Gowling WLG (International) Inc - Russia
The Russian non-use cancellation system can be vexing for global trademark owners.
One of the challenges for international rights holders is that non-use cancellation proceedings in Russia are heard inter partes by the country’s IP Court. This means that an action in such cases is typically more complex, costly and time consuming than in other jurisdictions.
Another challenge is that Russian legislation requires a claimant to use a non-use cancellation action to prove legitimate interest and the evidentiary bar is high. This means that failure to prove legitimate interest can result in the claim being dismissed, even if the defendant (trademark owner) fails to produce any evidence of use.
The pre-trial procedure
In 2017, to address this and to decrease the number of non-use cancellation actions brought before the country’s IP Court, legislation was introduced setting out a mandatory pre-trial procedure for trademark non-use cancellation actions. Further clarification was provided by the Russian Supreme Court in June 2021.
A claimant to a non-use cancellation action must send a pre-trial demand letter to the trademark owner. In this letter, the claimant must request that the trademark owner either abandons the trademark registration (partially or completely) or assigns it to the claimant, failing which the action will proceed.
The pre-trial letter must be sent to the registered office address of the trademark owner indicated in the state register of legal entities (or individual entrepreneurs), as well as to all addresses listed in the state trademark register, or in respective international registers, such as the WIPO register for international trademarks.
The pre-trial procedure is deemed to be complete if the pre-trial letter is sent to all of these addresses, even if one of them turns out to be incorrect. However, the pre-trial procedure is considered to be incomplete if the pre-trial letter is sent to one of the addresses or to addresses not indicated in the state register of legal entities or the state trademark register.
Sending a pre-trial letter via e-mail to a trademark owner does not qualify in order for the procedure to be considered complete.
Any difficulties sending a pre-trial letter can be rectified by the claimant producing evidence confirming the delivery of the letter to the trademark owner.
The time frame
The deadline for a trademark owner to respond to a pre-trial letter is two months, based on the date that the letter was sent.
If the trademark owner does not respond or rejects it within this window, then the claimant can file a non-use cancellation action with the IP Court. If the non-use cancellation action is filed earlier than allowed, it will likely be dismissed by the IP Court without prejudice.
The deadline for a claimant to file a non-use cancellation action is three months from the date that the letter was sent. Therefore, the period of time to file a non-use cancellation is one month; and the window to file it opens two months after the pre-trial letter was sent and closes three months after the same date.
If the claimant files the non-use cancellation action later than three months from the date of the pre-trial letter, the action can be dismissed by the IP Court without prejudice. If a claimant misses the deadline to file the non-use cancellation action, it needs to start the pre-trial procedure all over again by sending a new pre-trial demand letter to the trademark owner.