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ICLG
The International Comparative Legal Guide to:
Trade Marks 2019
8th Edition
A practical cross-border insight into trade mark work
Published by Global Legal Group, with contributions from:
Acapo AS Fukami Patent Office, P.C. Moravčević Vojnović and Partners
Advance Partners Gowling WLG in cooperation with Schoenherr
Arent Fox LLP Hannes Snellman Attorneys Ltd. Nater Dallafior Rechtsanwälte AG
Baptista, Monteverde & Associados, HSM IP Ltd. OFO VENTURA
Sociedade de Advogados, SP, RL Hule Bachmayr-Heyda Nordberg OLIVARES
Bird & Bird LLP Rechtsanwälte GmbH OSH Advocates, Solicitors & Legal Consultants
Bolet & Terrero Kadasa Intellectual Property Papula-Nevinpat
Borenius Attorneys Ltd KOREJZOVA LEGAL v.o.s. Patentna pisarna d.o.o.
Bouwers Inc. Koushos Korfiotis Pham & Associates
Camilleri Preziosi Advocates Papacharalambous LLC PORZIO ∙ RIOS ∙ GARCIA
Clarke Gittens Farmer Law Offices of Patrinos & Kilimiris S. P. A. Ajibade & Co.
Daniel Law Le Poole Bekema Samuriwo Attorneys
DunnCox Lee International IP & Law Group Shearn Delamore & Co.
East & Concord Partners LK Shields Sołtysiński Kawecki & Szlęzak
Ehrlich, Neubauer & Melzer (EN&M), Lubberger Lehment Subramaniam & Associates (SNA)
of Ehrlich Group
Lydian SyCip Salazar Hernandez & Gatmaitan
ELZABURU
McCullough Robertson TIPLO Attorneys-at-Law
Fross Zelnick Lehrman & Zissu, P.C.
Miller Thomson LLP United Trademark & Patent Services
FTCC Studio Legale AssociatoThe International Comparative Legal Guide to: Trade Marks 2019
General Chapters:
1 Ranging Abroad: a Spotlight on Infringements Online, and Where to Fight Them –
Nick Aries & Tristan Sherliker, Bird & Bird LLP 1
2 Use It or Lose It: Truer Than Ever in the U.S.A. – Karen Lim & Jason D. Jones,
Fross Zelnick Lehrman & Zissu, P.C. 6
Contributing Editor
Nick Aries,
Country Question and Answer Chapters:
Bird & Bird LLP 3 Australia McCullough Robertson: Belinda Breakspear & Peter Stokes 11
Sales Director 4 Austria Hule Bachmayr-Heyda Nordberg Rechtsanwälte GmbH: Emanuel Boesch 19
Florjan Osmani
5 Barbados Clarke Gittens Farmer: Rosalind K. Smith Millar QC 30
Account Director
Oliver Smith 6 Belgium Lydian: Annick Mottet Haugaard & Blandine de Lange 37
Sales Support Manager 7 Bolivia Bolet & Terrero: Juan Ignacio Zapata 47
Toni Hayward 8 Brazil Daniel Law: Robert Daniel-Shores & Roberta Arantes 56
Editor 9 Canada Miller Thomson LLP: Catherine M. Dennis Brooks & David Reive 67
Nicholas Catlin
10 Cayman Islands HSM IP Ltd.: Sophie Peat & Huw Moses 76
Senior Editors
Caroline Collingwood 11 Chile PORZIO ∙ RIOS ∙ GARCIA: Cristóbal Porzio & Marcelo Correa 84
Rachel Williams 12 China East & Concord Partners: Charles (Chao) Feng 93
CEO 13 Cyprus Koushos Korfiotis Papacharalambous LLC: Eleni Papacharalambous &
Dror Levy Georgia Charalambous 103
Group Consulting Editor 14 Czech Republic KOREJZOVA LEGAL v.o.s.: Dr. Petra de Brantes & Mgr. Ivana Toningerová 112
