Gowling WLG (International) Inc - Russia
Since the onset of the covid-19 pandemic in January 2020, there has been a surge in trademark applications across the globe. These often revolve around terms that have rapidly become commonplace (eg, ‘covid’, ‘social distancing’ and ‘remote working’).
In Russia, there has been a rise in trademark registrations for pharmaceutical products, and social and medical services – even for brand owners in unrelated fields. For example, the financial institution Sberbank is seeking covid-oriented protection outside of its core financial services area for SBERDOC and SBERDOCTOR. Since the beginning of the pandemic, there has been an increase in online submissions for trademark applications, amounting to approximately 79% of current total applications. Meanwhile, the IP council has slashed the examination period to under six months – it was 12 months just a year ago. With this in mind, it is crucial that businesses are fully up to date with Russian trademark practice.
Trademark procedure overview
The Russian Civil Code defines a ‘trademark’ as a designation that serves to individualise goods and services. Words, symbols, 3D designs and other designations or combinations may be registered as trademarks. A trademark can constitute almost any designation that can be perceived via sight, sound, smell or touch, and distinguishes goods and services of a specific manufacturer from goods and services of other market participants. A trademark may be registered in any colour or colour combination.
The exclusive rights to a mark must be registered with the Russia Patent and Trademark Office (Rospatent) and are valid within the whole territory of Russia. Only a legal entity or a registered individual entrepreneur (but not a private person) can own an exclusive trademark right.
The main reason for registering a trademark is brand protection. In Russia, officials continuously battle against counterfeit trademarks, product presentations and packaging. The registration of a trademark secures its owner’s exclusive right to use the mark in any legitimate way – particularly for labelling – in the provision of goods and services, within documents, in advertising and on the Internet. Russian legislation prohibits the use of designations similar to another owner’s registered trademark if a likelihood of confusion could arise as a result of such use.
Rospatent is likely to reject trademark applications that contain ‘covid’ or ‘coronavirus’on the grounds of general public interest, as well as a lack of distinctiveness.
Before registering a mark
To ensure the successful registration of a mark, it is advisable to determine the purposes of its use, its semantic message and the way in which it will be perceived by an average consumer.
Each category of goods and activity of a business is characterised by specific types of trademark and forms of use. For example, with regard to perfume products, the packaging of bottles and boxes is crucial, since this often performs the main function of individualisation and can be registered as a 3D mark. For radio and television services, programme melodies are registered as sound marks. For pharmaceuticals, it is more usual to register a text-based mark.
With this in mind, it is advisable to study competitor trademark portfolios before choosing a designation. The elements of the brand and corporate identity of a business – particularly colour and colour combinations – also contribute to trademark awareness on the market. Therefore, when registering new marks within a brand line, it is advisable to adopt a single style and colour palette.
The overall choice of a trademark should serve the following goals:
- to uniquely distinguish the business and its products or services among competitors;
- to possess features and properties that allow for use of the trademark in advertising and marketing campaigns aligned with a single brand; and
- to have commercial value and awareness.
Protection against third-party claims and restrictions
Having developed a mark or logo but prior to registering it as a trademark, it is important to ensure that these elements are sufficiently distinctive and will not infringe on the rights of third parties. For this purpose, Rospatent provides a search service to identify identical or similar marks already protected. It is also helpful to search online to check whether the proposed designation – or one similar to it – is already being used by other businesses within the same sector.
Marks that could mislead consumers as to the properties of the goods or the manufacturer or that infringe on the copyright of third parties in connection to designs or typefaces are prohibited from registration. A Rospatent examiner may require the submission of documentary evidence of earlier priority.
Rospatent may also require that state authorities consent to the use of a symbol of Russian cultural or historic heritage if an applicant intends to use it as part of a trademark, or that the applicant obtain consent from family heirs with regard to the use of names or images of famous people.