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Trademark registration in Russia

Date: 12-10-2016

Trademark registration is one of today's most effective ways of positioning a business on global and local markets. A trademark can eventually turn into a world-known brand. History knows numerous examples of how a picture, a word, a phrase or even a simple element can become a world-known symbol of a company, a product, an image.

In simple and honest words, trademark registration is a way to protect your income associated with a brand and to make ways for making more money. Registered trademark is protected by law. It belongs to a trademark owner and in most cases can't be used by any other persons or companies without owner’s consent.

Registered trademark can be used to generate profit or to structure income and taxes within a group of companies, for example, through license agreements or franchise agreements.

There are two ways to register a trademark in Russia - through national trademark application or through international, so-called Madrid System.

Under national procedure you will receive trademark protection in one country, while Madid System allows applying for trademark registration in many different countries at the same time. However, despite seeming advantages in most cases such application will still require engaging a local trademark attorney in order to overcome any request or notification from the Russian Patent and Trademark Authority (Rospatent) as well as any opposition from third parties. This way of trademark registration is mostly practiced by major international companies, while small and medium companies choose more straightforward and faster national trademark registration procedure.

Procedure of trademark registration in Russia:

  1. First of all, an applicant needs to make sure that the intended mark corresponds to the norms of the Russian legislation. For example, in Russia it is impossible to register as a trademark a designation that only consists of commonly known symbols and terms, as well as indistinctive marks. BBNP law firm can help correct a trademark in order for it to correspond with the Russian laws.
  2. The applicant has to choose the classes from the International Classification of Goods and Services for your future trademark. The applicant is required to choose from the suggested groups of goods and services the ones that match the Company's activity and that the future trademark shall represent.
  3. Trade Mark searching. Every business needs to be sure that there are no trademarks similar to the applied mark in the Russian trademark data base. The main idea is simple: two similar (or very alike) trademarks registered in the same group of goods and services cannot exist at the same time in one country unless they are owned by the same owner.
  4. The next thing to do is to prepare a package of documents required by law; pay all necessary state fees, file the documents to the registering authority and prepare for a long wait since the whole process can take up to 1,5 years. Please keep in mind that each possible request or opposition will delay registration procedure for 2 months minimum.

Practically both national and international trademark registration procedures require participation of an experienced and qualified local lawyer or trademark attorney. In case you decide to use BBNP’s assistance you will be asked to provide us with:

  • A) The logo (words, image) for registration in high quality resolution
  • B) General information about the applicant: name, registration address, registration and tax number
  • C) Copy of a previous application in case of requesting early priority
  • D) List of goods and services for the registration
  • E) Power of attorney that would allow BBNP to represent the applicant in Rospatent.

State fees. Generally local state fees are paid by BBNP law firm. BBNP converts the sums of state fees to be paid and includes them to the invoice issued to the client. No additional fees will be charged for making this payment on behalf of the client. The amount of fees depends on the number of ICGS classes.

The minimal sum of all official state fees for trademark registration in one class is approximately $500 excluding fees for patent search which is not obligatory but is strongly advisable.

The official tariffs of Rospatent for conducting search through the registered trademarks and marks applied for registration vary depending on the type of a trademark, number of classes and the term of search. The minimal tariff is $ 80 for a slowest word mark search in one class, and maximal is up to $ 7000 for the fastest combined mark in 45 classes.

Below you can find a whole list of state fees of Russian patent agency (Rospatent):