Alan Falach
15 Finland Borenius Attorneys Ltd: Åsa Krook & Ben Rapinoja 119
Publisher
Rory Smith 16 France Gowling WLG: Céline Bey & Clémence Lapôtre 126
Published by 17 Germany Lubberger Lehment: Anja Wulff 138
Global Legal Group Ltd. 18 Greece Law Offices of Patrinos & Kilimiris: Maria Kilimiris & Manolis Metaxakis 146
59 Tanner Street
London SE1 3PL, UK 19 India Subramaniam & Associates (SNA): Hari Subramaniam & Philip Abraham 154
Tel: +44 20 7367 0720 20 Ireland LK Shields: Peter Bolger & Jane O’Grady 163
Fax: +44 20 7407 5255
Email: info@glgroup.co.uk 21 Israel Ehrlich, Neubauer & Melzer (EN&M), of Ehrlich Group: Yehuda Neubauer &
URL: www.glgroup.co.uk Keren Rubinstein 172
GLG Cover Design 22 Italy FTCC Studio Legale Associato: Filippo Canu & Pierluigi Cottafavi 182
F&F Studio Design
23 Jamaica DunnCox: Joanne Wood Rattray & Kelly Akin 192
GLG Cover Image Source
24 Japan Fukami Patent Office, P.C.: Yoshitake Kihara & Miki Tomii 202
iStockphoto
25 Korea Lee International IP & Law Group: Mi-Cheong Lee & Robert M. Kim 209
Printed by
Ashford Colour Press Ltd 26 Malaysia Shearn Delamore & Co.: Karen Abraham & Janet Toh 216
April 2019
27 Malta Camilleri Preziosi Advocates: Steven Decesare & Sharon Xuereb 227
Copyright © 2019 28 Mexico OLIVARES: Alonso Camargo & Daniel Sanchez 235
Global Legal Group Ltd.
All rights reserved 29 Netherlands Le Poole Bekema: Anne Bekema & Laura Broers 245
No photocopying
30 Nigeria S. P. A. Ajibade & Co.: John Chike Onyido & Oluwasolape Owoyemi 254
ISBN 978-1-912509-69-0 31 Norway Acapo AS: Kjersti Rogne & Kjersti Staven-Garberg 263
ISSN 2049-3118
32 Philippines SyCip Salazar Hernandez & Gatmaitan: Vida M. Panganiban-Alindogan 270
Strategic Partners
33 Poland Sołtysiński Kawecki & Szlęzak: Dr. (hab.) Ewa Skrzydło-Tefelska &
Karol Gajek 279
34 Portugal Baptista, Monteverde & Associados, Sociedade de Advogados, SP, RL:
Filipe Teixeira Baptista & Joana Cunha Reis 287
35 Russia Papula-Nevinpat: Annikki Hämäläinen 295
36 Saudi Arabia Kadasa Intellectual Property: Mohammad Jomoa & Asif Iqbal 302
37 Serbia Moravčević Vojnović and Partners in cooperation with Schoenherr:
Andrea Radonjanin 312
Continued Overleaf
Further copies of this book and others in the series can be ordered from the publisher. Please call +44 20 7367 0720
Disclaimer
This publication is for general information purposes only. It does not purport to provide comprehensive full legal or other advice.
Global Legal Group Ltd. and the contributors accept no responsibility for losses that may arise from reliance upon information contained in this publication.
This publication is intended to give an indication of legal issues upon which you may need advice. Full legal advice should be taken from a qualified
professional when dealing with specific situations.
WWW.ICLG.COMThe International Comparative Legal Guide to: Trade Marks 2019
Country Question and Answer Chapters:
