Guidelines on interested parties in revocation proceedings issued

Russian Federation
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

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