This article was co-authored with Dr. Olga Tereschenko, the leading expert of FIPS (Rospatent). It provides a brief survey of the protectable elements of marks under Russian trademark law.
As a member of WIPO and a signatory of the 2006 Singapore Treaty on the Law of Trademarks, Russia recognizes and protects trademarks, both international and domestic, in a manner similar to that of most other WIPO countries. Nonetheless, since Russian trademark law is not identical to that of other countries, a company wishing to register and enforce a trademark in Russia would be well advised to familiarize itself with the specifics.
1. Types of marks recognized
Pursuant to Russian trademark law, a word, an image, a three-dimensional design, or "other designations,"(sound, texture, olfactory, and taste marks) or any combination thereof, can be registered as a trademark. As a result, Russia recognizes a wide variety of trademark types:
2. Registration, similarity search and soft opposition
Unlike the situation in the U.S., where trademark rights arise as a result of actual commercial use irrespective of registration, in Russia – a civil law country – trademark rights require registration, irrespective of actual commercial use. The first to register a mark, even an individual entrepreneur who has never used it commercially, may well acquire superior rights to it. Thus, trademark owners outside of Russia who are considering introducing their brands into the Russian market should apply to register their marks with the Russian Patent and Trademark Office ("Rospatent") or WIPO at the earliest opportunity.
Before a trademark owner applies to register the mark in Russia, it should be checked for potential conflicts as in any other country. If a similarity search reveals registrations or pending applications for similar marks, the owner can take pro-active measures such as narrowing the description of the covered goods and services. Another alternative would be to contact the owners of the potentially conflicting marks at attempt to obtain letters of consent from them. It could even be possible to file a trademark cancellation proceedings against a conflicting mark, citing non-use or another claimed defect of that mark.
In Russia there is no formal opposition system with respect to pending applications. Instead, any third party can submit objections to Rospatent regarding a pending trademark application alleging a violation of its prior rights (trademarks, company names, commercial designations, etc.). Although Rospatent is not required to respond to such objections, it often takes objections into account when denying an application.
Otherwise, Rospatent will grant or deny the application on its own merits. A mark can be denied registration not only if other similar marks/applications have already been registered/filed, but also if the mark is merely descriptive or if it violates any public interest (i.e. it is deceptive since it uses reference to geographical origin, a government or a public designation, is scandalous or vulgar, etc.). Rospatent also will deny the application if it involves the origin of goods and industrial design registration or application.
3. Protectable aspects of marks
Since the purpose of a trademark is to distinguish the trademark owner's goods or services from other similar goods and services, a trademark must be distinctive.
a) Distinctive marks
The most distinctive trademark is "fanciful" – a word invented for the sole purpose of being a trademark. Fanciful marks have no ordinary meaning, and thus are inherently distinctive. In Russia, (No. 279887) (WIM-BIL-DANN) and (No. 329969), (DIKSI) are examples of fanciful marks.
Common words applied in an unfamiliar way to identify goods or services are called "arbitrary" marks, i.e. a word mark applied to goods in a non-descriptive sense. The word (BELUGA) (No. 257988) cannot be registered for fish, but it is capable as serving as a trademark for vodka because it is distinctive. Another example of an arbitrary mark is the mark (No. 107936) that is registered for aircraft. Although the word means "DRY", it also is the name of the aircraft manufacturer's founder.
A mark that suggests something about the goods, and that is not merely descriptive but requires some imagination or thought, can also be distinctive enough to serve as a trademark. Some suggestive marks that have been successfully registered in Russia for cosmetic products include: (No. 640543) (the word means "cosmetic"); (No. 146138) for sausages: ("big sausages" – mark includes the cartoons);
for mineral water: (No. 358438)
for vodka: (No. 343116)
for cars, gasoline, technical oils and greases:
b) Descriptive marks
A word mark that is merely descriptive of the goods is not distinctive, and thus cannot serve as a trademark; the only exception is where - before the filing date - the descriptive mark becomes strongly associated with one specific producer of related goods or services on the Russian market. This can happen as a result of many years of use and of extensive advertising that has to be proven in order to be considered by Rospatent. Examples of descriptive terms that have acquired distinctiveness and thus were able to be registered as trademarks include
- for cereals in the form of bar:
(No. 637022), however the international registration for the word "CORNY" (No. 646815) was refused;
- for mineral water and delivery of
(the phrase means "Idea of healthy life") (No. 295561)
A figurative mark may be registered only if the figurative aspects are not associated with a realistic or schematic image of the goods. If the descriptive element does not have a dominant position in the mark, it will be disclaimed. The following mark was successfully registered after the words, and the images of ice cream, berries and fruits were disclaimed.
