News Archive (39)Sep 27, 2024 (Newsletter Issue 9/24)
Official Fees to Increase
On September 27, 2024, the Russian Patent and Trademark Office (Rospatent) announced amendments to the Regulation on the Official Fees.
The main changes are:
- increase of almost all official fees by 10-15% on average;
- the 30% discount for e-filing is cancelled;
- annuities for inventions and utility models have to be paid in bulk for 5 year periods (just like it is for designs).
The amendments are expected to be in effect from October 5, 2024.
Source: www.liapunov.com
Apr 21, 2022 (Newsletter Issue 5/22)Future of Foreign IP Rights UncertainThe Russian government is taking steps to lessen intellectual property rights and eliminate enforcement mechanisms within the country's borders. It is likely that piracy of patented technologies, brand names and logos, and copyrighted works will increase.
By Decree No. 299 of March 6, 2022, the Russian Government determined that, as of the date of the Decree, in cases where the Russian authorities decide to grant a compulsory license for reasons of national security, the compensation due to the owner patents for inventions, industrial designs, and utility models originating in “unfriendly” countries shall be zero. The Decree amended Article 1360 of the Russian Civil Code on compulsory licenses and reduced the compensation for the right holder from 0.5% to 0% of the profits from the exploitation of the right itself.
Countries considered unfriendly by Russia include Albania, Andorra, Canada, European Union countries, Iceland, South Korea, Lichtenstein, Macedonia, Micronesia, Monaco, Montenegro, New Zealand, Norway, San Marino, Singapore, Sweden, Taiwan, Ukraine, the United Kingdom, and the United States.
In addition, according to a Federal Law dated March 8, 2022, the Russian Government may establish a list of goods for which exclusive rights, such as trademarks, may not be granted. So far, the list of goods has not been published.
Furthermore, the Russian court system has diluted foreign trademark rights. A Russian court has decided to allow the continued infringement of two Peppa Pig trademarks in response to Western economic sanctions. Entertainment One UK Limited, a subsidiary of Hasbro Inc., brought a trademark infringement suit against a Russian entrepreneur for use of its “Peppa Pig” and “Daddy Pig” marks. The suit was dismissed by the Arbitration Court of the Kirov Region in a decision published on March 3, 2022. The presiding judge specifically cited the economic sanctions imposed by the United States and other European countries as grounds for ruling the case was an “abuse of right” and thus subject to dismissal. Following this ruling, trademark applications have already been filed in Russia that clearly copy famous brands like McDonald’s and Starbucks.
For more information, please see here and hereSource: www.rapisardi.com; www.us.eversheds-sutherland.com Feb 24, 2022 (Newsletter Issue 3/22)
Accession to Geneva Act of the Lisbon Agreement
On December 24, 2021, the Russian Federal Law On the Accession of the Russian Federation to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications was approved. Accordingly, the Lisbon Agreement is expected to enter into effect by 2023 in Russia.
The accession of the Russian Federation to the Geneva Act will increase the protection of regional brands, create new opportunities for the regions’ economic development and support of local manufacturers, and ensure further integration of the Russian Federation in the global systems of intellectual property protection.
Source: www.ip-coster.com; www. en.kremlin.ru
Oct 20, 2021 (Newsletter Issue 15/21)CIS Countries Sign New Cooperation Agreement against Use of False TMs and GIs On May 28, 2021, the CIS Council of Heads of Government signed the Agreement on Cooperation of CIS Member States on Prevention and Suppression of Use of False Trademarks and Geographical Indications. The member states of the Commonwealth of Independent States are Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Moldova, Russia, Tajikistan, and Uzbekistan.
The document replaces the existing Agreement signed in 1999, inspired by the TRIPS Agreement and the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods. It was aimed at establishing the coordination mechanism among the law enforcement bodies to protect the interests of rightsholders and consumers against unfair use of indications on products.
The reviewed act optimizes the arrangements of the Parties, adjusts terminology, and updates the legal acts underlying the cooperation. The new Agreement shall enter into force 30 days after the third Party deposits a written notification that it has completed its domestic procedures. For those Parties that complete their domestic procedures later, the Agreement shall enter into force 30 days after the deposit of their written notifications.
For more information, please check hereSource: www.rosepatent.gov; www.petosevic.com Sep 09, 2021 (Newsletter Issue 14/21)Changes to Official Fees for e-Issuance of Original CertificatesOn June 17, 2021, the Russian Government issued a ruling that introduced changes to the official fees related to the issuance of original certificates in accordance with Decree of the Government of the Russian Federation No. 922. The changes became effective on June 21, 2021.
