Zuykov & Partners - Russia
The legal definition of a ‘trademark’, provided in Article 1477 of the Russian Civil Code, is “a designation that serves for the individualisation of the products of legal entities or individual entrepreneurs”. A word or a combination of words, images, packaging, colours and melodies can all be registered as trademarks.
IP laws allow rights holders to:
- use their intellectual property at their own discretion;
- dispose of their intellectual property;
- allow or prohibit the use of the intellectual property by other entities; and
- defend their intellectual property.
As trademarks fall under the scope of IP laws, they must be registered at the Russia Patent and Trademark Office (Rospatent). The general rules for formalising the application are provided in the Civil Code, which sets out requirements with regard to the language and a procedure for certifying it, among others.
Trademark applications must be filed in Russian and the applicant must fill in the following.
The standard fields to fill in are as follows:
- The ‘address for correspondence’ column must contain the contact details of the applicant or a representative and include a phone number, fax number and e-mail address.
- In the ‘applicant’ section, the full name of the legal entity must be indicated, as well as the company’s legal address (in accordance with its constituent documents) or the address of the place of residence of an individual entrepreneur.
- The primary state registration number (OGRN), the taxpayer personal identification number (INN) and the code (KPP) of the legal entity or the primary state registration number of an individual entrepreneur (OGRNIP) and the INN of the individual entrepreneur is to be given in the ‘identifiers of applicant’ field, along with a country code (eg, RU for Russia).
- The ‘representative(s) of an applicant’ section requires the name of a person representing the applicant’s interests in Rospatent (usually a patent attorney).
- In the ‘image of claimed designation’ column, a corresponding image (for a figurative or combined designation) or a word/a combination of words (for a word mark) must be included. The designation should fit clearly within the specified field and it is important to pay attention to a background – if it is other than white, the mark will be registered exactly against this background.
- The trademark is described in the ‘description of claimed designation’ section. A standard template for this is not stipulated – it depends on the claimed designation.
- Applicants need to specify whether the mark includes a colour or a colour combination. It is important to note that if the colours described in this column differ from the image, a request for examination can be obtained.
- The type of designation must be indicated. It can be traditional (ie, word, figurative, combined or three-dimensional), or more original (ie, light, changeable and holographic, among others). If it is not the former, its characteristics must be described in detail.
- The availability of the unprotected elements in the mark may be included.
The classes of the International Classification of Goods and Services (ICGS), additional information and signature fields should be filled in as such:
The classes of the ICGS and the names of the products and/or services are given in the field titled “the goods, in respect of which the state registration of the mark is sought, which are grouped according to the classes of the ICGS” and the application must be filed for a particular list of the products/services that are grouped in the classes of the ICGS (there are 45 in total). The list always begins with the two-digit ICGS class number followed by the names of the individual products/services, which are indicated with a dash. A full stop must be placed at the end of the list of each class and the text of the list of each subsequent class must be separated by an interline space. The list of products must be specific and cannot consist of the fields of the activities only.
- The fields related to a priority of the trademark, with the fee to follow.
- In the ‘list of attached documents’ column, it is necessary to include the claimed designation, a list of the products and (or) services, a power of attorney for the representative (if available).
- The ‘additional information field’ can be used to clarify the number of certificates for previously registered trademarks.
- In the last column, applicants must provide the date on which they filled in the application and provide the authorised person’s signature.
The technical specifications are as follows:
With regard to the technical requirements, only one-sided printing is possible.
- Each document must be numbered.
- The list must be printed in a font of at least 2.1mm without being separated into columns and with an interval of 1.5mm.
- The application documents must be filed in one copy.
- The images of the trademark must be filed in two copies.
Grounds for refusal
An application will be refused if:
- it is missing materials;
- it is unreadable;
- it is submitted in a foreign language; or
- if the applicant is not indicated or if it is filed in an electronic form with a violation of the requirements.
The date of filing is considered to be the date that Rospatent receives the application. It publishes the information about the applications filed on the publicly available register on its website.
The date of receipt, registration number and incoming number fields are filled in by Rospatent when it receives the application. A formal examination is then carried out within a month of filing, during which the availability of the necessary documents and their compliance with the established requirements is checked, as well as the fee payment. Depending on these results, the application is accepted for consideration or rejected.
While the examination is being carried out, the applicant may add supplementary information or make clarifications or corrections in the application materials, which can include filing additional materials before the decision is made. Once the formal examination is ended (and the decision handed down is positive), the substantive examination begins. Finally, the registration of the mark is granted if it corresponds to the protectability criteria under Article 1483 of the Civil Code.
Although the procedure for filing an application for trademark registration is described in detail here, it can be difficult to navigate the above provisions without sufficient experience. To avoid unnecessary time and material costs and significantly reduce the risk of refusal, it is recommended that specialists in the field be addressed.