However, if images in a figurative mark are depictured in a stylized way, they are protectable:
The same principle applies to non-traditional marks. Sounds, for example, cannot be realistic or they will be considered merely descriptive (e.g. the sound of a jet engine for aircraft).
c) Composition of descriptive elements
A trademark that consists of non-distinctive elements that jointly make a distinctive composition, can be registered. In the following successfully registered mark, neither "L" nor "Sofa" is distinctive but joining them creates a distinctive composition:
4. Areas where Russian trademark law and practice are different
a) Letters and numbers
Letters that have no verbal character, numbers, and basic geometrical shapes are not capable of trademark protection. Recent examples of marks that were refused registration in Russia include "B 140" (IR no. 1285853) and (No. 2015732744).
Similar to the situation with descriptive marks, an exception is allowed for letter, number, and geometrical shape marks that have become strongly associated with specific goods and services as a result of extensive use prior to the filing date. Examples are the designations that have proven their acquired distinctiveness are VW (IR No. 728196), "С 450" (IR no. 1244412), "МДМ" (No. 443682), and "ТТС-СВ" (No. 648740).
Letters, numbers and geometrical shapes are considered distinctive and can serve as trademarks when used in stylized font or combined or incorporated into designs. Some examples:
b) 3-D marks
An analogous approach applies to 3-D marks. 3-D designs that represent the shape of the goods or the shape of packaging for the goods, where the shape is determined exclusively or mainly by functional purpose, cannot be registered as trademarks. In practice Rospatent takes a very conservative approach to shape distinctiveness. Three-dimensional trademarks are successfully registered only on rare occasions where the shape is inherently distinctive and/or where the brand owner can demonstrate that consumers make a strong connection between the item's shape and its manufacturer as a result of extensive use prior to the filing date. In all other cases three-dimensional designs can only be protected as design patents and not as trademarks.
The following shapes were denied registrations:
According to Rospatent all these shapes were primarily functional and not inherently distinctive.
To register a trademark for a functional shape, an applicant must show that the shape has an inherently original design that gives the mark distinctiveness or that the shape has acquired distinctiveness through intensive use .
Successfully registered 3-D marks include the following:
In the 3-D mark on the right, the red sash (laser-etched into the glass) was initially rejected by Rospatent as being merely part of the bottle's shape and was thus functional, but the Russian IP Court reversed this decision, holding that by laser-etching the surface, the applicant had created a unique non-functional element of the bottle's shape and, as a result the entire bottle was registered as a three-dimensional mark.
The shape of the vehicle in the image below was also initially rejected as a trademark by Rospatent because the elements -- grille, headlights, roof, etc. – do not make the vehicle's body particularly distinctive. However, the Russian IP Court reversed this decision and made Rospatent reconsider the case.
In another case, the applicant managed to convince Rospatent that in Russia the following shapes had acquired distinctiveness through intensive use and had become so strongly associated with the applicant's chocolate and ice cream products, even though they were functional, that they could be registered:
A mark that consists of colors and any word or figurative elements is easy to register. If, however, a mark consists only of a color or color combination, an applicant of such mark must prove that its mark has acquired distinctiveness by providing evidence of its extensive use in Russia before the filing date.
Examples of marks consisting of color or color combinations that have acquired distinctiveness and thus were able to be registered as trademarks include
d) Geographical origin
Whether a mark containing a geographical origin can be registered as a trademark depends on whether the mark is actually associated with that place of origin. If it is, then the mark can be registered for products that come from the indicated region, under the following conditions: Firstly, if the geographical descriptor does not have a dominant position in the mark, it must be disclaimed. Secondly, if the geographic descriptor dominates, the applicant must show that the mark has become strongly associated with the product as the only one of its kind from that region. However, geographical names such as seas, rivers, lakes, mountains, etc. can be protected as trademarks without any limitations.