These amendments are mainly aimed at encouraging applicants to obtain certificates for trademarks and patents in electronic form instead of paper form.
Previously, the issuance of original certificates for trademarks, geographical indications, appellations of origin and patents was subject to an issuance fee of RUB 2,000 for trademarks and RUB 1,500 for patents.
With this change, the fee will only be charged if the applicant specifically requests the paper original of the certificate.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine and www.sojuzpatent.com Jun 17, 2021 (Newsletter Issue 12/21)Eurasian Industrial Design Applications StartedOn June 1, 2021, the Eurasian Patent Office (EAPO) started accepting Eurasian industrial design applications when the Eurasian design protection system became operational under the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention. Applicants can now obtain simultaneous protection within the territory of the states of Armenia, Azerbaijan, Kazakhstan, Kyrgyzstan and Russia, where the Protocol entered into force.
The three remaining EAPO member states Belarus, Tajikistan and Turkmenistan have yet to complete their ratification procedures. According to Article 22 of the Protocol, Eurasian design patents will have legal effect in the EAPO member states in which the Protocol was in force on the application filing date.
For more information, please click here and hereSource: www.petosevic.com May 20, 2021 (Newsletter Issue 10/21)EAEU Trademark Agreement in ForceOn April 26, 2021, the Agreement on the Eurasian Economic Union Trademarks, Service Marks and Appellations of Origin, signed on February 3, 2020 by all five Eurasian Economic Union (EAEU) member countries – Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia, entered into force, following the recent ratification by all member states.
The Agreement introduces a new system for the registration of EAEU trademarks. Instead of registering a trademark in each EAEU member state, the Agreement provides a centralized filing of the application and further prosecution in one IP Office. The EAEU trademark is kept in a single register administered by the Eurasian Economic Commission (EEC). Further, applicants receive a unified protection certificate.
Source: www.petosevic.com and Mikhailyuk, Sorokolat and Partners, Ukraine Mar 25, 2021 (Newsletter Issue 6/21)EAPO launches the Pharmaceutical RegisterOn March 1, 2021, the Eurasian Patent Office (EAPO) informs that a new information resource has been opened for public access on the EAPO web portal, namely the EAPO Pharmaceutical Register (Register), containing information on Eurasian patents related to active pharmaceutical ingredients (API) with international non-proprietary names (INN).
The Register provides up-to-date information on the legal status of such Eurasian patents, including information on the validity of Eurasian patents on the territory of the Eurasian Patent Convention (EAPC) Contracting States, on the Eurasian patent term extensions carried out by the EAPO in accordance with Rule 16 (5) of the Patent Regulations under the EAPC, and on registered licensing agreements.
The Register also features direct links to information on these Eurasian patents in the Eurasian Patent Register and in the Eurasian Publication Server. The EAPO Pharmaceutical Register will also include information on the registration of medicinal products in the EAPC Contracting States, if available.
Owners of Eurasian patents and their representatives can submit to the EAPO a request for inclusion of the corresponding Eurasian patents in the EAPO Pharmaceutical Register.
The Register is currently only available in Russian. An English version is expected soon.
For more information, please click here Source: www.eapo.org Feb 25, 2021 (Newsletter Issue 4/21)
Digital Trademark Certificates Only
The Russian Patent and Trademark Office has published updated regulations regarding the automation of the entire process of generation and issuance of trademark registration certificates. As of January 17, 2021, all trademark registration certificates will be generated in digital format for all applications. Paper version can only be obtained by submitting a specific petition to the Office.
Source: www.agip.com
Feb 25, 2021 (Newsletter Issue 4/21)International Trademark Applications under Madrid System by E-Mail No Longer AcceptedAs on January 11, 2021, the Russian Patent and Trademark Office informs no longer accepts the filing of international trademark applications by email via fips_Madrid@rupto.ru. Applications are now requested to submit their international trademark applications under the Madrid System in Russian via the FIPS Personal Desk
All related correspondence will be received via the applicants account unless a written request has been made that the correspondence shall be sent in paper.
Source: www.rospatent.gov.ru Feb 11, 2021 (Newsletter Issue 3/21)
Ratification of Protocol on Protection of Industrial Designs
On January 11, 2021, Russia deposited the instrument of ratification of the Protocol on the Protection of Industrial Designs to the Eurasian Patent Convention with WIPO.
The Protocol shall enter into force three months after depositing its instrument of ratification in respect of the Russian Federation.
