Russian Federation (RU)
09-02-2012 (Newsletter Issue 13/12)Official Fees IncreasedNew regulations concerning registration of intellectual property have come into force on August 22, 2012, due to the ratification of the Marrakesh Agreement by the Russian Parliament and the further accession of Russia to the World Trade Organization.
The official fees have become uniform for both Russian residents and non-residents, and some of the official fees are changed.
The trademark fees have been raised for foreign applicants. The new official fee for filing a trademark application in one class is RUR 2,700 (about EUR 66) plus RUR 2,050 (about EUR 50) for each additional class.
The official fee for registration of a trademark is RUR 16,200 (about EUR 388), irrespective of the number of classes.
Source: Patentica LLP, Russian Federation 02-07-2012 (Newsletter Issue 2/12)IP Court to Be EstablishedOn November 29, 2011, the Federation Council (upper chamber of the Federal Assembly ‐ Russian parliamentary body) approved the Federal constitutional law forming a court on intellectual property, sometimes refered to as the "patent court".
Under the new law drafted by the Supreme Commercial Court, the patent court should start no later than February 1, 2013. The law defines the court as a specialized commercial court that will consider disputes involving the protection of infringed or contested rights to intellectual property as a first-instance and cassation court. For a time it will be the only patent court in Russia – establishment of the lower courts is yet planned.
Currently all disputes of this sort fall under jurisdiction of the courts of general jurisdiction and the state arbitration courts, depending on the legal status of the litigants. All the cases pending before the courts of general jurisdiction at the time when the patent court begins to work must still be completed in the very same court that initiated the process.
Source: Patentica LLP, Russian Federation 04-03-2010 (Newsletter Issue 9/10)
Extension of the .РФ Domain Registration Period
The priority period for registration of the .РФ domain was due to end on 25 March after which the exploitation of the newly registered domain names would have begun. However, just a day before the deadline, it was agreed to extend the period of priority registration until 11 May 2010 due to an extensive amount of administrative queries from various organisations, wishing to reserve some domain names. The Coordinating Centre (responsible for formulating the rules related to registration of domain names .RU and .РФ) did not clarify whether the already registered domain names will become active at the end of the extended priority period or at the originally promised end of March/beginning of April.
Source: www.marques.org
03-02-2010 (Newsletter Issue 8/10)Cyrillic Domain Passes ICANN String EvaluationOn January 21, 2010, the Internet Corporation for Assigned Names and Numbers (ICANN) announced that Russia, Egypt, Saudi Arabia and the United Arab Emirates are the first four countries to meet a specific set of linguistic and technical requirements required under the ICANN’s IDN (Internationalized Domain Name) ccTLD Fast Track String Evaluation.
For more information please click hereSource: www.petosevic.com 02-16-2010 (Newsletter Issue 7/10)
Singapore Treaty Enters into Force
As reported by the World Intellectual Property Organization (WIPO), on September 18th, 2009 Russia ratified the Singapore Treaty on the Law of Trademarks, adopted in Singapore on March 27th, 2006. The treaty entered into force on December 18th, 2009.
Source: www.petosevic.com
12-07-2009 (Newsletter Issue 5/09)
Priority Registration of Cyrillic Domain Names Started
On November 25th, 2009, priority registration started for Cyrillic domain names in the name of trademark owners.
Domain name in the Top Level Domain .rf can consist of the symbols of Cyrillic alphabet, figures, hyphen; it also shall reproduce a trademark registered in the Russian Federation via national or international procedures. The trademark which is a basis for the domain name in .rf TLD also shall be in Cyrillic and be valid on the date of filing a domain name application with the Russian Naming Authority.
The domain name application shall be supplemented with
- copy of trademark certificate (if the applicant refers to International Registration, it is necessary to file a certificate confirming that it is valid in Russia);
- copy of the legal entity or entrepreneur registration certificate.
Documents shall be stamped with company seal, if any.
Priority registration of Cyrillic domain name ends on March 25th, 2010.
Source: www.liapunov.com
Legal basis is part IV of the Russian Civil Code, which came into effect on January 1st, 2008 and substituted all existing IP Laws.
The Russian Federation is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
Trademarks which were protected in the former Soviet Union will be also protected in the Russian Federation.
Nice classification, 10th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, colours, combinations or shades of colours, three-dimensional forms, the three-dimensional form of a good or its packaging, sound marks and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks and collective marks.
The application is filed at the Patent Office (RPO).
Multiple-class applications are possible.
Foreign applicants need a local agent.
A non-legalised power of attorney is sufficient.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration or first office action is approx. 12 to 15 months.
After registration, the trademark is published in the official gazette “Trademarks”, issued twice per month.
