Trademark non-use cancellation proceedings are becoming increasingly important in Russian legal practice and should be taken into account especially by brand who left or is leaving the Russian market.
Under Russian law it is possible to seek early termination of a registered trademark in court on the grounds of non-use. If a company has not conducted business in Russia, whether directly or through its affiliates, authorised representatives or distributors, for more than three years, the risk of losing its trademark rights becomes very real. Even rumours of a potential withdrawal from the Russian market may adversely affect such companies’ ability to enforce their intellectual property rights and may encourage bad-faith actors to exploit the situation. The goods imported into Russia via parallel imports does not resolve this issue.
Unfortunately, we have recently observed a significant increase in bad-faith activity, both from manufacturers seeking to capitalise on the reputation of well-known brands and from so-called “trademark trolls” who register trademarks with a view to selling them on at a later stage.
This activity manifests itself in attempts to register with Rospatent designations that are similar or even identical to well-known foreign brands, as well as in the direct sale of counterfeit goods. If the protection of trademark rights is not given due attention and addressed on a systematic basis, there is a major risk that the courts may side with the “Russian manufacturer”.
Moreover, as practice shows, a simple “re-registration” of trademarks (i.e. filing new applications) cannot fully meet companies’ needs for comprehensive protection of their trademark rights and brand reputation. In this regard, it is advisable to implement a structured and comprehensive strategy aimed at preventing brand dilution and the appearance of various low-cost imitations on the market, including, inter alia:
Over the past few years, our team has successfully defended well-known trademarks such as Gillette and Head & Shoulders before the Intellectual Property Court, and has carried out effective opposition work before Rospatent against numerous attempts to register names imitating our clients’ famous brands.
Our firm would be delighted to assist companies having similar issues and share our related expertise.
Under Russian law it is possible to seek early termination of a registered trademark in court on the grounds of non-use. If a company has not conducted business in Russia, whether directly or through its affiliates, authorised representatives or distributors, for more than three years, the risk of losing its trademark rights becomes very real. Even rumours of a potential withdrawal from the Russian market may adversely affect such companies’ ability to enforce their intellectual property rights and may encourage bad-faith actors to exploit the situation. The goods imported into Russia via parallel imports does not resolve this issue.
Unfortunately, we have recently observed a significant increase in bad-faith activity, both from manufacturers seeking to capitalise on the reputation of well-known brands and from so-called “trademark trolls” who register trademarks with a view to selling them on at a later stage.
This activity manifests itself in attempts to register with Rospatent designations that are similar or even identical to well-known foreign brands, as well as in the direct sale of counterfeit goods. If the protection of trademark rights is not given due attention and addressed on a systematic basis, there is a major risk that the courts may side with the “Russian manufacturer”.
Moreover, as practice shows, a simple “re-registration” of trademarks (i.e. filing new applications) cannot fully meet companies’ needs for comprehensive protection of their trademark rights and brand reputation. In this regard, it is advisable to implement a structured and comprehensive strategy aimed at preventing brand dilution and the appearance of various low-cost imitations on the market, including, inter alia:
- filing new trademark applications (“re-registration”);
- monitoring bad-faith activity and submitting timely objections and claims (including “soft” (unofficial) oppositions with Rospatent at the examination stage of conflicting applications and actions before the Chamber for Patent Disputes and the Intellectual Property Court);
- conducting an audit of the trademark portfolio and available evidence of the trademark use in order to assess the risk of its revocation for non-use and to provide recommendations on mitigating such risk.
Over the past few years, our team has successfully defended well-known trademarks such as Gillette and Head & Shoulders before the Intellectual Property Court, and has carried out effective opposition work before Rospatent against numerous attempts to register names imitating our clients’ famous brands.
Our firm would be delighted to assist companies having similar issues and share our related expertise.