38 Slovenia Patentna pisarna d.o.o.: Irena Kadunc & Vesna Kovič 319
39 South Africa Bouwers Inc.: Deon Bouwer & Adele Els 327
40 Spain ELZABURU: Fernando Ilardia & Ana Sanz 334
41 Sweden Hannes Snellman Attorneys Ltd.: Christopher Tehrani & Nedim Malovic 346
42 Switzerland Nater Dallafior Rechtsanwälte AG: Dr. Mathis Berger 354
43 Taiwan TIPLO Attorneys-at-Law: J. K. Lin & H. G. Chen 362
44 Turkey OFO VENTURA: Özlem Fütman 373
45 Uganda OSH Advocates, Solicitors & Legal Consultants: Fredrick K. Sentomero &
Doreen Mwesige 383
46 Ukraine Advance Partners: Oleg Zhukhevych & Maksym Kravchenko 389
47 United Arab Emirates United Trademark & Patent Services: Maria Farrukh Irfan Khan &
Sarmad Hasan Manto 400
48 United Kingdom Bird & Bird LLP: Nick Aries & Daisy Dier James 408
49 USA Arent Fox LLP: Michael A. Grow & James R. Davis, II 416
50 Vietnam Pham & Associates: Pham Vu Khanh Toan 424
51 Zimbabwe Samuriwo Attorneys: Nancy Samuriwo 433Chapter 35
Russia
Papula-Nevinpat Annikki Hämäläinen
■ Trade marks which are false or misleading in respect of the
1 Relevant Authorities and Legislation goods or manufacturer thereof.
■ Trade marks that contradict the social interests and principles
1.1 What is the relevant trade mark authority in your of humanity and morality.
jurisdiction? ■ Trade marks that are confusingly similar to: the official
names and images of valuable objects of the cultural heritage
The relevant authority is the Federal Institute of Industrial Property of the Russian Federation; or objects of world cultural or
natural heritage.
(FIPS).
2.3 What information is needed to register a trade mark?
1.2 What is the relevant trade mark legislation in your
jurisdiction?
The following information is required:
The relevant legislation is the Russian Civil Code, part IV. ■ Applicant’s name and address.
■ List of goods/services according to the international
classification.
2 Application for a Trade Mark
■ Print of the mark (not for word marks).
■ Priority document, if priority is claimed, together with a
2.1 What can be registered as a trade mark? notarised English translation thereof if the document is not in
English or Russian.
Verbal, pictorial, dimensional and other designations (i.e. sound ■ Power of attorney; no notarisation or legalisation is needed.
marks) or combinations thereof, can be registered as trade marks. A
trade mark may be registered in any colour or combination of 2.4 What is the general procedure for trade mark
colours. registration?
2.2 What cannot be registered as a trade mark? The registration procedure includes formal and substantive
examinations. The examination process is relatively strict. The
formal examination is conducted within one month of the filing of
The following may not be registered as a trade mark:
the application. After the formal examination is completed, the
■ Signs that cannot individualise the goods or services.
application proceeds under the substantive examination. The
■ Non-distinctive trade marks or marks consisting only of examiners study absolute and relative grounds and, based on the
elements: results, may issue an office action or an acceptance decision. The
■ which have entered into general use; registration fee must be paid within four months of the acceptance
■ which are generally accepted terms or symbols; decision.
■ which characterise the goods, including specifying the type, The office action can be responded to within six months; no
quality, quantity, properties, purpose or value thereof, and extension is possible.
also the place, time, and means of production and sale; or
■ which represent the form of goods which is determined
exclusively or chiefly by the properties or purpose of the 2.5 How is a trade mark adequately represented?
goods.
■ Trade marks consisting only of: elements representing state A trade mark must be distinctive, can be either in colour or in black
arms, flags, and other State symbols and marks; abbreviated or and white, and must be submitted in a high-resolution format. A
full names of international and intergovernmental organisations sound trade mark shall be submitted in the form of musical notation
and the arms, flags, and other symbols and marks thereof; or a written description.
official control, guarantee, or assay marks, seals, awards, and
other marks of distinction; or elements confusingly similar to
those mentioned above.
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2.6 How are goods and services described? 2.16 Does your jurisdiction recognise Collective or
Certification marks?
The Russian Patent Office follows, relatively strictly, the Nice
Classification, 11th edition. Russia recognises only collective trade marks.
2.7 What territories (including dependents, colonies, etc.) 3 Absolute Grounds for Refusal
Russia
are or can be covered by a trade mark in your
jurisdiction?
3.1 What are the absolute grounds for refusal of
A trade mark covers only the territory of the Russian Federation. registration?
A trade mark which falls within the restrictions detailed in question
2.8 Who can own a trade mark in your jurisdiction?
2.2 will be refused on absolute grounds.
A trade mark can be owned by a legal entity or by an independent
entrepreneur. 3.2 What are the ways to overcome an absolute grounds
objection?
2.9 Can a trade mark acquire distinctive character Absolute grounds can be overcome by disclaiming the non-
through use?
protectable elements or submitting documents confirming that the
mark has gained distinctive character through long and intensive use
Prior use is rarely protected; essentially, only a registered trade mark in the Russian Federation. It is also possible to provide consent from
enjoys protection. the relevant authority to register official symbols as unprotected
elements of a trade mark.
