(CERTAIN LEGAL ASPECTS)
by Dr. Götz-Sebastian Hök (Berlin) and Dr. Andrei Zalivako (Moscow)
Legal protection of a trademarks in the Russian Federation (the “RF”) shall be provided either on the basis of its state registration in accordance with the procedure established by the RF legislation and particularly by the RF Law “on Trademarks, Service Marks and Names of Origins of Goods,” dated September 23, 1992 (the “Trademarks Law”) or by operation of the international treaties of the Russian Federation.
Below we provide a summary of certain aspects of a trademarks registration in Russia.
An appropriate application for a trademark registration must be filed with the RF State Patent Authority (“Rospatent ”) through a registered patent attorney, who is acting on the basis of a power of attorney. Such patent attorney shall work out the content of an application on the basis of relevant information provided by an applicant. The application will then be submitted to Rospatent, together with a confirmation of payment of Rospatent’s fees.
A list of Rospatent’s fees is provided in a document, which named “On Temporary Tariffs on Patent and Information Services” (the “Tariffs”). In particular, the fee for an ordinary application for registration of a trademark and for a search in a trademarks database is in the range of 60 US Dollars for each application. There is a discount provided for a search on several trademarks.
The Tariffs also provides for a possibility of requesting of an urgent consideration (within four months) of an application. This option would require paying higher fees. First is a payment of 180 US Dollars for an urgent consideration of application; and second is for Rospatent services, which may amount up to 600 US Dollars for each claimed trademark. Fees amounts may also be subject for a change.
Upon filing of an application, a preliminary examination of the application (the “Preliminary Examination”) must be undertaken to consider the contents of the application and its attachments. In accordance with the Trademarks Law, the Preliminary Examination lasts for up to one month after the date of filing. During the Preliminary Examination, Rospatent may request additional documents or information from the applicant. Depending on the results of the Preliminary Examination, an applicant shall be informed either on acceptance of his application or on its refusal.
After the Preliminary Examination is finalized, the essence of the application (i.e. patentability of the trade mark) will be considered through a process called the Examination of the Claimed Trademark. On the basis of the Examination of the Claimed Trademark a decision shall be passed either to register the trademark or to reject its registration. The term of the process is not specified in the Trademark Law. In practice, the process may last for up to one year after the date of filing of an application.
Provided that the Examination of the Claimed Trademark results in a favorable conclusion for the applicant, Rospatent will issue a decision to include the applicant’s trademark into the State Register of Trademarks, Service Marks and Names of Origins of Goods of the Russian Federation. Registration Certificate is issued to the applicant within three months upon inclusion of the trademark into the Register.
The Term of the Validity of the Registration
Registration of a trademark shall be valid for ten years from the date of receipt of the application by Rospatent. Term of validity of the trademark registration may be renewed upon request of a trademark holder, submitted within the last year of its validity, each time for a period of ten years.
Further Protection of Trademarks
Prevention of trademark infringement and prosecution of counterfeiters must include the following actions: filing of a statement of civil claim against sellers of counterfeit products and recourse for the law enforcement agencies assistance.
In the first instance, the holder of a trademark is entitled to file a lawsuit against a legal entity engaged in the sale of products identical to, or similar with the protected product and to request to stop such illegal sales and/or to claim a compensation of loss incurred. Such a lawsuit is to be brought before the arbitration court of the competent jurisdiction (i.e. to the arbitration court of the region, where the respondent’s office is registered). In an unlikely case of a respondent being an individual, such claim must be filed with the local court of common jurisdiction either at the respondent’s place of residence or at the place of infliction of damages.
Having discovered that a party is selling counterfeit products, the holder of a trademark is entitled to file an application with the local police (militia) department to prosecute the counterfeiter. The police (militia) officers are obliged to inspect the facts described in the application and to initiate a criminal investigation of the case under Article 180 of the RF Criminal Code (“Illegal Use of a Trade mark”) and to prosecute the suspect(s) if counterfeiting is established. Section 1 of Article 180 provides for criminal liability for the illegal use of a trademark, if such use was of a repeated nature or caused a material loss.
For foreign businesses intending to register trademarks in Russia it would be a benefit to know that since only registered patent attorneys are permitted to work with Rospatent on behalf of an applicant, trademark registration expenses are mostly limited to the state registration fees and amounts of patent attorneys compensation, which are acceptable. As far as fees for legal representation of a holder of a trademark in court and/or during criminal investigation proceedings are concerned it is too difficult to accurately estimate any related costs, prior to examining all of the circumstances of the case.