If the product is not associated with the place of origin, either because the place is not well-known to the public or because it is fanciful, it can be registered without a disclaimer.
The mark (No. 470305) was registered, but the name "Code d'Or" was disclaimed. The mark (No. 515278) was registered, but only after the applicant assigned its application to a related company that produced the protected goods in Gustavsberg (Sweden). In another case a German rights holder registered the mark (IR no. 1133633) for goods in classes 18 and 25 by limiting them to those that are from Italy.
Fanciful marks containing geographic references that were successfully registered include "Legend of the lake Riza" (No. 519895), "Blue eyes of Baikal" (No. 653328), and "Kamchatka" (No. 367067).
Interesting are the following two cases. In the first, a logo containing the term "Moskovskij" (App no. 2009713102) was refused for registration on the grounds that it would likely deceive consumers as to the producer of the goods and its location, even though the French applicant intended to use it only for goods produced in Moscow. In the other case, a Russian company successfully registered "Gardens of Italy" (No. 493419) upon showing that the applicant had entered into a contract with a manufacturer in Italy to produce the goods in question.
5. Cyrillic versions of Western marks
The general rule is that the protection granted to a mark spelled in Latin script also extends to its equivalent in Cyrillic script. However, if the letters in the different languages scripts look significantly different or are pronounced differently, the Cyrillic version of a mark that is originally in Latin script still should be registered. This can be done either phonetically (), or letter-by-letter ( as ). There is an example where Rospatent did not consider the mark RAETON as similar to PHEATON even though both marks were for vehicles in class 12.
If the trademark is a word or phrase that means something in the foreign-spelled version, the applicant certainly should register the Russian translation of that word or phrase as a mark as well. Two cases illustrate the importance of doing so. In the first case, Rospatent approved registration of the phrase "daily bread" in Cyrillic:
(No. 401143) even though a previously-registered mark had the same meaning in French (No. 335180) and was registered for similar goods and services. Rospatent allowed the later registration since there is no phonetic or graphic similarity between the two marks. The semantic similarity was not taken into account since the meaning of the French phrase is not known to the Russian public. The holder of the French-language mark unsuccessfully tried to argue that it had been using that mark, along with its Russian translation, prior to date the application for the Cyrillic mark was filed, and that as a result the user of the Cyrillic mark was exploiting the reputation of the French-language mark. The owner of the French-language mark tried to register the Russian translation of its mark, but was too late: The application was rejected.
In the second case, a trademark application was filed for "Серый гусь" (Grey Goose) for vodka. Rospatent initially approved the registration despite a series of earlier "Grey Goose" registered marks consisting of a logo depicting a goose, by using the same logic: the two marks are not phonetically or graphically similar, and the semantic similarity cannot be taken into account since the meaning of the English phrase is not known to Russian public. In its final decision, however, Rospatent took into account that that "Grey goose" brand vodka is a well-known Bacardi product, even in Russia. Rospatent thus reversed its initial approval of and refused registration of the Cyrillic "Серый гусь", finding that such a mark inevitably would be falsely associated with Bacardi, and for that reason would be deceptive.
6. Conclusion: Tips for successful trademark registration in Russia
- Conduct a similarity search to exclude potential conflicts with prior rights of other companies;
- Make sure your mark is distinctive (fanciful, arbitrary or suggestive);
- If the mark is descriptive, the owner should submit to Rospatent evidence demonstrating that the mark has become strongly associated with specific goods and services as a result of extensive use prior to the filing date;
- If the mark consists of letters or numbers, it must be in stylized font or integrated into a design. If the mark is a shape, it must have an inherently original design. Otherwise the owner must demonstrate that the mark has become strongly associated with specific goods and services as a result of extensive use prior to the filing date;
- If the mark contain a geographic origin, the related products must come from the indicated region and it should also be in stylized font or integrated into a design;
- If the letters in Latin script of the mark look different or are pronounced differently, the Cyrillic version of the mark should be registered. If the mark means something, the Russian translation thereof must be registered as well.
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.