Source: www.eapo.org
Dec 03, 2020 (Newsletter Issue 20/20)Eurasian Economic Union Treaty RatifiedThe State Duma of the Russian Federation has ratified the Treaty on Trademarks, Service Marks and Appellations of Origin of Goods of the Eurasian Economic Union (EAEU). Russia is the first EAEU member state to ratify the Treaty.
The Treaty will enter into force after all remaining EAEU member states such as Armenia, Belarus, Kazakhstan and Kyrgyzstan have completed the necessary domestic procedures and provide the written notifications to the depositary.
After the Treaty comes into force, it will be possible to submit a single application for registration of a trademark or appellation of origin in order to obtain protection in EAEU member states.
Source: Mikhailyuk, Sorokolat and Partners Nov 05, 2020 (Newsletter Issue 18/20)Ratification of EAEU TreatyOn October 27, 2020, the State Duma of the Russian Federal Assembly discussed and adopted the Draft Federal Law On Ratification of the Treaty on Trademarks, Service Marks and Appellations of Origin of the Eurasian Economic Union (EAEU).
The Treaty will enter into force after all EAEU member states have completed the necessary domestic procedures and provide the written notifications to the depositary.
After the Treaty has come into force, it will be possible to submit a single application for registration of a trademark or appellation of origin in order to obtain protection in Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia.
The receiving office processes the regional application, carries out a formal examination, and submits the application to other offices for substantial examination. If the protection cannot be granted in all the EAEU states, the regional application can be converted into a national one.
Source: Mikhailyuk, Sorokolat and Partners and www.rospatent.gov.ru Aug 06, 2020 (Newsletter Issue 13/20)
New Provisions Expand Use of Electronic Technologies
The State Duma of Russia adopted a law amending Part IV of the Civil Code of the Russian Federation. The new provisions expand the use of electronic technologies in the registration of IP rights. On July 20, 2020, federal law No. 217-ФЗ was signed by the Russian president, and it will take effect on January 21, 2021.
After the federal law “On Amendments to Part Four of the Civil Code of the Russian Federation” (dated July 20, 2020, No. 217-FZ) takes effect, documents of title (except for patents for secret inventions) will be issued electronically. Applicants can still choose to receive documents of title on paper.
Also, applicants will be able to attach 3D models of intellectual property objects (inventions, utility models, industrial designs, and trademarks) to their electronic applications. The 3D models will not be published. The format requirements for 3D models will be established by the Russian Ministry for Economic Development, which regulates Rospatent’s public services.
Source: www.sojuzpatent.com
Jul 23, 2020 (Newsletter Issue 12/20)
Law on Geographical Indications in Force Soon
The Law on Geographical Indications, which was adopted on July 26, 2019, will enter into force on July 27, 2020 in Russia. The provision regarding liability for illegal use of a Geographical Indication (GI) symbol alongside an unregistered GI 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 which will continue to exist. 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.
Source: www.petosevic.com
Jun 11, 2020 (Newsletter Issue 9/20)Drug Labeling IntroducedFrom July 1, 2020, all pharmaceutical products for medical use in Russia will have to be labelled in accordance with the federal information system for monitoring the circulation of pharmaceutical products. In order to meet the requirements, each pharmaceutical product will have a unique identifier on its packaging, a Data Matrix code, containing information such as the product’s serial number, expiration date, consignment number and manufacturer’s name, thus enabling the monitoring of each product’s circulation from the manufacturer to the end user.
The drug monitoring system was introduced by the Federal Law No. 425-FZ of December 28, 2017, which brought changes to the Federal Law ‘On Circulation of Medicines’. It was first intended to enter into force on January 1, 2020, but the entry into force was postponed until July 1, 2020 by further amendments to the Federal Law ‘On Circulation of Medicines’ introduced on December 27, 2019.
For more information, please click hereSource: www.petosevic.com May 28, 2020 (Newsletter Issue 8/20)Trademark Agreement by Eurasian Economic Union Members SignedOn February 3, 2020, the Agreement on the Eurasian Economic Union (EAEU) Trademarks, Service Marks and Appellations of Origin was signed by all EAEU members states, namely Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia. The Agreement will enter into force once all member states bring their registration procedures and official fees in line with the Agreement and deposit their instruments of ratification to the Eurasian Economic Commission (EEC), expected by the end of 2020. The Agreement was first signed by the EEC in December 2018.
