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Our ratingsPursuant to paragraph 1 of Article 1508 of the Civil Code of the Russian Federation (hereinafter the Civil Code), a trademark may be recognized as well-known: “...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 well-known 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 well-known mark in Russia brings the following benefits.
As a well-known 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 Administrative Regulations of the Federal Service for Intellectual Property Rights for Recognition of Trademark or Designation Used as Trademark a Well-known Trademark in the Russian Federation contains an extended description of the procedure and conditions for the recognition of a trademark as well-known 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:
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 well-known 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 well-known 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.