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Updates from an international team of correspondents who report on recent developments in trademark law and practice in their home jurisdictions, as well as strategic issues and those relating to brand protection, portfolio management and value creation.
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17 NOVEMBER 2022Russian IP courts ban ‘ros’ prefix in company name
Company names in Russia are prohibited from including the full or abbreviated names of official government bodies. Now three courts have unanimously agreed that the ‘ros’ element of company ROS-PRAVO’s name could mislead consumers.
06 OCTOBER 2022Russian IP Court upholds finding of confusion in product mixing case
Russia’s specialist IP court has finally resolved a case involving the issue of confusion when different products are introduced into circulation together. The decision provides welcome clarity in this contradictory area.
22 SEPTEMBER 2022IP Court overrules Rospatent’s finding of similarity for marks in different classes
A fresh finding from the Presidium of the IP Court on similarity between marks may affect Rospatent’s registration practice, since the office has recently tightened the requirements for uniformity at the examination stage.
25 AUGUST 2022IP Court clarifies partial refusal due to risk of confusion
The court reversed Rospatent’s decision, noting that it misinterpreted the applicability of two methods of challenging the decision to register a mark and emphasised that the state body could not take into account the future termination of legal protection, therefore the cancellation of the decision did not indicate its illegality.
04 AUGUST 2022IP Court clarifies criteria for assessing distinctive marks
The IP Court has overruled Rospatent with regard to the strength of visual elements of particular word marks, highlighting the subjective nature of assessment and the importance of visually distinctive branding.
30 JUNE 2022Court rules on conflict between a trademark and an indication of origin arising from licence agreement
The IP Court has overruled Rospatent’s rejection of a trademark owner’s right to use their mark, RUSSIAN STEEL, for vodka. The court held that the alleged similarity of the trademark and an indication of origin constituted an unacceptably broad interpretation of the norm.
09 JUNE 2022IP Court upholds refusal to undermine US mark
The IP Court has rejected an appeal by a Russian entrepreneur who argued that the similarity of their mark to one owned by US company Caterpillar Inc should not be taken into account following a government order on foreign states that commit unfriendly actions against Russia.
09 DECEMBER 2021How the Constitutional Court has tried to shine light on parallel imports and exhaustion
Resolution 8-P tackles the thorny issue of parallel imports and attempts to provide guidance on why they should not be treated in the same way as counterfeit products.
02 DECEMBER 2021How Russian courts handle trademark exhaustion
The exhaustion of trademark rights is a murky area. While courts have issued diverse rulings on this subject based on nuances in particular cases, a closer examination of some of these does provide some guidance.
25 NOVEMBER 2021Case law precedents offer useful guidance for trademark disputes
In Russian trademark law, the first-to-file principle officially gives priority to a mark that has been registered over one that has been used, however, in practice prior use can win out. A closer examination of past cases offers some clarity.
18 NOVEMBER 2021First to file and first to use – navigating Russia’s blended system
While Russia takes a first-to-file approach to trademark registration, certain elements of how this is applied and enforced have more in common with a first-to-use approach. A nuanced understanding of Russia’s system is crucial if trademark owners are to make best use of their rights.
29 JULY 2021IP court examines Rospatent approach to analysing descriptiveness
The Russian IP court has upheld a Russia Patent and Trademark Office decision on descriptiveness, outlining the process for determining descriptive applications and the importance of acquiring distinctiveness through use.
17 JUNE 2021Russian IP Court considers options for indemnity calculation at twice the price of franchise
Two recent cases in the Russian IP Court have shone a guiding light on calculating the amount of compensation to be awarded in IP infringement cases.
20 MAY 2021Court goes in-depth to prove use of marks in case for early termination due to non-use
A trademark case involving the verbal element CIPRIANI shows that if brand owners wish to maintain their trademark rights, they must demonstrate their use of the mark for each product for which it is registered and for which the plaintiff has proved its interest.
06 MAY 2021IP court finds no abuse where author registered images as trademarks
The Russian IP Court has handed down its decision in a case of unfair use of a trademark, in which it denies the claim of abuse of fair competition in the trademark owner’s actions to acquire exclusive rights to the marks.