National:
Russian law contains no provisions governing opposition against pending applications, but it does permit third parties to request cancellation of registered trademarks. This means:
It is impossible to file an opposition against a pending trademark application. But a warning letter may be forwarded to the Examiner and it will be taken into account when issuing an official action with respect to the application contested (informal opposition).
Oppositions against registered trademarks based on relative grounds may be filed at the Chamber of Patent Disputes of the Russian Patent and Trademark Office within 5 years from the publication date of the registered trademark. An opposition against registered trademarks based on absolute grounds - within the whole period of trademark validity.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
The opposition procedure is the same as for national marks, namely the opposition against pending IR mark may be filed only as an informing letter to the Examiner containing the arguments against the trademark registration which may be taken into account to the discretion of the Examiner.
A trademark registration is valid for 10 years from date of application.
The registration is renewable for periods of 10 years.
The grace period for renewals is 6 months starting the day after the expiration date of the trademark.
If the trademark has not been used within 3 years from registration or has later not been used for 3 years continuously, it may be subject to cancellation.
As of August 22, 2012, the official fee for filing a trademark application in one class is RUR 2,700 (approx. EUR 66) and RUR 2,050 (approx. EUR 51) for each additional class. The new examination fee is RUR 11,500 (approx. EUR 282).
The official fee for registration of a trademark is RUR 16,200 (approx. EUR 402), irrespective of the number of classes.
Trademark Licence Agreement
A licence agreement has to be in writing. Licensing of unregistered marks is not permitted. A trademark can be licensed for some or all of the goods or services covered and for all or part of the Russian Federation. Licences may be exclusive or non-exclusive. The sale of a registered trademark does not automatically terminate the licence. There are statutory provisions prescribing the terms of licensing. The licensor shall be obliged to control the quality of the goods/services produced or sold by the licensee according to the licence agreement. The licence agreement shall provide for the amount of remuneration or state there is no consideration.
Recordal
There are provisions in law for the mandatory recordal of a licensee with the Trademark Office of Russia. There is no time frame for a recordal.
There is no prescribed form for a licence agreement, but it must contain the following information:
1. The territory of the licence (if not provided for, the licensee shall have the right to exercise its use throughout the territory of the Russian Federation)
2. The trademark and its registration number and date
3. The class(es) of goods of the registered trademark(s)
4. A list of the licensed goods/services
5. The name and addresses of the licensor and the licensee as stated in the trademark certificate
6. The duration of the licence
7. The kind of licence (exclusive or non-exclusive)
8. The manner of the permitted use
9. The costs of the licence agreement
10. Quality clauses
If the request for a recordal is filed through a representative, a power of attorney is needed from the licensor and/or the licensee, signed by the authorised person and indicating his name and position.
Three originals of the license agreement or three notarized copies of the license agreement, which must be signed by the authorized persons of both parties and sealed/stamped. Names and positions of the signatories must be indicated. In case the seal/stamp of any of the parties is not available the documents must be notarized.
Effectiveness
The licence agreement becomes effective and enforceable against third parties from the date of its recordal and is published in the Official Bulletin after registration.
Infringement Proceedings
There is an evidentiary presumption that use of a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings if this is provided by the licence agreement. The licensee can call upon the owner to institute infringement proceedings. Only an exclusive licensee may institute infringement proceedings in his own name. The exclusive licensee does not need to cite the trademark owner as co-claimant, unless otherwise agreed upon in the contract.
| Search type |
First class |
Add. class |
| Word Mark Search (availability) |
490,00 € |
130,00 € |
| Word Mark Search (identical) |
390,00 € |
110,00 € |
| Extended Search (word mark, company name, domain) |
690,00 € |
130,00 € |
| Device Mark Search (availability) |
690,00 € |
250,00 € |
| Trademark Owner Search |
440,00 € |
|
| Company Name Search |
290,00 € |
|
| Domain Name Search (extended) |
72,00 € |
|
| i-Search (word mark availability + legal opinion) |
590,00 € |
170,00 € |
The Prices above are S.M.D. Markeur Search Fees
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:
Country Survey11-06-2012
Mikhailyuk, Sorokolat and Partners, Moskow, Russian Federation
06-15-2011
Agency Tria Robit, Riga, Latvia
11-18-2010
PAG-E-PAG, Minsk, Belarus
11-16-2010
ARS-Patent, St. Petersburg, Russian Federation
11-01-2010
Mikhailyuk, Sorokolat and Partners, Moskow, Russian Federation
Licensing11-06-2012
Mikhailyuk, Sorokolat and Partners, Moskow, Russian Federation
11-07-2011
Mikhailyuk, Sorokolat and Partners, Moskow, Russian Federation
Patentica LLP, St. Petersburg, Russian Federation