This significantly moves forward the process of establishing a unified EAEU IP system, under which right holders will be able to obtain legal protection simultaneously in all EAEU member states by submitting one application to any of the national offices. Trademark applications will undergo preliminary (formal) and substantive examination, with the entire registration procedure estimated to take approximately one year. The EAEU trademark will be kept in a single register administered by the EEC.
For more information, please click hereSource: www.petosevic.com Sep 19, 2019 (Newsletter Issue 13/19)Law on Geographical Indications PublishedThe Law on Geographical Indications was signed by the Russian President and officially published on July 26, 2019. The new Law will enter into force one year after its publication on July 27, 2020. The provision regarding liability for illegal use of a Geographical Indication (GI) symbol alongside an unregistered GI will come into effect on July 27, 2024.
The new law defines GI as "a sign identifying a product that originates from a definite geographical territory, with a certain quality, reputation or other characteristics which are essentially attributed to its geographical origin." Foreign applicants 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.
For more information, please click hereSource: www.petosevic.com Aug 22, 2019 (Newsletter Issue 11/19)
Temporary Pre-Grant Protection for Industrial Designs
On June 27, 2019, amendments to Part IV of the Russian Civil Code entered into force, introducing a temporary, unregistered form of protection for industrial designs through an optional pre-grant publication of design applications.
According to the amendments, at the request of applicants, the Russian IPO will publish, in the Official Bulletin, information about industrial design applications that have passed formal examination. Temporary protection is granted from the application’s publication date. Previously, designs were published in the Official Bulletin only upon grant, after passing substantive examination.
The scope of temporary protection is limited to the essential design features as shown in the drawings in an application, but it cannot be broader than the set of essential features reflected in the drawings in the IPO’s grant decision. This means that if certain drawings or essential features are removed from the application at the stage of substantive examination, the applicant cannot claim damages for their unauthorized use within the frame of temporary protection.
Source: www.petosevic.com
Aug 07, 2019 (Newsletter Issue 10/19)Geographical Indications to Be ImplementedThe President of the Russian Federation signed the draft of the law on amending the part four of the Civil Code of the Russian Federation and Articles 1 and 231 of the Federal Law on July 26, 2019, which referred to registration of the new type of IP rights such as geographical indication.
According to the daft of the law, geographical indication is a sign identifying a product as originating in the territory of a country or a region or an area, where specific quality, reputation or other characteristics thereof are essentially due to the geographical origin. The registration of geographical indications will be possible in a year, when subsidiary legislations regulating the registration and protection of the new type of the intellectual property rights are implemented along with the law.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Jul 11, 2019 (Newsletter Issue 9/19)Civil Code AmendedThe Federal Law No. 549-FL as of December 27, 2018 "On Amendments to the Part Four of the Civil Code of the Russian Federation" (on state registration of industrial designs) entered into force on June 26, 2019.
According to the Law, the main changes in the Civil Code are implementation of a publication of data on design application at the applicant's request and establishment of the temporary legal protection of an industrial design application. Thus, the temporary legal protection will be effective from the publication of data on industrial design application in the official bulletin of Rospatent till the date of publication of data on issuance of a patent. Meanwhile, it should be noted that the applicants will be able to claim compensation for the violation only after state registration of industrial design.
Previously, the legal protection of the industrial design was provided only after its official registration. Due to the fact that the registration process lasts 20.5 months, this method of protecting intellectual property rights was ineffective in the rapidly developing economy of the country.
Source: Mikhailyuk, Sorokolat and Partners, Ukraine Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationRussia has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the IP Office has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Oct 30, 2018 (Newsletter Issue 18/18)
Three-Year Customs Watch Term Introduced
The new Federal Law “On customs regulations in the Russian Federation” was adopted on August 3, 2018, and entered into force on September 4, 2018.
While certain transitional provisions will not enter into force until December 2018 and February 2019, those related to the protection of intellectual property rights are already in effect.
The main novelty concerns the maximum customs watch protection period, which has been extended from two to three years. Rights holders can now choose between a one-, two- or three-year protection term when filing or renewing customs watch applications.
As before, the customs watch may be renewed for an indefinite number of times.
Source: www.petosevic.com
May 22, 2018 (Newsletter Issue 10/18)Fast-Track Trademark Registration Available NowRospatent has officially launched a service for fast-track registration of trademarks.
The fast-track option is available to applicants who have ordered and paid for an official trademark search report from Rospatent for all 45 Nice classes.
The official fee for this service is RUB 94,400 (approximately USD 1,500 or EUR 1,200) ; the term is 10 calendar days.
