russia office.

Poland Introduces Specialized IP Courts, New Types of Court Actions

A new Act amending the Civil Procedure Code and other relevant acts entered into force in Poland on July 1, 2020 introducing specialized IP courts as well as new types of IP-related court actions.

Specialized IP Courts

Specialized IP courts in Poland will have competence over all IP-related matters. According to the Act, the IP subject matter is broadly defined covering not only industrial property rights and copyright and related rights, but also rights based on unfair competition regulations as well as personal rights, in particular if breached through advertising and other commercial activities, including research and inventive activities.

The Act introduces four first instance courts with departments specialized in IP matters, in the cities of Warsaw, Gdansk, Poznan, and Lublin, and two appellate courts, in Warsaw and Poznan. The specialized IP court in Warsaw will be the only court dealing with complex cases and certain IP matters, such as those concerning computer software, patents and utility models, topographies of integrated circuits, plant varieties and trade secrets.

The amendments aim to improve the enforcement of IP rights and ensure uniformity of the case law and legal certainty, which were subject to criticism in the past.

New Types of Actions

The new Act also introduces the possibility to file certain IP-related counterclaims before the court, which were until now only available before the Polish Intellectual Property Office. This should decrease the costs and the length of the respective proceedings. Namely, in infringement proceedings based on a Polish trademark or design right, the defendant will be able to counterclaim invalidity or revocation actions before the court, hence avoiding the need to file a separate action before the IPO.

Furthermore, filing a claim to establish that a certain action does not infringe an IP right will be available for plaintiffs who have a valid legal interest for filing such claims, which should improve legal certainty and decrease the number of fraudulent actions by the alleged IP owners.

By: Ivan Kos

For more information, please contact Ivan Kos at our Croatia office.

Ukraine to Introduce Research Exemption to Patent Law

On July 3, 2020, the Ukrainian President signed a law introducing amendments to several laws which aim to remove excessive bureaucracy and corrupt practices from the healthcare system. The law, which was adopted by the Ukrainian Parliament on June 2, 2020, amends, inter alia, the Law on Protection of Rights to Inventions and Utility Models by introducing the research exemption, according to which the use of patented inventions for performing research and tests for preparing regulatory approval does not constitute patent infringement.

This exemption is especially relevant to pharmaceutical companies, because it will allow generic manufacturers to prepare generic drugs in advance of the patent expiration, which is not currently possible under the Ukrainian legislation. It is expected that the introduction of the research exemption will reduce the monopoly power resulting from the patents granted to pharmaceutical companies for novel medicines and that it will enable smaller, local manufacturers to pursue their pharmaceutical development activities. Ukrainian pharmaceutical companies have tried to do this under the current legislation, but it has resulted in costly court hearings.

It is expected that the law will enter into force by early 2021. Once in force, it remains to be seen how the amendments introduced by the law will be executed in practice.

Prepared by: Valentyna Martynenko and Olga Kudoyar

For more information, please contact ukraine@petosevic.com.

Russian GI Law to Enter into Force Soon

The Russian law introducing geographical indications, which was adopted on July 26, 2019, enters into force on July 27, 2020, except for the provision regarding liability for illegal use of a GI symbol alongside an unregistered GI, which will come into effect on July 27, 2024.

It is already possible to register geographically related signs and names in Russia as appellations of origin. Protection for AOs in Russia will continue to exist, but introducing GI protection is expected to make obtaining geographically related signs simpler and faster for both foreign and domestic producers.

A foreign applicant can successfully obtain GI protection in Russia if the GI is protected in the applicant’s own country and if it meets Russian legislative requirements in this field.

A registered GI will be valid for 10 years from the filing date and can be extended for an unlimited number of additional 10-year periods provided that, upon renewal, Russian rights holders submit a document confirming that they still manufacture the product, or, in the case of foreign rights holders, that they still have GI protection in their own country.

By: Tatyana Kulikova and Julia Zhevid

For more information, please contact Tatyana Kulikova at our Russia office.

More Patent Validations and Utility Model Applications in Hungary in 2019

The Hungarian Intellectual Property Office (HIPO) recently published its annual report for 2019, which shows an increase in patent validations and national utility model applications, a stable number of national trademark applications, and a small decline in national design applications.