2.10 How long on average does registration take?
3.3 What is the right of appeal from a decision of refusal
A smooth registration process takes about 10–12 months. of registration from the Intellectual Property Office?
2.11 What is the average cost of obtaining a trade mark in An appeal against a rejection decision can be filed within four
your jurisdiction? months of the date of issuance of the decision with the Patent
Disputes Chamber.
The official fees for obtaining a trade mark in one Class amount to
USD 665 including the examination and registration fee. 3.4 What is the route of appeal?
2.12 Is there more than one route to obtaining a An appeal filed with the Patent Disputes Chamber is considered at a
registration in your jurisdiction? hearing. The decision of the Patent Disputes Chamber can be
further appealed at the IP Court.
National registration can be registered only through a registration
process at the Federal Institute of Industrial Property. Russia is also
4 Relative Grounds for Refusal
a member of the Madrid Agreement and Madrid Protocol, and thus
protection can be obtained through an International Registration.
4.1 What are the relative grounds for refusal of
registration?
2.13 Is a Power of Attorney needed?
The relative grounds are the following:
Yes, a Power of Attorney is needed.
■ A mark is confusingly similar to a prior trade mark
application/registered trade mark or well-known trade mark
2.14 If so, does a Power of Attorney require notarisation applied/registered for similar goods/services.
and/or legalisation?
■ A mark is confusingly similar to a prior applied or registered
appellation of origin.
No, no notarisation or legalisation is needed; the Power of Attorney ■ A mark is confusingly similar to a prior company name,
must simply be signed. domain name or selection achievement.
■ A mark is confusingly similar to a prior design.
2.15 How is priority claimed?
4.2 Are there ways to overcome a relative grounds
Russia is a member of the Paris Convention and accepts priorities objection?
from Convention applications.
Relative grounds may be overcome by arguments, limitation of the
list of goods and services or a letter of consent (provided that the
marks do not mislead the consumer).
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registration fees, the Patent Office registers the mark in the State
4.3 What is the right of appeal from a decision of refusal Register of Trade Marks and issues a registration certificate.
of registration from the Intellectual Property Office?
An appeal against a rejection decision can be filed, within four 6.2 From which date following application do an
applicant’s trade mark rights commence?
months of the date of issuance of the decision, with the Patent
Disputes Chamber.
The trade mark rights commence from the application date.
Russia
4.4 What is the route of appeal?
6.3 What is the term of a trade mark?
An appeal filed with the Patent Disputes Chamber is considered at a
hearing. The decision of the Patent Disputes Chamber can be The mark is valid for 10 years from the filing date of the application.
further appealed at the IP Court.
6.4 How is a trade mark renewed?
5 Opposition
The validity term can be renewed for 10 years at the request of the
owner. The renewal request can be filed at the earliest one year prior
5.1 On what grounds can a trade mark be opposed? to the renewal date. Late renewal is possible within six months after
expiration of the renewal due date.
A registration can be opposed based on absolute and relative
grounds. The absolute grounds are as follows: 7 Registrable Transactions
■ The mark was registered despite absolute grounds of refusal.
■ The mark was not registered in the name of a legal entity or
an independent entrepreneur. 7.1 Can an individual register the assignment of a trade
mark?
■ The mark was registered in the name of the agent or
representative of the mark’s owner in one of the Member
States of the Paris Convention for the Protection of Industrial No, the assignment of a trade mark can be registered only by a legal
Property. entity or by an independent entrepreneur.
■ The mark was registered in bad faith or as an act of unfair
competition.
7.2 Are there different types of assignment?
The opposition term in these cases is the whole period of trade mark
validity. The assignment can be partial, i.e. only in respect of a part of the
The relative grounds are: goods/services, or can cover all registered goods and services.
■ The registered mark is confusingly similar to a prior trade
mark application/registered trade mark, well-known trade
7.3 Can an individual register the licensing of a trade
mark applied/registered for similar goods/services, prior
mark?
applied or registered appellation of origin, prior copyright,
famous person or prior design.
No, the licence agreement in respect of a trade mark can be
The opposition period is five years from the publication date.
registered only by a legal entity or by an independent entrepreneur.
5.2 Who can oppose the registration of a trade mark in
your jurisdiction? 7.4 Are there different types of licence?
The opposition can be filed by an interested party. A licence can be exclusive or non-exclusive. There is also a
compulsory licence.