However, for a combined trademark, the fee should be paid separately for each employed element (verbal or visual), which may multiply the fee.
The new service is available for all new and already pending applications and is intended to shorten the processing time until registration.
For further information, please click hereSource: www.ilnipinsider.com Feb 28, 2018 (Newsletter Issue 4/18)Preparation for Applications with 3D ImagesRospatent has stated its intention to introduce amendments into the Civil Code of the Russian Federation as to the registration of applications on the IP objects. In particular, it will be possible to file applications for the registration of inventions, utility models, industrial designs and trademarks with three-dimensional images.
The amendments are connected with rapid development of digital technologies. According to the current Civil Code of the Russian Federation, the applicants looking for IP protection in Russia may file applications with two-dimensional images only (e.g., diagrams or drawings). In view of the above, the Administration of Rospatent has decided to update the legislation.
Rospatent has already started its work on the Civil Code development as to the registration of IP objects. The amendments are supposed to come into force in December, 2018.
Source: Mikhailyuk, Sorokolat and Partners, Russia Jan 16, 2018 (Newsletter Issue 1/18)
Hague Agreement on Industrial Designs in Force Soon
On November 30, 2017, Russia ratified the Geneva Act of the Hague Agreement on International Registration of Industrial Designs by depositing its instrument of ratification with the World Intellectual Property Organization (WIPO). The Geneva Act will enter into force in Russia on February 28, 2018.
The Hague Agreement, administered by WIPO, regulates the international registration of industrial designs. Accession allows interested parties to obtain design protection with a single application in all the countries that are members of the Geneva Act, which now counts a total of 53 contracting parties.
Source: www.petosevic.com
Oct 05, 2017 (Newsletter Issue 17/17)
Official Fees Slightly Soon Increased
On September 29, 2017, the Russian Federal Service for Intellectual Property (Rospatent) published the revised schedule of patent and trademark fees.
The official fees for trademark-related matters have not increased significantly, but the amendments include an additional fee for each class over five for trademark filing, registration and renewal.
As of October 6, 2017, the official fee for filing a trademark application is RUB 3,500 for up to five classes and 1,000 for each additional class (if more than five classes are requested). The new examination fee is RUB 11,500 for one class and RUB 2,500 for each additional class. The official fee for registration of a trademark is RUB 16,000 for up to five classes and RUB 1,000 for each additional class (if more than five classes are requested).
Also, the fee payment deadline was shortened from four to two months after the notification date.
Source: www.petosevic.com
May 17, 2017 (Newsletter Issue 9/17)Accession to Hague System for the International Registration of Industrial DesignsOn April 3, 2017, President Vladimir Putin signed the law on ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.
Russia signed the Geneva Act on July 6, 1999, but has not completed the domestic procedures necessary to adopt it as an international agreement of the Russian Federation.
Now, finally, after 18 years, the agreement has been ratified and after complying with formalities Russia will become a party to the Hague System for the International Registration of Industrial Designs.
The law on ratification will enter into force on October 1, 2017. After this WIPO will be notified of the ratification, and in 3 months the Russian Federation may be designated in international applications for registration of industrial designs. This may be expected soon but not earlier than January 1, 2018.
For more information, please see here
Source: Law Firm Gorodissky & Partners, Russia Dec 06, 2016 (Newsletter Issue 22/16)
Trademark Opposition System Considered
In June 2016, the Russian Patent Office (PTO) announced the beginning of public discussions on the introduction of the trademark opposition system in Russia. The main goal is to shorten the trademark registration process from the current 12-18 month period to 6-12 months.
The proposed trademark opposition procedure stipulates that, once a trademark application is received, the Russian PTO conducts a formal examination on absolute grounds within 3 months of receiving the application and if no absolute grounds for refusal are found, the application is published so that third parties can file oppositions, within the next 3 months.
If nobody objects to the application, the registration process continues; if an opposition is filed and the parties fail to reach an agreement within 6 months, the examiner considers the opposition and issues the final decision.
The current trademark legislation already provides for certain elements of the opposition procedure, as anyone may file a written notice against any published application before the issuance of the final decision.
The public discussion on the new procedure is still ongoing.
Source: www.petosevic.com
Jun 14, 2016 (Newsletter Issue 11/16)
Cease and Desist Letters Mandatory Before Infringement Lawsuits
Russia has recently amended the regulations that govern the procedures in economic courts.
As a result, as of June 1, 2016, the claimants have to first submit a cease and desist letter, i.e. apply the out-of-court procedure, and then wait for 30 days before filing a court action.