22 APRIL 2021Imported goods, false advertising and trademarks – CIS countries strengthen consumer protection
As the rise of counterfeit goods threatens many brands across the globe, Russia plans to implement a number of measures to protect the interests of consumers and trademark owners from illicit imports.
01 APRIL 2021Rospatent signs agreement with operator of mandatory goods labelling in effort to combat fakes
As Russia unrolls a new mandatory labelling system, Rospatent has agreed to share information on trademark use with the system operator, which could be a huge help in the fight against counterfeit goods.
25 MARCH 2021How to use a trademark to secure credit financing
In Russia, IP owners can use their trademarks as a pledge to secure bank credit. While many financial institutions welcome this process, there are several stages to go through.
11 MARCH 2021Why trademarks could be the best way to promote regional brands in Russia
The Russian government has a policy to promote regional brands and local production. In most cases, appellations of origin and geographical indications are registered as brands in order to distinguish regional goods. However, some regions choose to use trademarks – here are the reasons why.
11 FEBRUARY 2021How to protect your corporate identity through slogans
Slogans are a dynamic part of any corporate advertising campaign, but like all other trademarks, can become the target of bad actors. Thankfully, the Russian Trademark Law provides rights holders with a mechanism for protecting the more promotional aspects of a brand strategy.
04 FEBRUARY 2021Possibility of individuals filing trademark applications on the horizon
The covid-19 pandemic has led to a rise in the number of self-employed people and subsequently a re-examination of who is eligible to register a trademark. With only legal entities or individual entrepreneurs currently able to do so, a new draft bill could widen the scope of eligibility.
01 OCTOBER 2020EAEU Customs Union widens scope of trademark protection
Member states of the Eurasian Economic Union (EAEU) have signed a Customs Union treaty, which will allow trademarks to be registered across any EAEU territory. Here is all you need to know about the procedure.
03 SEPTEMBER 2020New law allows 3D trademark models and e-certificates at Rospatent
A new law that aims to update and streamline the Russian trademark system will allow 3D models to be submitted in applications for trademarks, inventions, utility models and industrial designs – the intention is that this will improve examinations by helping specialists to visualise the claimed dimensional object
20 AUGUST 2020The impact of covid-19 on the trademark community in Russia
The outbreak of covid-19 has significantly affected trademark practices in Russia. Now that restrictions have eased, we can start to see the effect of the pandemic on filing numbers in the country.
09 JULY 2020Is a foreign company obliged to pay taxes on damages issued for illegal trademark use?
The Department of Tax and Customs has issued a letter clarifying that when recovering damages in favour of a foreign company for the illegal use of a trademark in Russia, these are taxed according to Russian law. However, if a treaty on avoiding double taxation has been concluded between Russia and the country in which the foreign company is permanently located, its norms have priority.
02 JULY 2020Draft bill looks set to introduce geographical indications to Russia
A draft bill propose introducing the concept of geographical indications into Russian law - this would be particularly helpful for protecting folk crafts, as well as for supporting local manufacturers.
25 JUNE 2020The pros and cons of filing industrial design applications online in Russia
There are positives and negatives to filing online – applicants need to weight these carefully when applying for industrial designs.
18 JUNE 2020How to use trademarks as pledges in Russia
Based on Article 334(1) of the Civil Code, a pledged right to a trademark gives a creditor priority over other creditors in the case of the debtor’s failure to discharge its obligation. Here is all you need to know about using a mark in a pledge agreement.
11 JUNE 2020A well-known trademark: peculiarities of registration in Russia
As of 1 June 2020 the public register of trademarks in Russia contained 759,821 certificates, while the register of well-known trademarks had 212 titles only. This could be because the designations with well-known status are subject to additional requirements.
04 JUNE 2020How to manage the rights to well-known trademarks
Owners of well-known marks have a number of choices as to how their designations are used. However, the Russian Civil Code contains no restrictions with regard to the disposal of the exclusive rights to a mark, so it is important that rights holders are aware of the many options available.
28 MAY 2020Collective trademarks in Russia: why are there so few of them?
Collective trademarks have various benefits for rights holders in Russia, yet registration numbers remain low. Assessing the pros and cons can help to determine whether they are the best route for securing IP protection.
