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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