LicensingandTechnologyTransfer by liaoxiuli

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									     TRADEMARKS, COMPANY NAMES, TRADE NAMES AND DOMAIN NAMES

Slide 1. Basics of Trademark System in Russia

-   first-to-file system in Russia vs first-to-use system in the USA;

       In Russia there is a trademark protection system called the „first-to-file‟ system, implying
       that the brand to be used for certain kind of goods and services must first be filed for
       registration and registered. This system is different from the so-called „first-to-use‟ system
       commonly used in USA and mainly meaning that the trademark may be used first and be
       registered subsequently or the protection to a trademark may be provided due to its ongoing
       use.

- no declarations or proof of trademark use (or intention to use) are required for filing a
trademark application in Russia.

Slide 2. Basics of Trademark System in Russia – Continuation

-   Trademarks are subject to mandatory state registration through filing an application with the
    Russian patent office;

-   Russian trademark system allows for multi-class applications;

    It is not necessary to file a separate application in respect to each class of interest, such as in
    Israel, Brazil, South Africa, etc.;

-   Russian trademark system uses the International (Nice) Classification of Goods and Services
    (9th Edition), no local classification of goods and services is used;

-   Class heading does not guarantee effect of the trademark in relation to all goods or services
    indicated under that class in the International Classification;

    The Russian courts consider the class heading to be specific products, and not as the class
    name. Hence, it is recommended to specify and list the goods in detail, so as to decrease the
    possibility of ambiguous interpretation pending possible court proceedings in the future;

-   Trademark registration is valid within 10 years from the filing date and can be renewed an
    infinite number of times, each time for 10 years.

Slide 3. Registration Procedure and Terms

The examination consists of the formal examination and examination for compliance of the applied
trademark with the legislative requirements (substantive examination).

(The trademark registration procedure in the Russian patent office, including stages and
timeframes is detailed in the chart in the papers.)

The whole registration procedure takes approximately 18 months, if no official actions occur
during the examination.
                                            Filing of a trademark
                                              (or service mark)
                                                 application
  Priority document may be filed                                                     Information on priority date may
  within three months from the                                                       be submitted within two months
  filing date of the application.                                                    from the filing date of the
                                                                                     application.

  List of goods and services shall be
  filed in Russian at the time of                                                    Official fee shall be paid at the
  filing the application.                                                            time of filing the application.
                                            Formal examination




                                                           Official action (a response must
                                                            be provided within two months
                                                           from the date of receipt; may be
                                                                       extended)




   Notification of acceptance of an                                                  Decision on declaring a trademark
    application into consideration                                                    application withdrawn (may be
                                                                                       appealed within three months
                                                                                         from the date of receipt)




                                        Examination of the applied
                                                 mark                                                 Request of the examination (a
                                                                                                      response must be filed within
                                                                                                       two months from the date of
                                                                                                     receipt and may be extended up
                                                                                                              to six months)


                                                                   Official action




                                                                                                       Notification on the results of
                                                                                                        examination of the applied
                                                                                                      mark (a response must be filed
                                                                                                        within six months from the
                                                                                                       date of issue and may not be
                                                                                                                 extended)




       Decision on registration and                                                     Decision on refusal (may be
        issuance of a Registration                                                   appealed within three months from
               Certificate                                                                  the date of receipt)




Registration of the Trademark                                                        Chamber of Patent Disputes
Slide 4. Types of Trademarks

   -   The trademark may be registered in the name of one applicant (legal entity or entrepreneur)
       or a group of applicants (collective trademark);

   -   Word, pictorial, three-dimensional, and other designations and their combinations may be
       registered as trademarks;

   -   Color may be registered as a trademark. Such a trademark may be registered if the color is
       unusual and is not used in traditional coloration of the product;

   -   Acoustic trademarks (theme melodies as trademarks for radio stations), etc.

Slide 5. Latin or Cyrillic?

