TRADE MARK REGISTRATION
A trademark is a sign capable of individualizing goods of natural persons or legal entities. The registration procedure of Trademark in Russia is governed by the Law of the Russian Federation # 3520-1 on Trademarks, Service Marks and Appellations of Origin of Goods of September 23, 1992.
The trademarks may be of the classified as follows:
- Word, figurative, three-dimensional, or other signs or their combinations may be registered as trademarks.
- A trademark may be registered in any color or combination of colors.
Application for registration of Trademark
An application for registration of a trademark (hereinafter “application”) shall be filed with the Federal Executive Authority on Intellectual Property by a legal entity or a natural person in business (hereinafter “applicant”). An application shall relate to one trademark only. An application shall contain:
- А request for the registration of the sign as a trademark with the indication of the applicant as well as his seat or residence;
- The claimed sign;
- The list of goods for which the trademark registration is applied for, grouped under headings of the International Classification of Goods and Services for the Purposes of the Registration of Marks;
- Description of the claimed sign.
- An application shall be filed in the Russian language. An application shall be accompanied by:
- A document certifying payment of the fee for filing an application in the prescribed amount;
- The by-law of a collective mark, if the application is filed for registration of a collective mark.
The documents accompanying an application shall be filed in Russian or another language. Where such documents are filed in another language, the application shall be accompanied by their translation into Russian.
The translation into Russian may be submitted by the applicant within two months after the date of notification by the Federal executive authority on intellectual property of the need to meet this requirement.
The date of filing an application with the Federal executive authority on intellectual property shall be the date of filing documents set forth or when these documents were filed at different dates – the last filing date.
After filing the application with the Federal executive authority on intellectual property, any person shall have the right to familiarize himself with the documents of the application that were incorporated in it at the filing date. The Federal executive authority on intellectual property shall set the familiarization procedure with the documents of the application.
The Federal executive authority on intellectual property shall determine the requirements for the documents of application.
Priority of Trademark
Priority of a trademark shall be fixed as of the filing date of the application with the Federal executive authority on intellectual property. Priority of a trademark may be fixed as of the date of filing of the first application in a member country of the Paris Convention for the Protection of Industrial Property.
Within six months after receiving the corresponding notification, the applicants (applicant) should inform of the agreement reached by them (his choice) in respect of the application for which the registration of the trademark is requested.
Whereas within the fixed time the Federal executive authority on intellectual property fails to receive the above-mentioned information or request on the extension of time, the applications shall be recalled.
Priority of a trademark may be fixed as of the date of its international registration by virtue of international treaties to which the Russian Federation is a party.
Examination of application for Trademark
The examination of an application shall be carried out by the Federal executive authority on intellectual property and shall include a formal examination and an examination of the sign.
The applicant shall have the right, on his own initiative, to supplement or correct the application materials during the examination before an action is issued.
If the supplementary materials incorporate the list of goods that was not mentioned in the application as of its filing date or materially change the application, they shall not be accepted and may be filed by the applicant in an independent application.
A change of the applicant as a result of conceding the right to the application or of changing the name of the applicant, as well as the correction of obvious or technical errors in the documents of the application shall be made before the registration date of a trademark.
During the examination the Federal executive authority on intellectual property shall be entitled to request from the applicant the supplementary materials, the lack of which makes the examination impossible.
The supplementary materials or copies of these materials, requested by the Examiners, shall be submitted within two months from the date of receipt of such request, provided that these copies were requested by an applicant within one month after receiving the request of the Examiners.
If the applicant does not comply with the time limit or fails to file a reply to the Examiner’s request, the application shall be deemed abandoned. At the request of the applicant, the Federal executive authority on intellectual property may extend this period by not more than six months. When a reasonable excuse for failing to confine to the time limit is confirmed, the Federal executive authority on intellectual property can extend it by more than six months.
An application may be withdrawn at the request of the applicant at any stage of examination, but not later than the date of registration of the trademark.
During examination of the application, before an action is taken, the applicant has the right to file a divisional application for the same sign, which incorporates the list of goods, mentioned in the original application as of its filing date with the Federal executive authority on intellectual property, and which differs from the goods listed in the original application.
The formal examination of an application shall be carried out within one month from the date of its filing with the Federal executive authority on intellectual property.
During the formal examination an application and the accompanying documents shall be checked for their compliance with the statutory requirements. Based on the results of the formal examination, the applicant shall be informed either of acceptance of the application or of its rejection.
Parallel with notifying the applicant of the positive result of the formal examination, he shall be informed of the filing date set forth in conformity with Paragraph 6 of Article 8 of this Law.
Examination of sign
The examination of a sign shall be carried out when the formal examination is over. Based on the results of the examination, an action either to register the trademark or to reject its registration shall be issued.
Before taking an action on the results of examination of a sign, a notification shall be sent to the applicant in a written form on the results of checking the compliance of the sign, with a proposal to advance reasons for the motives adduced in the notification. The applicant’s reasons shall be accounted for in taking an action on the results of examination of a sign, provided that such reasons have been submitted within six months from the date of sending the above-mentioned notification to the applicant.
An action to register a trademark can be revised by the Federal executive authority on intellectual property prior to the registration of a trademark in connection with:
the receipt of an application with an earlier priority in compliance with Article 9 of this Law for an identical or confusingly similar sign in respect of similar goods;
the registration of a sign, as an appellation of origin of a good, identical or confusingly similar to that trademark;
the discovery of an application containing an identical trademark, or of a protected identical trademark in respect of a full or in part coincidence of the lists of goods with the same or earlier priority of a trademark;
satisfying the application to change the applicant, which could result in misleading a consumer with regard to the good or its manufacturer, provided that such a sign shall be registered as a trademark.
If an applicant disagrees with an action taken on the results of the formal examination of an application, or refusal to examine it, or with an action taken on the results of examination of a sign, or with an action on recognizing the application abandoned, the applicant shall be entitled to lodge, within three months from the date of receipt of an appropriate action, an appeal with the Board on Patent Disputes.
Registration of Trademark
Based on the decision to register the trademark the Federal executive authority on intellectual property shall, within one month from the date of receipt of a document certifying payment of the statutory fee, enter the trademark in the State Register of Trademarks and Service Marks of the Russian Federation .
A trademark certificate shall be issued by the Federal executive authority on intellectual property within three months from the date of registration of the trademark in the Register.
The form of the certificate and its contents shall be determined by the Federal executive authority on intellectual property.
Registration of a trademark shall be valid for ten years from the filing date . The trademark registration period may be extended at the request of its right holder, which should be filed during the last year of the expiring term, each time for the next ten years.
At the request of a trademark owner wishing to prolong the term of the trademark registration, the owner may be given a six-month grace period after expiration of the registration period, provided the owner has paid the additional fee.
Prolongation of the trademark registration shall be entered by the Federal executive authority on intellectual property in the Register and the Trademark Certificate.
Information having to do with registration of a trademark and entered in the Register shall be published by the Federal executive authority on intellectual property in the Official Gazette immediately after registration of a trademark in the Register or after the changes in the registration of the trademark have been entered in the Register.