Photo: Nick Youngson, Alpha Stock Images
You can save hundreds and thousands of dollars for your company and your clients.
I have been dealing a lot with provisional refusals of international trademarks in Russia.
It’s when a company files an application with WIPO (World Intellectual Property Organization) for a number of countries and then receives a partial or total refusal in trademark protection from the Russian Patent Office.
Do people like to pay lawyers a lot of money to deal with those refusals? Of course not.
I hear a lot of frustration that Russian examiners’ rules and arguments are “vague”, “ridiculous”, and “we registered 20 trademarks across the world and only in Russia we faced problems.”
You need to know about each country patent office’s pitfalls and quirks to register a trademark with minimal hassle and make your clients happy.
I will go through each mistake one by one and explain how to escape problems even before you file an application.
Similar trademarks
Your trademark will be searched in databases of millions Russian trademarks, pending applications, and foreign trademarks protected in Russia due to international agreements (i.e trademarks registered through Madrid agreement or protocol procedures).
To be 100% aware of risks, it’s best to hire a Russian trademark attorney, who will do the search for you in the same databases that are used by Russian PTO’s examiners and will give you a legal opinion about chances of success and recommendations.
Descriptive words and phrases
You shouldn’t include or should disclaim any words or phrases, characterizing your product or service. For example: “italian ham” or “best in the industry.” This includes any abbreviations, symbols and so on.
You can either delete these phrases from the trademark, or you can collect documents, proving that your trademark was used in commerce in Russia before you filed an application.
That’s when it starts to get tricky. Not all the evidence that is usually OK in western countries is good enough for Russian examiners.
For instance, declarations of general council or CEO of the company, certified by their signature, are not sufficient. Screenshots from the internet, social media and e-mails are not enough as well.
Russian examiners like to see what they believe to be “real” documents: sales and supply agreements, distribution agreements, information about advertising, copies of articles and interviews in the media, and materials from exhibitions.
Rule of thumb is that you should know in advance if your trademark is descriptive and prepare the documents before even filing the application.
Duplicates
Duplicates in list of goods and services occur when the same word or phrase can be translated to English in two or three ways. This also can take place, when applicants don’t use Nice classification of goods and services but make those lists themselves from goods and services that are not in the “official classification.”
For example: baggage/luggage and backpacks/rucksacks have the same meaning in Russian.
To make sure you won’t have any problems with your list, upload it to Madrid Goods & Services Manager, specifically developed by WIPO for the applicants, so they can check their list and translate it to the other language properly using official terms from the classification.
Dates
There are a lot of trademarks with impressive history.
Applicants like to put the date they or their ancestors started a business on their trademarks: for example, “since 1899”.
Russian PTO wants to see proof, though. You should submit it together with an application or deal with a provisional refusal later.
You can also remove the date from the trademark. The trademark will be registered without questions, and you still can use the date on your products.
Geographical names
The worst is Russian PTO’s view of geographical names in trademarks.
If you can find a town, or a lake, or a national park, or anything else on Google Maps with the same name as your trademark, you will get a provisional refusal.
While it’s pretty straightforward how to deal with similar or descriptive names, there is almost nothing you can do here.
You can try to get a statement from city hall of the town or any official that governs the place that they are not against registration of your trademark.
It helps if your business has nothing to do with that place. For example, you are a financial or IT company, or do any kind of professional services. It’s more complicated if you are a travel agency.
Current name and address
Your earlier trademarks could be set against your current mark if there are differences in how your company’s name or address are written in trademark registers.
If you changed anything before filing a new application, make changes in Russian trademark register or WIPO register accordingly.
Misleading names
Russian PTO doesn’t like when trademark doesn’t correspond with its owner’s country of residence.
For example, your trademark sounds Italian and your company is registered in Turkey.
Get your story straight. You should have a simple explanation, why your trademark has this particular name. It would also help if you have a trade history in Russia.
Misleading goods and services
Sometimes not all the goods and services are permitted to stay.
For example, you have a trademark with a phrase “famous French fries.” It’s descriptive and should be disclaimed.
But! If in your list of goods, there are any other products besides French fries, you will get a refusal. Russian PTO sees any other goods as misleading because the description covers French fries only.
Either delete the descriptive phrase or amend your list of goods and services.
* * *
Those are the most common things you should look for before filing an application or subsequent designation in Russia.
Let me know, if you had any other problems and I will probably write a 2.0 article.
Disclaimer: this article is strongly informative and doesn’t constitute legal advice.
Author: Svetlana Tsareva
Russian trademark attorney
Founder of IP Bureau