It is advisable that foreign companies whose trademarks consist of words in Latin letters likewise
register their trademarks in Cyrillic:

   -   During its commercial use – in documents, price tags, commercials, etc. – the name of
       product may and in certain cases must have a Russian equivalent;

   -   Average Russian customer does not necessarily know English and therefore will be unable to
       read and remember a foreign name of goods or services. Consequently it will only be in the
       interests of the manufacturer to make sure that the trademark is perceived and remembered as
       intended;

   -   Registration of Cyrillic equivalent will strengthen the legal protection of the brand in Russia
       and prevent potential registration of confusingly similar Cyrillic trademarks of other
       manufacturers.

       According to the general rule, a trademark registered in Latin letters will impede registration
       of any further applications of Cyrillic phonetic equivalents. However, other parties may apply
       for registration of similar marks rather than direct equivalents, and phonetic similarity alone
       may prove to be insufficient to deem such trademarks confusingly similar.

Slide 6. Cancellation of Trademark Validity Due To Non-Use

As regards the use of trademark after registration, it is important to remember that legislation
stipulates the procedure of early termination of trademark validity upon request of any party if the
trademark is not in use for a continuous period of 3 years from the date of registration. Provision of
evidence of non-use of the trademark is not required on behalf of the applicant. The burden of proof
lies entirely with the right-holder.

Slide 7. Unregistered Famous Brands vs. Unfair Market Actions in Russia

Development of communication media contributes to the rapid growth of public awareness of a
trademark – preceding import of the relevant goods to any country and registration of the trademark
within its borders. An owner of a famous brand may be too late in launching its product on the
Russian market and the trademark may already be registered in the name of a different party.
Intercepting the manufacturer‟s initiative the pirate takes advantage of the trademark. It may
commence manufacturing goods of poor quality thus damaging the reputation of high quality goods
under a famous trademark and misleading consumers as to the manufacturer.

Sometimes Russian pirates impede business practices of a foreign company on the Russian market
and even propose to the legitimate owner to purchase the right to the trademark at a high price.
Consequently the owner of a famous brand suffers great material losses in form of lost profit and
loss of good reputation of a trademark.

Slide 8. Unregistered Famous Brands – Measures against Violation of Rights in Russia

Numerous claims against violation of rights to unregistered famous trademarks in Russia give
momentum to dynamic development of relevant administrative and court practices. To prevent any
possible violation of rights and to stop any existing ones, the following remedies are being exercised
in Russia:

   - Prevention of registration of similar trademarks already at the stage of their examination in the
     Russian patent office – initiative of the agency;

   - Filing an application with the Federal Antitrust Service (FAS) on elimination of unfair
     competition;

   - Filing claims with courts;

   - Filing an opposition with the Chamber of Patent Disputes against the trademark registration;

   - Registration of a well-known trademark.

Slide 9. Prevention of Registration of Similar Trademarks Already at the Stage of Their
Examination at the Russian patent office

Upon issuance of office actions on the results of the examination of trademarks, the examiners often
inform that the applied mark cannot be registered due to the fact that the name is already used by
someone else in relation to similar goods in Russia or abroad. At the same time, as foundation for
their rationale the examiners refer to information found on the Internet.

In view of rise of infringement, the examiner of the patent office is trying to consider all cases that
may potentially arise in the future in court. Use of information from the Internet in the course of
applied trademark examination was necessitated by numerous unfair registrations of another‟s
trademarks or company names including foreign ones, performed through unfair practices, and a
necessity of taking measures to prevent such registrations.

Slide 10. Filing Applications with the Federal Antitrust Service (FAS) on Unfair Competition

   -   FAS can examine applications on unfair acquisition of exclusive rights, i.e. unfair
       registration of another‟s brands, which were not duly registered with Rospatent by the
       genuine right-holder, as one‟s own;
   -   Application can be lodged with FAS even if the infringing (or infringed) mark is not
       registered with Rospatent;

   -   For admission of an application for examination by FAS it is essential that the applicant and
       the infringer were in competition, i.e. traded on the same product market to the same circle of
       customers in the same region;

   -   It is not necessary to prove incurred losses for the actions of either party to be acknowledged
       as an act of unfair competition – proof of the potential that the actions in question may result
       in losses or injury to the business reputation is sufficient;

   -   Independent examination of the introduction of a product to a market;

   -   Absence of a fee for submission and consideration of an application.

