Russian Trademark Protection System
The fourth part of the Civil Code of the Russian Federation is the current intellectual property code of the country, with Chapter 76 containing trademark regulations. At present, the Civil Code imposes some restrictions on the acquisition of trademark rights, such as allowing only legal entities or individual entrepreneurs to possess the aforementioned rights. In 2022, the Council of the Russian Federation approved a new bill allowing individuals and individual business owners to carry out trademark registration work without confirming their individual entrepreneurial identity. After the bill comes into effect, individuals do not need to obtain the status of individual entrepreneurs to carry out trademark registration work.
Trademarks protected in Russia through national registration or international treaties to which Russia is a party, or logos used as trademarks but not legally protected in Russia, may be recognized as well-known trademarks by the Russian Federal Intellectual Property Office (Rospatent), provided that the trademark or logo is widely known among Russian consumers due to intensive use when the relevant applicant submits a request to Rospatent to be recognized as a well-known trademark.
Rospatent Introduction to the Russian Intellectual Property Office
The development of legal protection for industrial property rights in Russia is closely related to the country’s history and the socio-economic changes that have occurred. With the establishment of the Russian Federation, the Patent and Trademark Board began to perform the corresponding functions of the Patent Office and became the Patent and Trademark Office in 1996. In 2004, the Patent and Trademark Office was renamed the Federal Intellectual Property, Patent and Trademark Office, which exercises management and supervision functions in legal protection and intellectual property use. In 2011, the Intellectual Property, Patent and Trademark Office was renamed as the Federal Intellectual Property Office (Rospatent), managed by the Ministry of Economic Development of the Russian Federation.
Rospatent provides public services and management in the fields of inventions, utility models, industrial designs, trademarks, geographical indications and place of origin, electronic computers or database programs, supervises and proposes legislative recommendations on issues related to public services.
website：rospatent.gov.ru
address：Роспатент, Бережковская наб., 30, корп.1, Москва, Россия, Г-59, ГСП-3, 125993（Postal address）
Бережковская наб., д. 24, стр. 12, Москва, Россия（Actual address）
Telephone：+7 (499) 240-6015
Fax：+7 (495) 243-3337
Email：rospatent@rupto.ru
Introduction to Russian Trademark Registration
3.1 Types of trademarks
Russian trademark refers to a symbol used for personalized products of legal entities or individual entrepreneurs.
Service trademark refers to a symbol used to personalize the work or services provided by a legal entity or individual entrepreneur. The provisions on trademarks in the Civil Code apply to service trademarks.
Collective trademark refers to a mark aimed at indicating that goods are produced or sold by members of a certain association and have common characteristics in terms of quality or other aspects.
3.2 Logo that can be registered as a trademark
According to Article 1482 of the Civil Code, words, graphics, three-dimensional shapes, and other signs or their combinations can be registered as trademarks. Trademarks can be registered in any color or color combination.
According to the Rospatent website, other types of logos include sound, light, holographic, scent, and dynamic logos.
3.3 Reasons for Refusing Trademark Registration
Article 1483 of the Civil Code stipulates the reasons for refusing trademark registration, including:
3.3.1. It is not allowed to register symbols that do not have significant features and are only composed of the following elements:
(1) Used to specify the common name of a certain type of product;
(2) Recognized symbols and terminology;
(3) Describe the characteristics of the product, including indicating its type, quality, quantity, nature, purpose, value, as well as the time, place, and method of production or sale of the product;
(4) The form of a commodity that is entirely or primarily determined by its attributes or uses.
However, if the above elements do not dominate in the trademark, they can be included as unprotected elements in the trademark. If a symbol gains a “second meaning” due to its use, it can be registered as a trademark.
3.3.2. It is not allowed to register as a trademark objects that are not protected by Russian laws related to design or personalized means as stipulated in Article 1231 (1) of this Law, or objects that are confusingly similar to these objects, including:
(1) National symbols and signs, such as flags, logos, decrees, banknotes, etc;;
(2) Abbreviations or full names of international and intergovernmental organizations, their flags, logos, and other symbols;
(3) Official signs, seals, rewards, etc. that indicate the implementation of control and guarantee.
3.3.3. Marks that belong to the following situations or contain elements shall not be registered as trademarks:
(1) False or misleading information about the product, manufacturer, or place of origin;
(2) Violating the principles of public interest, humanity, and morality.
3.3.4. Official names or images of cultural heritage, world cultural heritage, or natural heritage of special value to the Russian people, as well as names or images of famous paintings, or objects that are confusingly similar to the above-mentioned objects, shall not be registered as trademarks unless the owner’s consent is obtained.
3.3.5. According to international treaties to which Russia is a party, a mark cannot be registered as a trademark in Russia if it is identical to the geographical indication of a wine or spirits product of a contracting party to the aforementioned treaty, which is used to identify that the product is produced in an area of that country with a certain geographical feature and has a special quality, reputation, or other characteristic primarily determined by its place of origin, but is not used for wine or spirits products from the corresponding production area.