Before this change, cease and desist letters were not mandatory before initiating infringement proceedings. Now, if a claimant files a court action without sending out a cease and desist letter or before the 30-day period expires, the court action will not be considered.
The new procedure applies to all IP matters with the exception of non-use cancellation actions.
Source: www.petosevic.com
Dec 08, 2015 (Newsletter Issue 19/15)New Administrative Rules for Well-Known TrademarksOn October 13, 2015, new administrative rules on declaring trademarks well known entered into force in Russia.
The main change concerns the prescribed time limit for the Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) to determine whether a trademark is well known. While there used to be no time limit, under the new rules, this term is maximum 10 months from the date of application for recognition of a well-known mark through administrative proceedings.
Source: www.petosevic.com Apr 16, 2014 (Newsletter Issue 7/14)
Civil Code Amendments to Impact IP Regulations
The Russian Government has adopted a set of Civil Code amendments which will significantly affect the Intellectual Property sphere. These amendments will enter into force on 1 October 2014.
Below is a summary of the main trademark-related amendments:
A request for the state registration of an assignment, license or pledge substitutes the registration of an assignment/license/pledge agreement. In this sense, the Russian legislation will be brought in line with the Singapore Treaty on the Law of Trademarks. It will be possible to file a request and supplement it with either a notification signed by both parties or a copy/extract of the agreement (Art. 1232).
If the exclusive license is granted, the licensor has no right to use an IP right in the same way as granted to a licensee unless otherwise agreed on in the license agreement (Art. 1236).
Under current regulations, the IP owner does not need to prove the fault of the infringer in civil proceedings. In administrative proceedings, it depends on the case and the court, while in criminal proceedings there is a need to prove fault in all circumstances. Under the amendments, the IP owner will have to prove the fault of an infringer, particularly physical persons. Legal entities and individual entrepreneurs will be liable for IP infringement, even if their fault is not proven, unless the infringement arises as a result of vis major (Art. 1250).
The scope of protection for industrial designs will be based on their images, and not on the list of their essential features (Art. 1358).
The Russian PTO will conduct substantive examination of utility model applications, instead of using the current utility model registration system (Art. 1390).
Registration of a trademark in respect of similar goods and services is prohibited if it contains company name, trade name or commercial designation of another person (Art. 1483). Currently, a third party is entitled to base its cancellation action on the company name right, whereas the examiners at the Russian PTO cannot use that provision during the trademark examination. As soon as the new version of the Civil Code comes into effect, the examiners at the Russian PTO will be able to issue office actions or decisions on the basis of prior company names, trade names or commercial designations.
Observations are officially mentioned in the new version of the Russian Civil Code. According to Art. 1493, any person can file an observation in relation to any published trademark application before the issuance of the final decision.
The term for filing an appeal against a decision in a trademark application grant procedure will be 4 months from the date of its issuance, instead of 3 months from the date of its receipt, as the law currently prescribes (Art. 1500).
Source: www.petosevic.com
Nov 18, 2013 (Newsletter Issue 16/13)Fee Calculator Service LaunchedThe Russian Patent Office has launched the new service “Calculator of Intellectual Property objects fees” on its website. The service is in a development stage and works in the test mode. Users can already use it. However, currently it is available in Russian only.
The fee calculator can be accessed here
Source: Mikhailyuk, Sorokolat & Partners, Ukraine Sep 02, 2012 (Newsletter Issue 13/12)Official Fees IncreasedNew regulations concerning registration of intellectual property have come into force on August 22, 2012, due to the ratification of the Marrakesh Agreement by the Russian Parliament and the further accession of Russia to the World Trade Organization.
The official fees have become uniform for both Russian residents and non-residents, and some of the official fees are changed.
The trademark fees have been raised for foreign applicants. The new official fee for filing a trademark application in one class is RUR 2,700 (about EUR 66) plus RUR 2,050 (about EUR 50) for each additional class.
The official fee for registration of a trademark is RUR 16,200 (about EUR 388), irrespective of the number of classes.
Source: Patentica LLP, Russian Federation Feb 07, 2012 (Newsletter Issue 2/12)IP Court to Be EstablishedOn November 29, 2011, the Federation Council (upper chamber of the Federal Assembly ‐ Russian parliamentary body) approved the Federal constitutional law forming a court on intellectual property, sometimes refered to as the "patent court".
