The registered trademark is a key asset for the businesses considering Russia even as a potential market and is a must for those planning to enter the Russian market in the nearest future.
Registered trademark in Russia is not only a tool to protect your genuine goods from counterfeiting and imitation, but also a guarantee of smooth importation and circulation of your goods within Russia, a possibility of TV advertisement, and freedom to choose a reliable distributor and to enter into favorable distribution and cooperation agreements.
Failure to register a trademark in Russia in time led quite many foreign businesses to face their trademark registered by their potential distributors, former employees of their business partners, or even by counterfeiters. Invalidation of such trademarks registered in bad faith is long and costly and creates a serious obstacle to the circulation of your genuine goods on the Russian market.
Russia has a first-to-file trademark registration system, Conventional priority and exhibition priority can be claimed.
The original power of attorney is not necessary to be filed with the Russian Trademark Office along with the trademark application, but it may be required at later stages, therefore we recommend our clients to keep it signed in their files to be sent to us on demand. A power of attorney in the name of Russian trademark attorneys should be simply signed and sealed (if applicable). Kindly note that no notarization or legalization is required. The official filing fee can be delayed, electronic filing helps us to save costs for our clients since official fees are discounted to 30% for e-filings.
To file a trademark application in Russia we need:
- a trademark image in good resolution (JPG or PDF are preferable);
- a list of goods and services of ICGS;
- applicant’s details (full name and address, including zip code).
Due to the current legislation, a Russian trademark application can be filed in the name of a legal entity or in the name of an individual entrepreneur, the status of later is defined due to the laws of the applicant’s residence. The Russian trademark application cannot be filed by several persons or entities, no co-ownership of a Russian trademark is possible.
The Russian Trademark Office provides a full examination of a trademark application both on relative and absolute grounds, but the pre-grant opinion of a third party on the registrability of the trademark can be filed before the Decision of Grant or Refusal is made. Substantial examination, as a rule, ends up in the decision of grant or the provisional refusal (so-called Notification of in-compliance with the registrability requirements). The deadline to respond to such a Notification is 6 months from the date it is signed, and this deadline is not extendable.
Normally, the trademark application is considered within 6-8 months from filing to the final decision.
An expedited examination of a trademark application is available in Russia as an additional service of the Russian Trademark Office which is, in fact, a paid-up search through all 45 classes (irrespective of the claimed number of classes ICGS) within 10 business days. There are no strict deadlines for examination after such a search, but the final decision on the application can be issued within 2 months (and longer) after the results of such a search are provided.
Unregistered trademarks are to some extent protected against unfair registration by competitors, but their enforcement (against so-called creating confusion by imitating a distinctive element of the competitors’ product) needs a lot of effort and is not guaranteed.