5.3 What is the procedure for opposition?
7.5 Can a trade mark licensee sue for infringement?
The opposition can be filed within five years of the publication date
with the Patent Disputes Chamber. The Patent Disputes Chamber No, this right belongs to the owners.
considers the opposition during a hearing and issues a decision. The
decision of the Patent Disputes Chamber can be appealed at the IP 7.6 Are quality control clauses necessary in a licence?
Court.
Yes, usually they are required.
6 Registration
7.7 Can an individual register a security interest under a
trade mark?
6.1 What happens when a trade mark is granted
registration?
No, a security interest under a trade mark can be registered only by
a legal entity or by an independent entrepreneur.
After issuance of an acceptance decision, the registration fees must
be paid within four months. Within one month of the payment of the
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7.8 Are there different types of security interest? 9.2 What is the procedure for invalidation of a trade
mark?
No, there are not.
An invalidation action can be filed within five years of the publication
date with the Patent Disputes Chamber, or during the whole term of
8 Revocation the validity of the mark. The Patent Disputes Chamber considers the
Russia
invalidation actions during a hearing and issues a decision.
8.1 What are the grounds for revocation of a trade mark?
9.3 Who can commence invalidation proceedings?
The following are grounds for revocation:
■ Expiration of the validity term of a trade mark. The invalidation action can be filed by an interested party.
■ Based on a Court decision issued in respect of a collective
trade mark, on the use of the mark for goods that do not 9.4 What grounds of defence can be raised to an
possess common characteristics. invalidation action?
■ Based on a decision of cancellation of a trade mark due to
non-use. The defence can use dissimilarity arguments, prior coexistence of
■ Based on a decision to cancel a trade mark because of the marks, the bad-faith argument and other arguments confirming
invalidation of the owner due to bankruptcy. their position.
■ Based on withdrawal of a registered mark.
■ Based on a decision that the trade mark has lost the distinctive 9.5 What is the route of appeal from a decision of
character and has become a commonly used word. invalidity?
8.2 What is the procedure for revocation of a trade mark? The decision of the Patent Disputes Chamber can be appealed at the
IP Court.
Depending on the grounds of revocation, a request can be filed with
the Patent Disputes Chamber or the Court. 10 Trade Mark Enforcement
8.3 Who can commence revocation proceedings?
10.1 How and before what tribunals can a trade mark be
enforced against an infringer?
Revocation proceedings based on non-use of a collective trade
mark, or based on a decision that the trade mark has lost the
A trade mark can be enforced in the arbitration courts, IP Court,
distinctive character and has become a commonly used word, can be
Federal Antimonopoly Committee and law enforcement agencies by
filed by an interested person. Revocation proceedings based on
submitting claims.
withdrawal of the mark can be commenced by the owner, and
revocation proceedings based on invalidation of the owner due to
bankruptcy can be commenced by any person. 10.2 What are the key pre-trial procedural stages and how
long does it generally take for proceedings to reach
trial from commencement?
8.4 What grounds of defence can be raised to a
revocation action?
Usually a pre-trial dispute resolution procedure is required before
starting the Court proceedings in arbitrage courts and the IP Court.
The defence can submit evidence confirming the use of the mark or
The pre-trial procedure lasts up to 30 days. In cancellation actions
other documents confirming their position.
due to non-use cases, the pre-trial stage takes two months. The pre-
trial procedure is not required when appealing a decision of the
8.5 What is the route of appeal from a decision of Patent Office or other governmental body.
revocation?
10.3 Are (i) preliminary, and (ii) final injunctions available
The decision of the Patent Office can be appealed at the Court; the and if so on what basis in each case?
decision of the IP Court can be appealed at the Court of Cassation.
When submitting an application for injunctions, it is necessary to
9 Invalidity prove that the defendant has an intention not to follow the Court
decision (this is done so that interim measures do not become an
instrument of competition). In practice, this is impossible; therefore,
9.1 What are the grounds for invalidity of a trade mark? injunctions are approved extremely rarely and in the most
exceptional cases.
It is possible to invalidate a mark on absolute or relative grounds. However, in disputes over domain names the situation is different:
Please see question 5.1. since the domain name can be quickly transferred to another person,
the Court applies injunctions to the transfer of the domain name in
each case.
