Zuykov & Partners - 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.
Peculiarities and distinctive features of well-known marks
Articles 1508 and 1509 of the Russian Civil Code cover the conditions for protecting and registering well-known marks. Both a designation registered in Russia or protected in accordance with international treaties, and a means of individualisation with no legal protection in Russia can be recognised as well known.
In order for a trademark to obtain well-known status, the following conditions must be met:
• it must be actively used;
• it is widely known in Russia; and
• consumers identify the trademark with the applicant’s goods.
A designation that has become widely known after the priority date of a mark that is identical or confusingly similar to another’s and that is registered with respect to homogeneous goods cannot be registered.
Advantages of well-known trademark ownership
Well-known status provides additional benefits to the mark owner, which include:
• an indefinite term of protection; and
• expansion of the scope of legal protection to the goods that are similar to those for which the designation is recognised as well known.
Registering a designation as well known
In order to confirm that a trademark has become well known, the applicant must provide evidence of the following at the filing stage:
- active use in Russian territory;
- countries in which the ma has become widely known;
- the costs incurred for advertising it (eg, annual financial statements);
- the mark’s value in accordance with the data contained in annual financial statements;
- the results of a survey of consumers of the goods on the issue of a well-known mark conducted by a specialised independent organisation, which can be made in accordance with recommendations posted on the Russia Patent and Trademark Office’s (Rospatent’s) website; and
- additional information to confirm the mark’s wide popularity.
The process for applying for a well-known mark comprises a formal examination and the verification and evaluation of the information and evidence demanded by Rospatent. The maximum period for considering an application is 10 months; an extension is possible in some cases, but this may be of no more than 10 months.
Following this, Rospatent hands down its decision, which states that the mark is either well known or has been refused registration (reason will be given for this). If the decision is positive, the means of individualisation is entered into the list of well-known trademarks and the rights holder receives a certificate. It is also possible that a decision to terminate the procedures can be made.
Recently, Soremartec CA company tried to register the Raffaello designation as a well-known trademark in relation to Class 30 (confectionery). At the initial assessment, it was concluded that the means of individualisation was well recognised by consumers and should be registered as well known. However, having examined in detail the reports submitted by the applicant and other evidence, Rospatent found that the products were manufactured in Belgium and Poland, while information about their manufacture in Russia was not indicated in the materials submitted by the applicant. Thus, it was doubtful whether there was an associative product-producer relationship in the mind of consumers. Another argument in favour of the refusal to grant well-known status to a mark was information indicating that at different time periods, the designation had used different colours and fonts – from 1998 to1999 it was in red, in 2003 it used golden brown and then went back to using red. Having analysed the evidence, Rospatent’s specialists refused to give the designation well-known status because the identification of the goods with the manufacturer in consumer’s minds was unproven and it was impossible to establish the term of the trademark using the declared form.
This example indicates that specialists at Rospatent pay a great deal of attention to the examination of the designation for compliance with the specified requirements. However, the refusal to grant the status of a well-known trademark should not be taken as final and unconditional. Since in case of refusal in registration or termination of the procedures, the applicant has the right to appeal Rospatent’s decision.