Guidelines on interested parties in revocation proceedings issued

The Russian Patent and Trademark Office has issued guidelines to clarify the circumstances in which a party may file a request for the revocation of a trademark on the grounds of non-use.

Under the IP legislation, only "interested parties" may file a request for the revocation of a registered trademark on the grounds of non-use. According to the guidelines, the office will determine whether an applicant has a legitimate interest in requesting the revocation of a mark based on the following criteria:

Only entities that can legally apply for the registration of a trademark - namely, legal entities (both commercial and non-commercial) and self-employed individuals - may file a request for the revocation of a registered trademark.
Patent attorneys, lawyers and other physical persons providing legal services or authorized to act on behalf of third parties are not considered to have a legitimate interest.
The mere fact of filing a request for revocation and paying the corresponding official fees is not considered as a proof of legitimate interest.
The mere fact of filing an application for the registration of a trademark that is confusingly similar to the trademark that is the subject of the revocation proceedings is not considered as a proof of legitimate interest.
Trademark rights aim to protect those who have expended time, effort and money in promoting a mark and creating goodwill.

Accordingly, the following entities may be found to have a legitimate interest:

a producer of goods and/or services sold under the trademark that is the subject of the revocation proceedings, provided that it has a good-faith intention to use the mark in Russia;
the owner of a company name (commercial or non-commercial) which is identical or confusingly similar to the mark that is the subject of the revocation proceedings, provided that the company's goods and/or services are identical or similar to those covered by the mark;
a legal entity or self-employed individual owning a commercial designation that is identical or confusingly similar to the mark which is the subject of the revocation proceedings, provided that the activities of the legal entity or self-employed individual involve goods and/or services which are identical or similar to those covered by the mark; and
the owner of an identical or confusingly similar trademark which is registered for similar or identical goods and/or services in other countries, provided that it intends to extend protection of the mark to Russia.

The Russian Chamber of Patent Disputes will assess whether an applicant has a sufficient interest on a case-by-case basis. If the applicant fails to submit sufficient proof of legitimate interest, the chamber will reject the request for revocation.

Alissia Shchichka, Petoševic, Brussels

Guidelines on interested parties in revocation proceedings issued

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