Slide 11. Filing Claims with Courts

There is a possibility to apply to court with a claim to invalidate trademark registration made in the
name of another company. But, the courts have not elaborated a common approach for the cases
connected with registration of trademarks for unfair purposes, for example, for further sale of
trademarks to their original owners.

   -   Some courts consider this to be abuse of rights and forbid such actions;
   -   Some courts do not see anything illegal in registering rights to trademarks which do not
       formally belong to anyone, and in their further sale.

In this situation it is quite an uneasy task to prove in court the unfair actions connected with
registration of rights and to cancel the registration.

Slide 12. Filing Oppositions with the Chamber of Patent Disputes against Trademark
Registration

Bases for oppositions:

   -   Registration of marks which are false or misleading in respect to the goods or manufacturer;

       In this case a person who files the opposition will have to submit extensive materials and
       information evidencing that his brand was widely known on the territory of Russia prior to
       the date of priority of the opposed trademark.

   -   Opposed trademark is identical or similar to protected company name or trade name (or to
       separate parts of the company name of trade name), the rights to which were acquired earlier;

   -   If the actions connected with its registration were considered (by FAS or court) as unfair or
       abusing rights.

Slide 13. Registration of Well-Known Trademark

Well-known trademarks enjoy much broader protection.
In order to be deemed well-known, a trademark should possess the following features:

   -   Intensive use;
   -   Wide popularity in Russia among the relevant groups;
   -   Wide popularity as a trademark identifying goods of a particular manufacturer.

The status of a well-known trademark may be given to marks that are:

   -   Not registered in Russia;
   -   Registered as a trademark under national procedure;
   -   Protected in Russia in accordance with international treaties (Madrid system).

At present there are 73 well-known trademarks entered into the List of Well-Known Trademarks in
Russia. Among them are COCA-COLA, NESCAFE, PENTIUM, INTEL, NIKE, GALLUP,
TIFFANY, etc.

Slide 14. Registration of Well-Known Trademark – Continuation

The Civil Code introduced an absolute innovation in respect to well-known trademarks: legal
protection of all types of well-known marks, even if not registered earlier as trademarks in Russia,
covers goods and services for which it was not acknowledged as well-known (!).

In accordance with the previous legislation, only registered trademarks acknowledged to be
well-known could obtain such broad protection in respect to dissimilar goods and services.

So, at present it is possible to obtain the broadest protection for non-registered marks on the territory
of Russia through the procedure of acknowledgement of the mark as well-known.

This rule may only be applied when an applicant for well-known status for the trademark can prove
that (1) a consumer associates it exclusively with him and (2) proves the possibility of his interests
being harmed (materially and non-materially).

Slide 15. Documentary Evidences of Trademark Popularity

In order to prove the popularity of a trademark for cancellation of unfair trademark registration or
acknowledgement of a well-known trademark, it is necessary to present the information on the
following:

   -   Intensive use of trademark, in particular, on the territory of Russia. An applicant may
       indicate the date when the use of trademark started, list of cities where the goods were sold,
       sales volume, types of use, average quantity of consumers per year, market position, etc.
   -   Countries where the trademark was used and gained popularity;
   -   Advertising expenses (for example, annual financial reports);
   -   Value of trademark in accordance with annual financial reports;
   -   Results of marketing research and opinion polls (!) regarding popularity of the trademark,
       done by an independent research company.
Slide 16. Use of Trademark Rights

The Civil Code provides for two main possibilities to use a trademark:

   -   Assignment agreement, when the exclusive right is transferred in full (similar to a sales and
       purchase agreement);

   -   License agreement, when the owner keeps the exclusive right and provides to a licensee a
       right to use the trademark, limited by the provisions of the agreement.

Trademark assignment agreements and license agreements are to be concluded in writing and must
be registered at the Russian patent office.

Slide 17. Legal Protection of Company Names

As for the company names, in accordance with the Russian Civil Code, a legal entity obtains the
exclusive right to use its company name as soon as the company is registered and entered into the
Unified State of Register of Legal Entities.

