About the advantages of using a notorious trademark and the special conditions that must be met in order to register such a trademark in Russia
Pursuant to paragraph 1 of Article 1508 of the Civil Code of the Russian Federation (hereinafter the Civil Code), a trademark may be recognized as notorious: “...if this trademark or this designation as a result of intensive use has become widely known in the Russian Federation among relevant consumers in respect of the applicant's goods on the date specified in the application”. It is important to note that such status can be assigned to a trademark legally protected in Russia, as well as to a designation which is not registered in the Russian Patent Office. Thus, the owners of trademarks registered in other countries also have the right to apply for and register with Rospatent a notorious mark. However, in order to do that, the right holders need to prove and confirm the long-term use and prominence of the trademark in the territory of the Russian Federation.
Recognition of a trademark as a notorious mark in Russia brings the following benefits.
- A trademark is granted perpetual legal protection.
- According to paragraph 3 of Article 1508 of the Civil Code, the scope of protection of a notorious trademark extends to all classes of goods and services, provided that the use of the designation: “...will be associated with the owner of the exclusive right to the notorious trademark and may infringe the legitimate interests of such owner”. This rule allows the holder of the notorious trademark to deal with the so-called “blurring” of the designation by reducing the volume of identical and registered in Russia trademarks for other classes of the Nice Classification and to prevent the registration of new trademarks that could lead to mixing of designations in the Russian Federation.
- Registration is a public recognition and confirmation of the widest recognition of the brand and product. Familiarity provides a high level of consumer demand, and thus the transfer of rights to such a trademark will bring more tangible profit to the right holder.
As a notorious trademark has a number of distinctive features in comparison with other trademarks, a number of additional requirements are imposed for its registration. Thus, the right holder must prove the following:
- The claimed trademark is intensively used.
- The designation is widely known in Russia.
- Consumers identify the trademark with the goods produced by the applicant.
The Administrative Regulations of the Federal Service for Intellectual Property Rights for Recognition of Trademark or Designation Used as Trademark a Notorious Trademark in the Russian Federation contains an extended description of the procedure and conditions for the recognition of a trademark as notorious in the Russian Federation. In accordance with sub-paragraph 3 of paragraph 17 of the above normative act, in order to confirm the publicity of the trademark, the right holder should provide the following information to the Patent Office at the stage of filing the application:
- On intensive use of the trademark or designation, in particular in the territory of the Russian Federation;
- List of the countries where the trademark or designation has become widely known;
- On the expenditures made to advertise the trademark or designation, e.g., annual financial reports;
- The cost (value) of the trademark according to the data contained in the annual financial statements;
- The results of a survey of consumers of goods on the question of the publicity of the trademark or designation conducted by a specialized independent organization, which can be drawn up taking into account the recommendations posted on the Rospatent official website.
The applicant may also provide additional information confirming the wide popularity of the used designation.
It is worth noting that for a foreign company, it will be difficult to obtain and process the above-mentioned information independently. In addition, it is important to add that the interaction between Rospatent and foreign persons is conducted through authorized patent attorneys.
Therefore, I would recommend that you seek legal assistance from Zuykov and Partners law offices. Over 2019-2020, thanks to the efforts of the company’s staff, Rospatent has recognized as notorious the following trademarks: RF Trademark No. 218 “Слобода”, RF Trademark No. 214 “Вязанка” and RF Trademark No. 210 “ZARINA”.
As a practicing patent attorney specializing in the recognition of trademarks notorious in Russia, I would like to note that the procedure of registration of such a trademark requires the participation of a competent specialist, but the benefits of such outsourcing is really worth it.