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28 April 2022

Sergey Zuykov moderated the discussion on trademark registration on the IP Forum of the Chamber of Commerce and Industry

The 14th International Forum Intellectual Property - XXI Century was held on April 26-28, 2022 at the Chamber of Commerce and Industry of the Russian Federation. On April 26, Sergey Zuykov, Managing Partner of Zuykov and Partners, Deputy Chairman of the Council of the Chamber of Commerce and Industry for Intellectual Property, was a moderator of the round table on initiatives to change the legislation in the field of trademark registration.


Within the framework of the round table, patent attorney Inna Polyanskaya presented her report "Options for administrative procedures for early termination of trademarks due to non-use".


For businesses, the early cancellation of a trademark due to its non-use through a court is an extremely inconvenient process, since it requires collecting evidence of both the plaintiff's interest and evidence of the use of disputed trademarks.


For this discussion, it is necessary to refer to the 2013 report of the INTA. This report and recommendations on the criteria for trademark cancellation due to non-use indicate that countries (departments) are divided into 3 main groups:


1. Without any requirements for the submitted application;

2. Minimum requirements for the submitted application;

3. A formal system with excessively burdensome application requirements.


INTA in 2013 ranked the Russian Federation in the third group along with such countries as Iraq, Jordan, Malaysia, Mexico, and Honduras.


Statistics on the number of cases considered in the Rospatent Chamber for Patent Disputes and the IP Court can serve as confirmation of the excessive requirements for filing applications. Submitted figures show that after the annulment procedure was transferred from Rospatent (administrative procedure) to the IP Court (court action), the number of cases on early termination of trademarks considered per year fell by 2-2.5 times.


In this regard, it is proposed to discuss options for the administrative procedure for the early termination of a trademark. As part of the notification, the interested party may propose to the copyright holder:


  • cancellation of an unused trademark in whole or in part;
  • alienation of an unused trademark to an interested party;
  • other options for resolving the claim.


It is noted that the mandatory 2-month claim procedure (notification of the copyright holder) should be preserved. In the period between 2 and 3 months after sending the notification to the copyright holder, the interested person may send an application to Rospatent for the early termination of the trademark due to non-use, which was registered more than three years ago. Rospatent sends a notification to the copyright holder about the receipt of such an application and offers either to cancel the trademark in whole or in part or to submit evidence confirming the use of its trademark within three years before the date of cancellation within the period established by the regulations.


Moderator of the round table, patent attorney Sergey Zuykov noted that the proposed procedure is analogous to the algorithm of actions on termination of a trademark in the event of termination of the copyright holder. Now the main problem is the excessively complex procedure for preparing a claim in the IP Court. The procedure is also complicated by the fact that currently, the IP Court requires an extract from the Unified State Register of Legal Entities not only for the plaintiff but also for the defendant. Getting a statement for the defendant can cost up to several hundred thousand rubles, and the costs are borne by the plaintiff. In Russia, the number of marks submitted for registration is somewhat lower than in the EU, USA, and China, but this does not mean that the trademark register should exist in such a "polluted" form. Therefore, one of the initiatives proposed by the CCI is a significant simplification of the procedure.


Further, Sergey Zuykov made a presentation "Change of administrative procedures for payment of the fee and establishment of priority of the application for trademark registration".


At the meetings of the IP Council of the Russian Chamber of Commerce and Industry, it was suggested that one of the problems of business is that "pirates" submit applications for trademark registration in a large number of classes, while such applications are submitted without paying fees. According to the Federal Institute of Intellectual Property, the volume of applications for trademark registration without payment of fees is approximately 15,000-17,000 applications per year. Even though such applications are submitted without payment of fees, these applications for a long period (about 8-9 months) prevent the registration of applications submitted for registration later.

The priority of the application for trademark registration is established by the date of applying for trademark registration if a payment document for payment of the fee is provided within 1 month from the date of filing. In case of payment of the fee without the necessary identification details or after the expiration of one month, the priority of the application is set by the date of submission of the payment document.


The meeting participants expressed the opinion that it is necessary to make changes both in the cost of fees, making a progressive scale on the principle of "the more classes, the higher the fee", and in the procedure for setting priority for the submitted application, linking it to the payment of the corresponding application fee.


Thus, the following options are proposed for changing the number of fees, as well as establishing the priority of an application for trademark registration.


1.    Setting the priority of an application

The priority of the application for trademark registration is established by the date of applying for trademark registration if a payment document for payment of the fee is provided within 1 month from the date of filing. In case of payment of the fee without the necessary identification details or after the expiration of one month, the priority of the application is set by the date of submission of the payment document.

If there is no information that the fee has been paid, the applicant is notified about it by a formal expert examination, indicating that if there is no confirmation of payment of the fee within a month from the date of receipt of the application, priority on the application will be established by the date of payment of the fee in full and after submitting the document on payment of the fee to the Federal Institute of Intellectual Property.


2.    Progressive fee payment scale


3.    The fee for extending the validity of a trademark should depend on the number of classes


In conclusion, Sergey Zuykov informed about the proposed draft law restricting the registration of trademarks containing geographical indications.


First of all, amendments are proposed to clause 7 of Article 1483, according to which geographical indications will be contrasted about homogeneous goods, and not about all goods. In addition, amendments were introduced to Article 1488 and Article 1489, where it is proposed to replace "or its manufacturer" with "its manufacturer or place of manufacture". Similarly, in Article 1483 (item 3.1), replace the words "or its manufacturer" with the words "its manufacturer or place of production". Thus, the legislator tries to distinguish between the manufacturer and the place of production of the product.


A video recording of the session is available on Youtube

Text materials of the session at Telegram

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