Decree introduces new and higher fees for trademark procedures
Following last year's amendments to Russia's trademark legislation, the government has issued Decree 793 establishing the fee structures for the Patent Office and the newly-created Chamber for Patent-Related Disputes, which examines, among other things, opposition applications.
Pursuant to the decree, the Patent Office has introduced the following fees:
- Rb8,500 to divide an application (which is itself a new provision of the law). The fee is the same as for filing an application in one class and is charged regardless of the number of classes for which the initial application was filed.
- Rb5,000 to divide a registration (which is also a new provision).
- Rb3,000 to change the applicant's name. Prior to last year's amendments to the law, there was no provision governing the issue of transferring rights in an application. The new fee is twice as much as that for any other amendment to an application, probably because the examiner needs to analyze the documents confirming the transfer of rights.
- Rb1,000 for invalidation of a trademark if the invalidation is the consequence of (i) the owner's bad faith under the Unfair Competition Law, or (ii) the owner's liquidation. Both grounds for invalidation were introduced with last year's amendments.
- Rb1,500 for transforming an application for a trademark into that of a collective trademark - and vice versa.
- Rb6,000 for transforming a trademark registration into a collective trademark registration.
- Rb3,000 for transforming a collective trademark registration into a trademark registration.
The decree also establishes the fees applying to the activities of the Chamber for Patent-Related Disputes, which was created by last year's amendments. The chamber is the first instance for most cancellation cases and has the power to grant or withdraw well-known trademark status. However, the chamber had to suspend its operations for several months this year in the absence of governing rules. Decree 793 completes the rules adopted in April and increases the fee:
- to appeal a Patent Office decision following the formal examination of a trademark application (increased from Rb1,500 to Rb3,000);
- to appeal a decision following the substantive examination (raised from Rb3,000 to Rb5,000); and
- to cancel a registered mark (increased from Rb5,000 to Rb8,000).
The decree also establishes a Rb10,000 fee to cancel a trademark for non-use or for becoming generic.
Lastly, the decree establishes fees aimed at eliminating uncertainties in procedures concerning well-known trademarks:
- Rb10,000 to issue a well-known trademark certificate.
- Rb1,500 to make amendments to the Well-Known Trademark List, which is the same charge as for amendments to the Trademark Register.
- Rb15,000 to file a cancellation action on the grounds that well-known trademark status was granted in breach of the law.
- Rb10,000 to file a cancellation action against a well-known trademark that no longer meets the requirements of such status.
While the decree helps create a clearer picture of how to handle trademark issues in Russia, it leaves a number of questions unanswered. These will have to be addressed by practice, which is likely to lead to further amendments.
Magdalena Sekula and Ksenia Shaverdova, Gowlings International Inc, Moscow
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