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10.4 Can a party be compelled to provide disclosure of 10.10 What, if any, are the provisions for unauthorised
relevant documents or materials to its adversary and threats of trade mark infringement?
if so how?
There are no specific provisions regarding unauthorised threats of
Yes, a party can be compelled to provide disclosure of relevant trade mark infringement, but they may be regarded as unfair
documents. In the case that the Court finds evidence to be important business practice.
Russia
for the consideration of the case, it can compel a party to provide
disclosure of this evidence. The Court issues a special ruling, which
indicates the time limit and procedure for the presentation of 11 Defences to Infringement
evidence.
A copy of the ruling is sent to the involved parties, as well as to a 11.1 What grounds of defence can be raised by way of
third party from whom the evidence is requested by the Court. If the non-infringement to a claim of trade mark
evidence cannot be presented, the third party must inform the Court infringement?
of this.
In case of refusal to provide evidence, the Court may impose a fine. Possible grounds include arguments about dissimilarity of the used
marks and used goods/services, prior co-existence of the marks,
plaintiff acting in bad faith, and other arguments supporting their
10.5 Are submissions or evidence presented in writing or
position.
orally and is there any potential for cross-examination
of witnesses?
11.2 What grounds of defence can be raised in addition to
Usually evidence is provided in writing. Arbitration courts prefer non-infringement?
formal procedures. However, in some cases, the courts agree to
interview witnesses. The defence can use grounds of acting in good faith.
A witness is warned about the criminal responsibility for giving a
knowingly false testimony. The judges ask questions and after that, 12 Relief
the parties may also question the witness.
10.6 Can infringement proceedings be stayed pending 12.1 What remedies are available for trade mark
resolution of validity in another court or the infringement?
Intellectual Property Office?
The owner can demand seizure of the infringing goods and their
Yes, infringement proceedings can be suspended if the cases are destruction.
related. The owner can demand from the violator, instead of compensation for
losses, the payment of contributory compensation in the amount of:
10.7 After what period is a claim for trade mark ■ between 10,000 and 5,000,000 rubles; or
infringement time-barred? ■ twice the costs of the infringed goods.
Three years from the moment the owner was supposed to find out 12.2 Are costs recoverable from the losing party and, if so,
about the infringement. how are they determined and what proportion of the
costs can usually be recovered?
10.8 Are there criminal liabilities for trade mark
infringement? The Court costs are reimbursed. The Court costs consist of official
fees and the costs of the proceedings. Usually the official fees are
Yes, there are criminal liabilities, namely: recovered in full. In order to recover the costs for a representative,
■ Fine in the amount of between 100,000 and 300,000 rubles, it is necessary to submit the contract with the representative and
or in the amount of the salary or other income of the payment documents. However, the Court can reduce the amount of
convicted person for a period of up to two years. expenses if it deems them too high.
■ Compulsory work for up to 480 hours.
■ Correctional work for up to two years. 13 Appeal
■ Forced labour for a period of up to two years.
■ Imprisonment for up to two years with a fine of up to 80,000
13.1 What is the right of appeal from a first instance
rubles, or in the amount of the salary or other income of the
judgment and is it only on a point of law?
convicted person for a period of up to six months.
The decisions of the arbitration courts may be appealed on matters
10.9 If so, who can pursue a criminal prosecution? of facts to the appellate arbitrage court (i.e. the circuit arbitrage
court). A decision of the IP Court may be appealed at the Court of
A criminal case is initiated by the law enforcement agencies, as a Cassation only on the points of law.
rule, either as a result of an independent verification, or on the basis
of a statement from the right holder.
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13.2 In what circumstances can new evidence be added at 17 Current Developments
the appeal stage?
17.1 What have been the significant developments in
New evidence may be added at the appeal stage only if it could not relation to trade marks in the last year?
have been presented in the first instance due to a good reason.
On 24 July 2018, new Regulations of the Russian Patent Office
Russia
14 Border Control Measures came into force. They are aimed at developing the provisions of the
Civil Code of the Russian Federation. The expedited examination
procedure is now available. In addition, the practical examination
14.1 Is there a mechanism for seizing or preventing the terms have been reduced to six or eight months.
importation of infringing goods or services and, if so,
how quickly are such measures resolved? The Constitutional Court found that it is unacceptable to destroy
goods that are “grey imports” and not counterfeit.
