Is your brand protected – also in Russia?
Trademarks, or brands, play many important roles in business:
– Differentiation – your trademark distinguishes your products and services from those of your competitors.
– Sign of quality – consumers tend to associate quality and other positive attributes with certain trademarks.
– Value – your trademark is part of your company’s assets. You can sell, license, or pledge your trademark.
But the most important feature of a registered trademark is that it gives you an exclusive right to use your trademark, and a right to prevent others from using infringing marks in connection with the same or similar goods and/or services.
The above-listed roles of a trademark and the exclusive right it provides together strengthen the reputation of your mark and the consumers’ loyalty to your brand. We can say that the value of a trademark comes from its reputation, the consumers’ brand loyalty, and the feeling of quality and images associated with the trademark. That’s why it is so very important to ensure that such a valuable asset is properly protected.
Why especially in Russia?
Protecting your trademark officially, namely registering it at the Russian Federal Service for Intellectual Property, Rospatent, is particularly important so that you can protect and enforce your exclusive rights to the trademark.
This is because according to the Russian trademark legislation and practice, the use of a trademark doesn’t provide any protection in and of itself. If you want to be able to enforce and defend your trademark rights, the mark needs to be officially registered.
The application and registration process is a simple procedure. However, what is important in the process is to make sure that the application is filed in time. This is a key consideration because, according to the Russian regulations, the first one to file for a trademark will invariably be recorded as the official trademark holder, regardless of whether the filer is the right owner of the trademark or just some third party.
Bad faith registrations
In business, some just don’t play by the rules. Especially the well-known and reputed brands are often targeted by copycats and opportunists seeking to profit from the brand’s reputation. In consequence, many trademark owners have fallen victim to bad faith registrations in Russia, and lately there’s been an unpleasant surprise also waiting for many domain name applicants in the Russian market.
In a typical case, the real trademark owner would not be able to register the mark because there is a prior, identical or confusingly similar trademark blocking the registration. Arguing that the prior registration was filed in bad faith wouldn’t help in this situation, because Rospatent doesn’t consider complaints about bad faith registrations.
The situation may become so severe that the trademark owner will not be able to enter the Russian market. In such a case, these bad faith filers usually respond by offering to sell the trademark or domain name back to its true owner at a profit.
Although there’s a fair chance to get a bad faith registration cancelled at court, the process takes time and effort, and is expensive.
How to avoid unpleasant surprises?
All prior registrations are not necessarily filed in bad faith. As Russian companies are also very aware that trademarks need to be registered to enjoy protection, it may happen that local retailers and agents register their partners’ trademarks in their own name.
This may not be a problem as long as business runs smoothly, but problems and confusion about the owner may arise at the end of the partnership. To be on the safe side, it’s therefore absolutely advisable to make sure that the trademark is registered to its real owner.
While it’s certainly not possible to be prepared for all imaginable scenarios, the following checklist will help you to confidently and safely do business in the Russian market without jeopardizing your trademark rights:
1. Be in time – file your trademark application and register your domain name as early as possible.
2. Assert your rights – register your trademark in your own name, or make a clear contract with your retailers to specify the ownership of the mark.
3. Ensure sufficient scope of protection – it’s important to protect the right goods and services and get a sufficiently broad scope of protection for your mark.
4. Use your trademark – the requirements of trademark use are strict, so make sure you know them to avoid possible non-use cancellation actions.
5. Remember the Russian specifics – a trademark registered in the Latin alphabet doesn’t protect the Cyrillic version of the mark.
6. React to infringements – trademark protection means you need to enforce your rights. By reacting to possible violations, you are also building the strength, value and reputation of your brand.
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Papula-Nevinpat's Riikka Palmos has written an update on trademark use and registration in Russia's changing IP landscape. The article was published as a cover story in the latest edition of The Trademark Lawyer Magazine, Issue 4, 2023.