Under the new law drafted by the Supreme Commercial Court, the patent court should start no later than February 1, 2013. The law defines the court as a specialized commercial court that will consider disputes involving the protection of infringed or contested rights to intellectual property as a first-instance and cassation court. For a time it will be the only patent court in Russia – establishment of the lower courts is yet planned.
Currently all disputes of this sort fall under jurisdiction of the courts of general jurisdiction and the state arbitration courts, depending on the legal status of the litigants. All the cases pending before the courts of general jurisdiction at the time when the patent court begins to work must still be completed in the very same court that initiated the process.
Source: Patentica LLP, Russian Federation Apr 03, 2010 (Newsletter Issue 9/10)
Extension of the .РФ Domain Registration Period
The priority period for registration of the .РФ domain was due to end on 25 March after which the exploitation of the newly registered domain names would have begun. However, just a day before the deadline, it was agreed to extend the period of priority registration until 11 May 2010 due to an extensive amount of administrative queries from various organisations, wishing to reserve some domain names. The Coordinating Centre (responsible for formulating the rules related to registration of domain names .RU and .РФ) did not clarify whether the already registered domain names will become active at the end of the extended priority period or at the originally promised end of March/beginning of April.
Source: www.marques.org
Mar 02, 2010 (Newsletter Issue 8/10)Cyrillic Domain Passes ICANN String EvaluationOn January 21, 2010, the Internet Corporation for Assigned Names and Numbers (ICANN) announced that Russia, Egypt, Saudi Arabia and the United Arab Emirates are the first four countries to meet a specific set of linguistic and technical requirements required under the ICANN’s IDN (Internationalized Domain Name) ccTLD Fast Track String Evaluation.
For more information please click hereSource: www.petosevic.com Feb 16, 2010 (Newsletter Issue 7/10)
Singapore Treaty Enters into Force
As reported by the World Intellectual Property Organization (WIPO), on September 18th, 2009 Russia ratified the Singapore Treaty on the Law of Trademarks, adopted in Singapore on March 27th, 2006. The treaty entered into force on December 18th, 2009.
Source: www.petosevic.com
Dec 07, 2009 (Newsletter Issue 5/09)
Priority Registration of Cyrillic Domain Names Started
On November 25th, 2009, priority registration started for Cyrillic domain names in the name of trademark owners.
Domain name in the Top Level Domain .rf can consist of the symbols of Cyrillic alphabet, figures, hyphen; it also shall reproduce a trademark registered in the Russian Federation via national or international procedures. The trademark which is a basis for the domain name in .rf TLD also shall be in Cyrillic and be valid on the date of filing a domain name application with the Russian Naming Authority.
The domain name application shall be supplemented with
- copy of trademark certificate (if the applicant refers to International Registration, it is necessary to file a certificate confirming that it is valid in Russia);
- copy of the legal entity or entrepreneur registration certificate.
Documents shall be stamped with company seal, if any.
Priority registration of Cyrillic domain name ends on March 25th, 2010.
Source: www.liapunov.com
Legal basis for trademark law is part IV of the Russian Civil Code, which came into effect on January 1st, 2008 as further amended, and substituted all there-existing IP laws.
The Russian Federation is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration. Marks not deemed to be distinctive in the examination can be registered if distinctiveness has been acquired by use in Russia before the date of filing trademark application.
Trademarks which were protected in the former Soviet Union will be also protected in Russia.
ClassificationNice classification, 12th edition
What is Registrable as a TrademarkAny protectable word, design, slogan, sound, symbol etc. can serve as a trademark that identifies goods or services. The list of signs that may function as trademarks is open, which allows for registration of non-traditional marks.
Article 1482 of the Civil Code provides that verbal, pictorial, three-dimensional and other indications or their combinations may be registered as trademarks. A trademark may be registered in any colour or colour combination.
Registration of marks that are lacking in distinctiveness is not allowed. Particularly, the separate letters and combinations of letters, which do not have a word character or which are not perceived as a word, are regarded as void of distinctive character (for example the combination of vowels).
The following trademark types are registrable: trademarks, service marks, collective marks and well-known trademarks.
Registration ProceedingsThe application is filed at the Federal Service of Intellectual Property (Rospatent).
Multiple-class applications are possible.
Foreign applicants need a local trademark agent.
A non-legalised power of attorney is sufficient for a local trademark attorney.
Foreign applicants do not need a domestic registration.
The examination in Russia consists of formal and substantial stages. During the formal expert examination, the presence of the necessary application documents and their compliance with established legal requirements is verified. The substantial examination stage is carried out to establish whether the claimed designation conforms to the registrability requirements.