Customs is authorised to prevent the importation of infringing
goods and services. A trade mark can be included in the Customs 17.2 Please list three important judgments in the trade
Register of Trade Marks by submitting a Customs surveillance marks and brands sphere that have been issued
application. The registration is valid for two years, and the term can within the last 18 months.
be extended. After the mark has been entered in the Register,
Customs stops suspicious goods for 10 days in order to get more 1. Case No. А40-210165/2016 (in accordance with the claim of
information from the trade mark owner. Les Publications Condé Nast S.A. and Synergy Capital
against Rospatent). The lawsuit was filed for the cancellation
of the decision of Rospatent about a refusal to alienate 50%
15 Other Related Rights of the exclusive right to a trade mark. On 3 December, the
Supreme Court of the Russian Federation rejected the claim,
confirming that the trade mark (non-collective) could not
15.1 To what extent are unregistered trade mark rights belong to several owners simultaneously.
enforceable in your jurisdiction? 2. Case No. A55-5711 / 2014 (on the application for bankruptcy
of the Samara Vodka Plant LLC of Heineken Breweries). On
No protection is provided to unregistered trade marks. 21 March, the Supreme Court of the Russian Federation
determined that a trade mark of a bankrupt owner cannot be
terminated early; it can only be acquired at auction.
15.2 To what extent does a company name offer protection 3. Resolution of the Constitutional Court of the Russian
from use by a third party? Federation of 13 February 2018 No. 8-P (according to the
complaint of PAG LLC). The Court found that it is
The use of a company name by other companies engaged in similar unacceptable to destroy goods that are “grey imports” and not
activities is prohibited. The marks similar to a prior tradename or counterfeit.
commercial name and covering similar goods/services shall not be
registered as trade marks. 17.3 Are there any significant developments expected in
the next year?
15.3 Are there any other rights that confer IP protection,
for instance book title and film title rights? No significant developments are expected in the coming year.
In addition to the rights to trade marks, these rights can be protected 17.4 Are there any general practice or enforcement trends
by copyrights. that have become apparent in your jurisdiction over
the last year or so?
16 Domain Names
The main trends are a gradual approach towards the legalisation of
parallel imports, as well as the further reduction of the role of appeal
16.1 Who can own a domain name? and cassation. The Courts charge court fees in favour of third
parties in cases against Rospatent; usually in these cases the third
A domain name can be owned by any person or entity. parties are the owners of disputable trade marks. The Courts are
interested in reducing the number of lawsuits.
16.2 How is a domain name registered?
A domain name must be registered in the domain name Register.
16.3 What protection does a domain name afford per se?
The domain name gives the owner the right to use the name in the
Internet address and an email address. A domain name does not, as
such, confer exclusive rights.
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© Published and reproduced with kind permission by Global Legal Group Ltd, LondonPapula-Nevinpat Russia
Annikki Hämäläinen
Papula-Nevinpat
Mechelininkatu 1 a
00180 Helsinki
Finland
Tel: +358 44 251 8882
Russia
Email: annikki.hamalainen@
papula-nevinpat.com
URL: www.papula-nevinpat.com
Ms. Annikki Hämäläinen started her intellectual property career at
Papula-Nevinpat in 2007 in the head office in Helsinki. Having majored
in civil law at Petrozavodsk State University (Russia) in 2005, Annikki is
familiar with Russian legislation. She gives advice on IP matters, with
a focus on trade marks in Russia and the CIS countries. She assists
clients in managing their domestic and international trade mark
portfolios through clearance and prosecution, licensing, opposition and
cancellation proceedings, and enforcement.
Papula-Nevinpat was founded in Finland more than 40 years ago, with a strong foothold in Eurasia. We were the first foreign IP company to set up
an office in Russia more than 20 years ago and continue to be the biggest foreign presence there. Other offices in Eurasia include Belarus, Ukraine,
Kazakhstan and Uzbekistan. Our experience in Russia and our knowledge of Russian practices are globally recognised.
We protect and defend our clients’ patent, utility model, trade mark and design rights globally. Our experts have a profound understanding of various
technical fields, industrial branches, and jurisdictions to protect your rights efficiently and reliably. Backed by our long experience in international
systems and practices, we make sure your rights are properly protected. Our goal is to make complex issues simple.
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