3.3.6. It is not allowed to register signs that are identical or easily confused with the following signs:
(1) A certain symbol has been applied for trademark registration by others in Russia for similar goods, with priority, and the application has not been withdrawn, deemed withdrawn by Rospatent, or rejected by Rospatent;
(2) Prior trademarks protected in Russia for goods of the same nature, including trademarks protected in Russia under international treaties to which Russia is a party;
(3) A well-known trademark recognized by Russia, whose date of use for goods of the same nature is earlier than the priority required by the trademark registration application.
3.3.7. It is not allowed to register geographical indications or origin names that are the same as or cause confusion with protected goods in Russia.
3.3.8. For goods of the same nature, it is not allowed to register product names or enterprise names that enjoy priority and are protected in Russia, or names that are the same as or cause confusion with registered protected breeding results.
3.3.9. Marks that are identical to or may cause confusion with the following content cannot be registered as trademarks:
(1) The name of a scientific, literary or artistic work known in Russia prior to the date of trademark application, the characters or quotes in the work, the artwork or its fragments;
(2) Prior to the date of trademark application, the name, pen name, or derivative name, portrait, or copy known in Russia without the consent of the individual or their heirs;
(3) Industrial product design and inspection mark prior to the date of trademark application.
3.3.10. If the elements contained can cause confusion with a trademark or other legally protected name or logo, the logo cannot be registered as a trademark.
Due to reasons stipulated in the Civil Code, trademarks registered under international treaties to which Russia is a party are not legally protected.
3.4 Trademark exclusive right
According to Article 1484 of the Civil Code, the trademark owner may use the trademark in any non illegal manner.
The trademark owner can personalize the goods or services he or she provides by using the trademark, including using the trademark on the goods or labels, producing, selling, displaying in exhibitions or otherwise making it enter the private circulation in Russia, storing, transporting and importing for the above purposes, and using the trademark for advertising, Internet or domain name.
Without the permission of the trademark owner, no one has the right to use a mark that is identical or similar to the registered trademark in the same or similar category of goods or services.
However, Article 1487 of the law provides for the principle of exhaustion of trademark rights. If the goods are put into circulation in Russia by the trademark owner or with their consent, the continued sale or use of the above-mentioned goods by others does not infringe on the trademark rights.
3.5 The protection period of a registered trademark
According to Article 1491 of the Civil Code, the protection period of a registered trademark shall be calculated from the date of trademark application or priority, totaling 10 years. After expiration, it can be renewed for an additional 10 years, with no limit on the number of renewals.
But Article 1486 of the law also stipulates that if the registered trademark is not used for three consecutive years in all or part of the goods or services specified at the time of trademark registration, the legal protection of the trademark may be terminated in advance.
Russian Trademark Registration Procedure
Russia has joined the Madrid Agreement on the International Registration of Marks and the relevant protocols of the Madrid Agreement on the International Registration of Marks. Chinese applicants can designate Russia through the Madrid Agreement on the International Registration of Marks or directly submit a Russian trademark registration application to Rospatent to obtain Russian trademarks.
4.1 The procedure for submitting a trademark registration application directly to Rospatent
4.1.1．prepare documents
To submit a trademark registration application (including service trademarks and collective trademarks), the applicant needs to prepare the following documents:
(1) Trademark registration application, indicating the applicant, their place of residence or location;
(2) Signs requiring protection;
(3) The goods/services applied for registration shall be listed according to the International Classification of Goods and Services for Trademark Registration (Nice Classification);
(4) Description of the symbol requiring protection.
4.1.2. Submit Application
Applicants can submit trademark applications through the online electronic application system provided on the website of the Federal Institute of Industrial Property, a subsidiary of Rospatent. To use this system, it is necessary to first install encryption programs and browser plugins, obtain a qualified electronic signature certificate, etc. The steps are relatively cumbersome, but the advantage is that applying through this channel will save 30% of the cost, and submitting the application is not limited by Rospatent’s working time. All communication is conducted electronically, and the time to deliver the file to the user’s personal account is only a few seconds.
Applicants can also submit their applications directly at the Rospatent workplace, or submit paper applications by mail or fax (+7-495-5316318). If the application is submitted by fax, the applicant shall provide the original application documents upon receipt of the fax by Rospatent. In this case, the date Rospatent received the application documents can be considered as the date it received the fax.
Rospatent will conduct a preliminary review of the application. The last date on which the office receives at least the application documents in items (1) to (3) above will be the date on which it receives the trademark application. Rospatent will register the trademark registration application within 2 working days after receiving the application. The result of the above administrative process is:
(1) Accept and register applications, send acceptance and registration notices to applicants, indicating the registration number of the application and the date of receipt, and transfer the application from the acceptance and registration department to the formal examination department; perhaps
(2) Not accepting and registering application documents, issuing a notice of non acceptance and registration application to the applicant, explaining the reasons for non acceptance and registration.
