Read the article in the latest issue of the World Intellectual Property Review (issue 4/2022) written by our European Trademark Attorney Riikka Palmos.
Registering IP in Russia, Moldova, Ukraine and Uzbekistan
Palmos is an expert in trademark law within Russia and several of its neighboring countries. She takes us through some of the ins and outs of registering IP in the region.
Papula-Nevinpat trademark lawyer and senior partner Riikka Palmos has been with the company since 1995. She has a lifelong passion for the Russian language and culture, attending the Finnish-Russian school in Helsinki and going on to become an expert in trademark law for Russia, Moldova, Ukraine and Uzbekistan.
“These countries are developing their IP laws and practices a lot,” says Palmos. “They all now allow electronic filings, for example. This has been important for business continuity during the pandemic, while patent offices have been partly closed and examiners working from home.”
Full examination of trademark applications typically takes from six to 10 months, depending on the country. Multi-class trademarks are allowed in all the countries and their patent offices follow the Nice Classification. Power of attorney is always needed and applications must be filed in local languages.
“In Russia, it’s advisable to file separate applications for the Cyrillic and Latin versions of a mark, as they are not considered as the same,” says Palmos. “Expedited examinations are possible, but the trademark search in all classes is made at the cost of the applicant. This can be costly, but the process is usually completed within a couple of months.”
Russia has a long opposition period, with challenges allowed for a full five years after registration. It’s important for companies to keep good documentation about their trademarks, as Russia has strict requirements for proving use in the face of possible cancellation actions. License agreements with third parties must be recorded in order to be valid.
“Russia will soon introduce the Eurasian Trademark System, covering Russia, Amenia, Belarus, Kazakhstan and Kyrgyzstan,” says Palmos. “It’s similar to the Madrid system for international trademarks, which means that with one application and registration you get protection in five countries.”
In Moldova, it is recommended to register marks in both the Latin and Cyrillic alphabets, to accommodate both the local market and neighboring Russia. The opposition period is three months from publication for national trademarks, and six months for international ones.
“Expedited examination is possible in Moldova and there are further plans to simplify the registration process,” says Palmos. “But there are still no established practices for registering non-traditional trademarks. Colors, shapes and holograms can only be registered as part of 3-D trademarks.”
“In Moldova – as in many other countries – contesting identical trademarks in different classes requires comprehensive evidence of the use and acquired fame in the country,” she says.
“For example, the owner of the Borsalino hat trademark – in class 25 – filed an opposition against the identical trademark in class 33. The opposition was refused, as the submitted evidence did not convince the appeals board about the fame of Borsalino hats in Moldova,” says Palmos.
Although Ukrainian is similar to Russian, it is a distinct language and uses a different Cyrillic alphabet. Both alphabets should be considered when registering a mark.
A new official opposition process was adopted in August 2020, with the opposition term now three months from the publication date. This only applies to applications filed after 16 August, with no retrospective effect on applications filed before this date.
“Letters of consent are generally accepted for overcoming office actions in Ukraine, as long as registration of the trademark will not mislead consumers,” says Palmos. “Only the prior owner is able to re-register a withdrawn or expired trademark within two years after expiry.”
With its strict requirements and close governmental control, the IP registration process in Uzbekistan is very challenging. But things are changing.
Since 16 September 2020, electronic filings have been possible, and since October 2020 the term for a cancellation due to non-use has been reduced from five years to three. From April 2021, expedited examinations should be possible too.
Palmos refers to an interesting case with the attempt to register TRAVAGRA when TRAVATAN had already been registered in class 5. Opposition was refused, as there are many trademarks in Uzbekistan with the common part ‘trava’ (‘трава’), which means ‘grass’.
“In Uzbekistan, the co-existence of prior marks having identical parts helps the registration of similar marks,” says Palmos. “The beginning of the words is significant in the similarity evaluation.”
See here the webinar recordal on the topic.