21 MAY 2020Rights holders can require cancellation of domain name registration to protect exclusive rights
A close look at the Rules for Registering Domain Names in ‘.ru’ and ‘.pФ’ Domains suggests that Russian trademark owners facing online infringement can oblige a domain name registrar to prevent the delegation of a domain name or withdraw it as part of a lawsuit if this name is registered to a non-existent person or false information is provided about the user.
14 MAY 2020How to bring an intermediary to justice in a domain name dispute
While an increase in the number of domain name disputes and uniformity in the courts’ approach to resolving such conflicts is giving trademark professionals more certainty when it comes to collecting evidence and planning procedural actions, there is still a lack of clarity surrounding bringing intermediaries to justice in these disputes.
07 MAY 2020How rights holders can prove trademark use in cases of early termination
A rundown of what rights holders need to know about proving use of their marks when a third-party trademark is found to be identical or confusingly similar.
30 APRIL 2020Rights holders’ control of trademark use explained
A rundown of a mark owner's rights with regard to trademark use when another entity wishes to use its designation.
23 APRIL 2020Making use of the comprehensive defence of a product's appearance
An opposition case involving two registered designs for sauce bottles highlights why the comprehensive defence of a single subject matter through multiple forms of IP rights is often the most effective means of protecting intellectual property in Russia.
16 APRIL 2020‘Crossing of defence’ as an effective way to protect rights to IP subject matter
A product’s appearance, shape or packaging can be protected as a trademark or an industrial design. However, in some cases, it is possible to obtain protection as both, which is known as ‘crossing of defence’.
09 APRIL 2020Registering a designation comprising a geographical name
As a result of an active state policy for promoting and developing regional brands, there is a growing interest in registering designations, which are made up of geographical names in Russia.
02 APRIL 2020Defending rights to company names and commercial designations
Company names and commercial designations enjoy different levels of protection in Russia – here is what you need to know.
19 MARCH 2020The peculiarities of registering surnames as trademarks
The registration of a surname as a mark is becoming more and more common in Russian and global trademark practice, making it more important than ever to be clear about the rules.
12 MARCH 2020Formalising a trademark application in Russia
An insider's guide to filing a trademark application at the Russia Patent and Trademark Office, including information on completing certain fields, Nice classifications and technical requirements.
27 FEBRUARY 2020The IP initiatives to look forward to in Russia
IP legislation is constantly being updated as there has been a push to recognise the importance of IP protection in the last few decades in Russia. This article discusses important updates from 2019 and what practitioners can expect to see in 2020.
13 FEBRUARY 2020LLC Masterhold wins back domain name after a year before the courts
The IP Court has upheld a decision by the Moscow Arbitration Court, as well as a resolution issued by the Ninth Arbitration Court of Appeal, and dismissed an appeal by entrepreneur Kornev Dmitriy Nikolaevich regarding the domain name ‘masterhold.ru’ and the combined designations MASTERHOLD and МАСТЕРХОЛД.
06 FEBRUARY 2020Success for METROPOLIS shopping centre mark
After a long court battle, Kubik LLC has succeeded in its attempt to register the МЕТРОПОЛИС and METROPOLIS marks and to have an earlier trademark registration terminated for non-use.
30 JANUARY 2020Suzuki Motor's multiple invalidation claims against SUZUKI for kitchen appliances rejected
Dunham Investment Inc has been the owner of the SUZUKI trademark for products in Nice Classes 7 and 11 since 2006 and has been operating in the household appliances industry for more than a decade. In 2017 automobile manufacturer Suzuki Motor Corporation – the owner of the SUZUKI mark for products in Class 12 – filed an application to register products in Classes 7 and 11. Dunham Investment’s marks were therefore an obstacle.
09 JANUARY 2020Identifying the rights holder of a trademark – how to do it and what it is for
According to the Russia Patent and Trademark Office, at least 60,000 applications to register a trademark have been filed each year since 2014. In 2018 this figure reached 76,062. Given the scale of filing activity, it is crucial for current rights holders and potential applicants to be able to identify the rights holder, as this information can come in handy in myriad ways.
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