4.1.3．Formal review
The applicant shall pay the fees for trademark formal examination and substantive examination within 2 weeks from the date of receipt of the application by the department conducting formal examination at Rospatent
The basic fee for registering a trademark application and making a decision based on the formal examination results is 3500 rubles
If there are more than 5 specified categories of goods/services, the fee (in rubles) is 3500+(quantity of goods/service categories -5) x 1000
Conduct substantive examination and make a decision based on the results. The cost (in rubles) is 11500+(number of goods/service categories -1) x 2500
After verifying that the applicant has paid the prescribed amount of fees, Rospatent will conduct a formal examination of the application, checking the usability of the application documents and whether they comply with the requirements set forth by Russian law.
The maximum period for formal examination of an application is one month from the date Rospatent confirms receipt of the examination fee, but if the applicant is required to provide additional materials, this period will be extended. If the applicant fails to submit materials or submit an application for extension of the deadline within 3 months from the date of Rospatent’s request for supplementary materials, the application will be deemed withdrawn.
Rospatent will notify the applicant of the results of the formal examination and provide a decision on substantive examination for applications that have passed the formal examination, or explain the reasons to the applicant for applications that have not passed the formal examination.
4.1.4. Substantive examination
The maximum period for substantive examination by Rospatent is 12 months. When conducting substantive examination of the application, the office will check whether the mark applied for registration as a trademark meets the requirements of Russian law, including Article 1477 (Definition of Trademarks and Service Marks) and Article 1483, paragraphs 1-7, 9 (3), and 10.
If the substantive examination determines that the trademark cannot be registered, Rospatent will issue a notice to the applicant, inviting them to submit their arguments on the reasons given in the notice within 6 months from the date of issuance by the office.
If the substantive examination determines that the applied trademark cannot be fully registered or can only be registered in some categories of goods/services, the applicant has a maximum of 2 months from the date of receiving Rospatent’s examination opinion notification to consider how to respond. If the applicant fails to provide supplementary materials or response opinions as requested by Rospatent, the application will be deemed withdrawn.
Ultimately, Rospatent will notify the applicant based on the results of substantive examination:
(1) Send the decision on trademark registration and documents explaining the fees payable for registering the trademark and issuing certificates to the applicant, and forward the application documents to the department responsible for registering the trademark, publishing trademark registration information, and issuing certificates;
(2) Send the decision on partial registration of the trademark and the document explaining the fees payable for registering the trademark and issuing the certificate to the applicant, and forward the application documents to the department responsible for registering the trademark, publishing the trademark registration information, and issuing the certificate;
(3) Send the decision to reject the trademark registration application to the applicant.
4.1.5. Registration and Issuance of Trademarks
The basic fee for registering a trademark in electronic format and issuing a certificate is 16000 rubles; If there are more than 5 specified categories of goods/services, an additional 1000 rubles will be charged for each category starting from the 6th category.
After the applicant pays the above-mentioned fees, the trademark can be registered.
More content can be found on the official website of Rospaten and the public service portal of the Russian Federation.
Introduction to Russian Trademark Official Fees
| Project | Details and amount (in rubles) | |
| Basic fee for application and formal examination | Basic fee | 3500 |
| Specify 5 or more categories of goods/services, starting from Category 6 | ＋1000/class | |
| Substantive examination | Basic fee | 11500 |
| Specify one or more categories of goods/services, starting from category 2 | ＋2500/class
|
|
| Registering a trademark in electronic format and issuing a certificate | Basic fee | 16000 |
| Specify 5 or more categories of goods/services, starting from Category 6 | ＋1000/class | |
| Provide paper certificates | ＋2000 | |
| Register collective trademarks in electronic format and issue certificates | Basic fee | 20000 |
| Specify 5 or more categories of goods/services, starting from Category 6 | ＋1000/class | |
| Provide paper certificates | ＋2000 | |
| Extend the validity period of trademark exclusive rights | Basic fee | 20000 |
| Specify 5 or more categories of goods/services, starting from Category 6 | ＋1000/class | |
| Apply within 6 months after the expiration of the validity period | ＋2500 | |
| Provide paper certificates | ＋2000 | |
| Extend the validity period of collective trademark exclusive rights | Basic fee | 27000 |
| Specify 5 or more categories of goods/services, starting from Category 6 | ＋1000/class | |
| Apply within 6 months after the expiration of the validity period | ＋2500 | |
| Provide paper certificates | ＋2000 | |
For more information on fees, please refer to the Rospatent official website’s “Table of Types of Acts with Legal Significance and Fee Amounts”. The above fees will be implemented from June 21, 2021.