A trademark application may be rejected either on absolute or relative grounds or on both absolute and relative grounds.
The processing time from first filing to registration or first office action is approx. 6-7 months.
The details of the application are published after registration of the application (after receipt of the application, which is filed in compliance with the existing requirements, by Rospatent).
The information about State registration of the trademark is published immediately after registration of the trademark in the State register of trademarks.
Opposition PeriodNational:Russian law contains no provisions governing formal opposition against pending applications.
However, Rospatent publishes the details of trademark applications; after publication but prior to making a decision on trademark registration, any person is entitled to file with Rospatent written objections specifying the reasons for rejection of the Registration (according to p. 1 of Article 1493 of the Civil Code); the aforesaid objections are then taken into account during the examination of the application (the objections are to be based on Articles 1477 and 1483 of the Civil Code). The opposition procedure is not a substitute for, but supplements, the examination of the trademark application, which is conducted by Rospatent.
The invalidation actions against registered trademarks based on the following grounds may be filed at the Chamber of Patent Disputes of Rospatent within 5 years from the date of publication of information about state registration of trademark:
- if a registered trademark is identical or confusingly similar to the trademark owned by a third party with the earlier priority date (both registered or applied for registration) in relation to similar goods or services;
- if a registered trademark is identical or confusingly similar to a third party’s well-known mark, recognized as such in accordance with the Russian Civil Code with the earlier date, than the priority date of the registered trademark, in relation to similar goods or services;
- if a registered trademark includes, reproduces or imitates the geographical indications or appellations of origin of the goods, protected according to the Russian Civil Code, as well as the designations applied for such registration before the priority date of the registered trademark, in respect of similar goods, except for the cases when registered trademark is owned by the party having the right for use of such geographical indication or appellation of origin of the goods and includes the above mentioned designations a the non-protectable elements;
- if a registered trademark includes, reproduces or imitates the geographical indications or appellations of origin of the goods, protected according to the Russian Civil Code, as well as the designations applied for such registration before the priority date of the registered trademark, in respect of dissimilar goods, in case the use of the registered trademark in respect the dissimilar goods will be associated by the customers with such geographical indication or appellation of origin of the goods and may infringe the legitimate interests of the holder of the exclusive right to such a geographical indication or appellation of origin of goods;
- if registered trademark includes the element(s) which are protected as the means of individualisation of other persons according to the Civil Code (or the elements confusingly similar to them) for similar goods and services;
- if a registered trademark is identical /confusingly similar to the known in Russia on the date of filing of the application for registration of trademark title of work of science, literature, or art, to a character or quotation from such a work, a work of art or a fragment thereof, without the consent of the rights holder, if the rights to the respective work arose earlier than the priority date of this registered trademark;
- if a registered trademark is identical /confusingly similar to a name, a pseudonym or their derivatives, to a portrait or facsimile of a person known in Russia on the filing date of the application, without the consent of this person or his heir;
- if a registered trademark is identical/confusingly similar to industrial design, conformity mark, the rights to which arose earlier than the priority date of the registered trademark.
The invalidation actions based on all other grounds stipulated by the Russian legislation are not restricted by any deadline. This means, that in case, e.g., violation of company name or misleading nature of the trademark is claimed, a trademark can be revoked within the whole time it is in force.
Invalidation actions against registered trademarks based on relative grounds (them being similar or identical to other persons' trademarks having an earlier priority) may be filed at the Chamber of Patent Disputes of the Russian Patent and Trademark Office within 5 years from the publication date of the registered trademark. Invalidation actions based on all other grounds stipulated by Russian legislation are not restricted by any deadline. This means, that in case, e.g., violation of the company name or misleading nature of the trademark is claimed, a trademark can be revoked within the whole time it is in force.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
Trademark DurationA trademark registration is valid for 10 years from date of filing the application (or in case of filing a divisional application - for 10 years from date of filing first application).
The registration is renewable for periods of 10 years.
Grace Period for Trademark RenewalPractical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is RUB 4,000 for one class and RUB 1,000 for each additional class. The examination fee is RUB 13,000 for one class and RUB 2,500 for each additional class. The official fee for the registration of a trademark and issuance of the certificate of registration in the electronic form is RUB 18,000 for up to five classes and RUB 1,000 for each additional class (if more than five classes are requested). The official fee for issuance of the certificate of registration in a paper form (if such document is required) is RUB 3,000.
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Practical details on trademark licensing are available in our publication
here
Online you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
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Nov 29, 2024
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