Service Conducting preliminary search through word trademarks in Russia State fee, rubles
During 1 month per 1 class of ICGS (+ per each class over 1) 4 720 + 1 180
During 14 days per 1 class of ICGS (+ per each class over 1) 9 440 + 2 360
During 5 days per 1 class of ICGS (+ per each class over 1) 14 160 + 3 540
Service Conducting preliminary search through design trademarks in Russia State fee, rubles
During 1 month per 1 class of ICGS (+ per each class over 1) 8 260 + 1 770
During 14 days per 1 class of ICGS (+ per each class over 1) 16 520 + 3 540
During 5 days per 1 class of ICGS (+ per each class over 1) 24 780 + 5 310
Service Conducting preliminary search through combined trademarks in Russia State fee, rubles
During 1 month per 1 class of ICGS (+ per each class over 1) 12 980 + 2 950
During 14 days per 1 class of ICGS (+ per each class over 1) 25 960+ 5 900
During 5 days per 1 class of ICGS (+ per each class over 1) 38 940 + 8 850
Service Trademark registration in Russia State fee, rubles
Drawing up and submitting the trademark/service mark application (+ per each class over 1) 10 500 + 1 500
Drawing up and submitting the application for the registration of a protected designation of origin 10 000
Registration of trademark and obtainment of a certificate 12 000
Registration and obtainment of a certificate for a collective mark 15 000
Obtaining a certificate for an exclusive right on a protected designation of origin 12 000
Service Supporting trademark/service mark registration in Russia State fee, rubles
Introduction of additions, clarifications, specifications, amendments into trademark/service mark application 3 600
Introduction of amendments into the state register of trademarks  and into the certificate of trademark/service mark 1 500 (for 1 amendment in 1 mark)
Registration of trademark/service mark separated from a valid mark registration 6 100
Transformation of a trademark application into a collective trademark application 1 500
Transformation of a trademark into a collective trademark 6 000
Transformation of a collective trademark into a trademark 3 000
Introduction of changes concerning information about the applicant into trademark application 3 600
Prolongation of term for answering the requests  of experts of Rospatent or for answering  the notification of necessity of choosing the application for further registration 600 per each month, but not above 6 months
Restoration of terms for provision of materials under the request of experts of Rospatent or for filing of exception to the Chamber of patent disputes missed on applicant’s fault 6 000
Prolongation of period of validity of exclusive right  for trademark/ service mark 15 000
Prolongation of period of validity of exclusive right  for collective trademark 20 000
Prolongation of period of validity of exclusive right  for protected designation of origin 15 000
Providing a 6-month term for prolongation of expired terms of period of validity of trademark/service mark registration 1 500
Receiving a duplicate copy of certificate 1 000
Receiving copies of certificates, application materials 400
Service Filing applications, claims to the Chamber of Patent Disputes of Russia State fee, rubles
Drafting and filing an objection to refusal in admittance  to examination of mark application 3 600
Drafting and filing an objection to the Rospatent decision of refusal in registration of trade mark 6 100
Drafting and filing an objection to the provision of TM registration 10 000
Drafting and filing an application for registration of a commonplace mark in Russia 30 000
Drafting and filing an application for previous cessation of TM due to non exploitation 12 000
Drafting and filing an application for admittance of TM registration illegal due to violation of antitrust law of Russia 5 000
Service Transfer & Management of Patent & TM rights State fee, rubles
Transfer of TM. Drafting & registration 10 000 +8 500 For each  additional class
Drafting & registration of a License agreement 10 000 +8 500 For each additional class
Drafting & registration of a franchise agreement 10 000 +8 500 For each additional class
Drafting & registration TM pledge agreement 10 000 +8 500 For each additional class
Transfer of TM without agreement according to Russian law. Registration 10000 + 8500 For each additional class
Registration of changes in license, franchise, pledge transfer agreements 1 500
Registration of termination of agreement 1 500

BBNP's service fees depend on the number of trademarks to be registered, type of marks and the number of ICGS classes. The average cost of one trademark registration excluding state fees is $600 to $900.

After successful registration the applicant will receive a state certificate of trademark ownership. This certificate (as well as any other documents issued by Rospatent under national application procedure) is made in Russian language only. Translation can be provided by BBNP upon request and payment of additional small fee.

However, it is important to note that trademarks registered in one specific country are protected only within the territory of this country. It means that during exporting its goods labeled with the trademark a company may face a similar trademark registered in that country with the same group of goods and services. These situations are very common and usually end up as so-called “Patent wars”, examinations with antitrust authorities, forced withdrawal from the market, unplanned rebranding and, of course – losses.

What can be done in this situation?

First of all, there are administrative procedures of contesting the protection of opposed trademark both in full and in part. Grounds for such contestation may vary from case to case. However, this is not an absolute solution, and in all cases the best way of protection is to take actions in advance.

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Head of practice
Alexey Arinushkin

Head of Industrial Property practice

Tel:
+7 495 7898451

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