By: Ivo van Rhijn
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Russian Trademark Law
The most important sources of Russian Trade Mark Law are the following:
-Russian Civil Code
-Executive orders (of Russian government, ministries and Rospatent)
-International Treaties (World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property, or TRIPS in short, Paris Convention for Protection of Industrial Property. Russia joined and is a party to this convention since 1965 when it was the Soviet Union.)
Besides the trademark, there exist three other means of individualization according to Russian law. These are: trade names, firm names, and designations of the place of origin. This is an exhaustive list. Domain names for example do not fall within this list and therefore do not enjoy the extensive protection that means of individualization enjoy according to Russian law.
So what do these means of individualization mean?
Trademarks are responsible for identification of goods and services.
Trade names are responsible for identification of enterprises.
Firm names are responsible for identification of legal entities.
Designations of places of origin are responsible for geographic indications.
One indication can be one in the same time a trademark, a firm name, and a trade name.This can even be used as a method to make the trade mark more effective, for example the logo of the Russian company Gazprom, contain its firm name, trade name and trade mark all at the same time.
So a trade name protects the name of a business, not that of a legal entity. One legal entity can have several business entities and vice versa.
The criteria to acquire protection for trade name are laid down in Articles 1538 to Articles 1541 of the Russian Civil Code. The most important criteria are:
-must be used and become known within a certain territory
– it must not be misleading
If these criteria are met the owner of the trade name will have an exclusive right to its use.
But: this exclusive right to a trade name is automatically cancelled if a trade name is not used for a year or longer
One enterprise can have only one trade name, but, at the same time, but one trade name can be used for several enterprises (art. 1538 part 2 Russian Civil Code).
The Russian Civil Code provides that a exclusive right to a trade name covers only the territory of the actual use of a trade name. The territory where the trade name in question has become known. So it’s not automatically the territory of the whole Russia.
Trade names don’t have to be registered, the right to their use comes about naturally by meeting the above mentioned criteria.
Firm Names (artt. 1473-1476 of the Russian Civil Code)
The firm name is the name of the legal entity, so only legal entities can enjoy the protection of their firm name in Russia. According to art. 1473 of the Civil Code the firm name of an organization should contain its legal form (for example OOO, which is Russian for LLC) and its name.
There are 2 conditions to enjoy protection of a firm name:
-The holder of the name should be a legal entity
-the name of the firm should have some level of distinctiveness (it cannot just contain generic words like investment)
-the firm name must not violate public interest (immoral firm names or not allowed), must not be misleading (for this reason it’s not allowed create the impression you are actually a government body)
A whole bunch of other words are excluded from use in firm name. They can be used only afer obtaining a special license. This, for example, is the case with the word bank.
Designations of Places of Origin
Russian law protects both indications of places of origin and indications associated with such places of origin.
There are three criteria that should be met if there is to be such an indication.
- Reference should be made to a geographic location
- This geographic indication must be famous for certain goods as originating from that territory.
- The goods and the location must be connected with each other
But indications that already became generic names for certain products or for certain goods cannot be protected as a geographic indications. An example of this is the name Champagne as an indicator for sparkling wine, regardless of its origin.
How is protection for the designation of the place of origin acquired? An interested party can file an application with the Russian Patent and Trademark Office, Rospatent, in order to register such designation
The registration procedure is very similar to registration of trademarks, which I will discuss further below.
The holder of a right to a designation of place of origin has an exclusive right.(However: all companies in that geographic area that are producing these goods that are protected by the designation can obtain such a registration and exclusive right.)
When other parties infringe this right, the holder of the right can:
- demand that the goods, which infringe your rights are recalled and destructed
- Demand a recovery of damages
- Demand Statutory Damages, of which 2 variations exist:
- a lump sum between 10,000 rubles to 5 million rubles per violation
- double damages: two times the cost of the counterfeited products.
In order to obtain a certificate of Designation of Place of Origin you have to prove to Rospatent that there is a clear connection between the quality of the good and the region where it is produced. This is not always easy to do.
A trademark is a sign used in course of trade and commerce by business actors.
Any sign or combination of signs that is capable of distinguishing goods and services from one company from those from another company can be qualified as trade mark.
In Russia only a legal entity or an individual entrepreneur is capable of registering a trademark. Trademarks may consists of words, images, or a combination or both. A sound or a (combination of) color(s) may also constitute a trademark in Russia. Even smells and tastes can in theory be trademarks, according to Russian law. The smell or the taste has to be described with enough detail though. This has thus far formed an obstacle to the registration of such trade marks. It might however become possible with the advancement of new technologies.
Russian law makes a distinction between ordinary trademarks and well known trademarks. The latter enjoy stronger protection than the former, but are also more difficult to register.
Is it allowed to use foreign language words in your trade mark?
It is allowed to use foreign words in your trade mark. The positive aspect of using an unknown foreign language word is that you could obtain a higher level of exclusivity with it. The disadvantage is that you might have to spend more money on marketing in order to make your trademark well known.