A Trade Mark in Russia can be officially recognised as 'well-known' by registration to the Federal Agency of Intellectual Property (Rospatent) for the status. Applications can include registered Trade Marks and unregistered well-known marks.
The first well-known Trade Mark "ИЗВЕСТИЯ" (IZVESTIYA in Cyrillic) was registered on 7 April 2000, more than 20 years ago, for a very famous newspaper in Russia. However, registration of this type of trade mark is quite significant and a lot of particular evidence is required. At the date of this article, there are only 214 well-known trade marks in Russia.
Recent examples of international marks granted the 'well-known' status include:
The following benefits can be obtained after the successful registration of a well-known Trade Mark:
- Trade mark protection for all goods and services regardless of the list of goods/services for which the mark is registered;
- No terms of validity for the exclusive rights of the Trade Mark, so Trade Mark renewal is not required;
- Increased chances of success in oppositions/infringements/cancellations of similar marks, as likelihood of confusion is not required to prove such action(s) due to the high level of awareness of the mark by Russian consumers.
Well-known Trade Mark applications are reviewed by a special commission through administrative procedures. The main obstacle for such application is the awareness on the mark in Russia at the date of the application.
The following evidence should be provided to Rospatent to support the Trade Mark application:
- Materials on the intensive use of a mark in the Russian
Federation. The applicant should provide:
- the date of the commencement of the use of the mark;
- geography of sales of goods with the use of the mark;
- the volume of sales of these goods;
- ways of using the mark;
- the average annual number of consumers of products bearing the mark; and
- the position of the manufacturer on the market in the relevant sector of economy and other similar information.
- Information on countries in which the mark has become widely known.
- Materials about the costs incurred for advertising the mark (e.g. annual financial statements).
- Information on the cost (value) of the trademark in accordance with the data in the annual financial statements;
- Results of an opinion poll, conducted by an authorized independent research agency in Russia, compiled in consideration of the recommendations issued by Rospatent.
One of the main issues which occurs in the process of registration of well-known marks is the requirement to prove that the Trade Mark has been intensively used for goods/services which it is registered in for a significant period of time. However, according to the clarifications made by the Presidium of the Russian IP Court (SIP-676/2017 – TM Petrol station of Gazpromneft), the use of a series of marks can support the well-known status of the mark if consumers consider new versions of the marks as updated variations of earlier well-known trade marks. In cases of rebranding where most distinctive characteristics of the mark have been retained, it is possible to use the entire history of the use of the well-known mark.
An interested party must also prove that the well-known status was developed due to the business activities of the applicant. In practice, this usually means that the applicant should prove its own recognisability is related to the use of the mark. Sometimes it is very difficult to prove this element due to the lack of awareness of the true manufacturer of goods bearing the well-known mark or due to the foreign applicant conducting its business through local distributors in Russia. However, based on the latest decision of the Russian IP Court (SIP-186/2019 – TM AVITO, SIP-961/2019 – TM ROLLTON), evidence proving the use of the mark is under the control of the applicant is sufficient.
According to the following graph, the number of registrations and refusals for well-known Trade Marks are roughly the same for the last three years.
Well-known Trade Marks have significant advantages in comparison to ordinary Trade Marks in terms of legal protection and handling. However, high evidentiary thresholds and complicated administrative registration procedures makes the application of well-known Trade Marks expensive and unpopular in Russia.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.