From this moment, the company may forbid use of identical or confusingly similar company names
and trademarks, which were registered later, for the same goods or services.

As for foreign companies, their company names enjoy protection on the territory of Russia without
registration due to the provisions of the Paris Convention on the Protection of IP.

Pursuant to the Part 4 of the Civil Code, a company name shall not contain the words “Russia” or
“Russian Federation”. Prior to January 2008, the information indicated could be used in company
names subject to obtaining permission from the relevant authorities. Presently, a complete ban is in
effect. The only exceptions are for state unitary enterprises and enterprises in which the state holds
over 75% of the shares. Use of words “Russian” and “Rus” is allowed.

Slide 18. Legal Protection of Trade Names

Part 4 of the Civil Code brings into effect several new legal provisions pertaining to the use of trade
names for identification of commercial, industrial or other enterprises. The right-holder has an
exclusive right to use the trade name if it is sufficiently distinctive and its use is widely known
within the boundaries of a certain area, i.e. within some administrative territorial division (city,
district or neighborhood).

A trade name is a method of identifying the property of a company (premises, etc.) – names of
stores, beauty salons, cafes, factories. Primarily, trade names are used in the service sector.

A trade name is neither subject to any state registration, nor to mandatory record in statutory
documents or the Unified State Register of Legal Entities.

The exclusive right to a trade name occurs from the time its owner starts to use it, upon creation of
the property complex.
Slide 19. Legal Protection of Trade Names – Recommendations

It is not permitted to use a trade name that is confusingly similar to any company name, trademark or
trade name owned by a third party whose exclusive right originated earlier.

Recommendation: in such event, it is necessary to properly document the fact of creation of the trade
name and the moment of commencement of its use, including introducing amendments into statutory
documents.

The right to a trade name is easy to acquire, but also easy to lose. If the trade name is not used by the
right-holder for a continuous period of one year, the exclusive right to that trade name is terminated.

Recommendation: to maintain its reputation at least at a minimal level – periodic public articles and
place advertising. In advertisement the trade name must be connected to a property complex, it must
be clear to the consumer that the advertised name – is the name of a specific store.

Slide 20. Legal Protection of Trade Names vs. Trademarks

Up to the present, in the event of a conflict between an unregistered trade name and a registered
trademark, court authorities protected the right-holder of the trademark.

Why are Trademarks considered stronger than Trade Names?

   -   Prior to the approval of the Part 4 of the Civil Code there was no standard in the Russian
       legislation governing the relations arising out of the trade name use;
   -   Legal regulation of trademarks still remains more clear and detailed;
   -   List of actions that are deemed violation of exclusive rights of a trademark owner are
       essentially wider than that of trade names;
   -   Established court practice in respect to the protection of rights to trademarks;
   -   Trademarks are subject to registration that allows to secure the priority date to such item and
       afterwards to prove this priority.

Slide 21. Legal Protection of Domain Names

Despite the fact that in the draft of Part 4 of the Civil Code domain names was specified as one of
the intellectual property items, they were not included in the final text of the Civil Code, so their
registration and use is not governed by the standards of the Civil Code.

In spite of the above, the Russian Arbitration Courts acknowledge that domain names have actually
been transformed into a means fulfilling the function of a trademark, which makes it possible to
distinguish products and services of one entity from the products and services of another entity.

If a domain name represents a trademark held by another party, such infringement cases are
considered by the courts. The use of another party‟s trademark in a domain name allowing attracting
on the Internet potential buyers of goods and services of the trademark owner, without consent of the
latter, is illegal. Pursuant to Article 10bis of the Paris Convention for the Protection of Industrial
Property, all actions capable of leading to confusion in relation to enterprises, their products, or
industrial or business activity in any manner are subject to prohibition.
In accordance with the court practice, registration of a domain name without its use or the use of the
domain name in respect to dissimilar goods and services may not be considered as unlawful use of a
trademark.

Part 4 of the Civil Code indicates that a domain name can be grounds for canceling the trademark
registration, provided they are identical and rights to the domain name are obtained before the
priority date of the trademark. Objection against trademark registration may be filed with the
Chamber of Patent Disputes of the Russian patent office.

								
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