Namely, there was an 11% increase in the number of valid patents (from 28,677 in 2018 to 31,958 in 2019). This increase is mostly due to validated European patents, the number of which increased by 14% (from 26,092 in 2018 to nearly 30,000 in 2019).

35% of all valid patents are concentrated in the pharmaceutical sector. This is followed by the sectors of ‘other equipment’ (11%) and ‘instruments and appliances’ (nearly 9%).

The number of valid national trademarks remained stable (54,371 in 2019), while the number of international trademarks (under the Madrid System) in Hungary slightly declined, from over 87,000 in 2018 to 83,634 in 2019. In 2019, the EUIPO received 160,000 applications for European Union trademarks, valid in 28 EU countries, while the number of EU trademark registrations in 2019 was 140,000; both numbers represent an increase of over 5% in comparison to 2018.

The number of national utility model applications was 255 in 2019, representing a 13% increase over the previous year, while the number of registered designs decreased by 5% to 3,396.

Prepared by: Erika Farkas

For more information, please contact hungary@petosevic.com.

Kazakhstan Launches App for Checking Alcoholic Drinks’ Authenticity

The Kazakh National Information Technologies Agency (NITEC) recently launched a mobile application named e-Sapa, which can be used to verify the authenticity of all alcoholic beverages with excise stamps in Kazakhstan. The application was developed in collaboration with the Kazakh State Revenue Committee as part of the fight against the sale of illegal and counterfeit alcoholic drinks.

The e-Sapa app allows users to scan the barcode on the product’s control mark which indicates information about the product and its manufacturer. From its launch in December 2019 until June 2020, the e-Sapa app was used to check the authenticity of more than 5,000 alcoholic drinks in Kazakhstan.

The app is available for download in the App Store and on Google Play.

Prepared by: Ainagul Zhumagulova

For more information, please contact kazakhstan@petosevic.com.

Kazakh Officials Seize Fake Sneakers

Kazakh Economic Investigation Department (EID) officials in the Almaty region in southeastern Kazakhstan recently seized nearly 800 pairs of sneakers infringing the Adidas®, Nike® and Reebok® trademarks.

The sneakers, which were discovered during the inspection of a warehouse, were manufactured by a Kazakh citizen. They are estimated to be worth approximately EUR 40,000 (USD 45,000).

Prepared by: Dayana Auezova

For more information, please contact kazakhstan@petosevic.com.

Mayya Pak Selected as a WIPR Influential Women in IP

PETOŠEVIĆ Russia Associate Mayya Pak was recently selected as a Trailblazer in WIPR Influential Women in IP, World Intellectual Property Review’s second annual publication focusing on outstanding women in the IP industry.

As part of its survey on diversity and inclusion in IP, WIPR asked industry professionals to nominate influential female lawyers practicing in-house and in private practice, and women working in IP institutions. The publication includes a selection of 100 Influential Women in IP, including 20 Trailblazers – lawyers with ten or fewer years of experience in the IP profession who have already made significant contributions to the IP industry.

For more information and to read testimonials about PETOŠEVIĆ and our team, please visit our Rankings page.

IAM Patent 1000 Recognizes Three PETOŠEVIĆ Offices and Practitioners for Excellent Patent Work

The IAM Patent 1000 – The World’s Leading Patent Professionals 2020 rankings were recently published, recognizing PETOŠEVIĆ offices and practitioners in three jurisdictions.

The IAM Patent 1000 is published by IAM, a leading IP business information provider and the sister publication of the World Trademark Review. Banding includes Gold, Silver, and Bronze bands or just a Recommendation without a band in some countries.

PETOŠEVIĆ was ranked as follows:

Romania – Recommended for Patent Prosecution
Russia – Bronze band

Ukraine – Silver band

The guide shined a spotlight on three PETOŠEVIĆ practitioners for excellent patent work:

Dina Petošević, Regional Manager – RSR (Russian-Speaking Region)
Aura Campeanu, Head of Office, PETOŠEVIĆ Romania
Ivan Nagornykh, Patent Attorney, PETOŠEVIĆ Russia

For more information and to read testimonials about PETOŠEVIĆ and our practitioners, please visit our Awards page.