Russian trademarks acquire distinctiveness through use

Russian Federation

Amendments to the Trademark Law in 2002 introduced the concept of acquired distinctiveness into Russian law. Two recent cases highlight the effect that these changes have had on trademark registration procedure.

In the first case (Case 251397), Russian aviation materials manufacturer Aviabor applied for registration for its AVIABOR mark. The company has been operating under that name and mark since 1964. Under the previous regime, the mark would have been dismissed as being descriptive. However, following the introduction of the concept of acquired distinctiveness into Item 1 of Article 6 of the Trademark Law, evidence of Aviabor's longstanding use of the mark for a wide range of products was sufficient to allow registration.

In the second case (Case 2001723728), Pangeya-Exposervice, a Russian company, applied to register the phrase 'Vladykin's paste' in Cyrillic characters for a water-sensitive paste widely-used in the oil industry. The paste was developed by an individual named Vladykin in 1976. The trademark examiner rejected the application on the grounds that the proposed registration lacked distinctiveness since it was composed of an indication of a specific type of goods (ie, paste) and a Russian surname - Vladykin.

Pangeya-Exposervice has appealed to the Chamber of Patent Disputes of the Patent and Trademark Office. It will present evidence that it has marketed the paste for over 20 years and that it is used by some of the largest oil-producing and oil-consuming enterprises in Russia. Pangeya-Exposervice is confident that this evidence will be sufficient to demonstrate that the sign has acquired distinctiveness through use.

The Chamber for Patent Disputes is expected to issue a ruling in December.

For a discussion of the amendments to the Russian Trademark Law see Trademark Law amended to prevent piracy.

Valery Medvedev, Gorodissky & Partners, Moscow

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