The Law of the Russian Federation on Trademarks, Service Marks
and Appellations of Origin in Addition of December 27, 2002

 

 

The law No. 3520-1 of September 23, 1992 has been revised and examined by the Duma. A lot of changes, such as the new name of the Patent Office, are not important.

 

Unfortunately, there is no official explanation for the enactment of the new law. Therefore, one can only guess why there has been changed, for example, Section 1 that was originally identical with the respective section of the German law. The wording of the new law is that a trademark or a service mark is a designation that serves to individualise goods, jobs to be made or services to be rendered by natural persons or legal entities.

 

On the basis of this amendment one could make a conclusion that the distinctiveness, that till now had been in the foreground, has now lost its meaning. The word „individualisation“ is indefinite. Does this word mean that a new designation shall not be similar to prior designations, or that it shall differ from these prior rights; or in the course of the European liberalisation does it mean that a designation shall have a certain distinctive character?

 

Section 4 concerning the exclusive right confirms the right on a trademark not only with regard to the use of identical but also similar trademarks for identical or similar goods. This use is now specified (for example, on labels, packaging of goods that are manufactured, offered for sale or sold, displayed at exhibitions or put in any other way on the market, are stored or transported or also imported). Trademarks shall also not be mentioned in the documentation with regard to import, in Internet, in domain names or other kinds of addressing. Not only goods but also labels and packaging is deemed to be an infringement. That means that trademark owners can stop the import thereof at the customs.

 

Usually the packaging is ordered abroad, the goods are manufactured in another place and then the counterfeit goods are packaged in Russia. For example, tins for coffee are manufactured in one country, labels in another country, finally, the coffee is imported and then roasted, ground and tinned in Russia. The same situation is with regard to cosmetics. The new law is deemed to make it clear that also preparations for the infringement of trademark rights can also give rise to civil or criminal sanctions.

 

The wording of the definition of absolute bars to protection has been amended.

 

There shall not be registered marks which are not distinctive or consist of certain elements, for example, designations of goods which are customary in everyday language, common symbols and designations. There are explicitly excluded from protection trademarks which relate to the form of the goods and are determined exclusively or essentially by the character or the purpose. Unprotectable elements of a trademark shall be disclaimed, if they do not dominate. If an unprotectable element dominates in a trademark, this trademark shall not be registered. It is also explicitly noted that trademarks which acquired distinctiveness by their use are registrable.

 

With regard to the internationally customary bars to protection, there must be noted that only trademarks which consist of flags of States and the like shall not be registered. Such elements may be comprised in a trademark as unprotectable elements, if a competent authority gives its consent to their use. For example, the German flag can be comprised in a trademark, if the German State has given its consent thereto.

 

In Section 6, paragraph 4 there has been included a new provision that not only official designations or reproductions of especially valuable objects of the Russian cultural heritage shall be excluded from protection, but also objects of international cultural and natural heritage. Furthermore, there shall not be registered as trademarks reproductions of cultural assets belonging to collections etc. of museums, if the applicant is not the owner of these objects and there is no consent of the owner. In other words, Mona Lisa can be only registered as a trademark with the consent of Louvre.

 

Paragraph 5 of Section 6 relates to the requisition of the TRIPS with regard to the protection of wine and alcoholic beverages as appellations of origin. Such designations are also excluded from protection, if the goods do not originate from the designated geographical area.

 

One of the provisions of Section 7 is that trademarks which are similar to trademarks with a prior time rank shall be registered only with a consent of the owner of the prior trademark. There shall also not be registered trademarks which are identical with industrial designs having a prior time rank. The same provision applies to company names. Further, there must be noted that not only trademarks with a prior time rank can represent bars to protection, but also appellations of origin registered in the Russian Federation that are identical or  similar with regard to any kind of goods.

 

Section 8 includes a new provision that natural persons as applicants must be engaged in entrepreneurial activity (in the previous law that was only mentioned in Section 2 in connection with the trademark owner); but there is no instruction that it must be a respective activity ( with respect to the applied for goods and/or services).  This wording does not necessarily stop pirates, as they can also be registered as persons who are engaged in entrepreneurial activity.

 

There is a new regulation that after an application has been filed everyone can inspect the materials, but only the application materials. One may assume that the further correspondence cannot be inspected.

 

Section 9 mentions now filing of a divisional application which may receive the priority of the original application, if the original application has not been withdrawn by this date or is not deemed to be withdrawn.

 

If several applicants apply for registration of the same sign for the same list of goods, they may assign this sign to one of them. If one applicant applies for identical signs with identical goods, he may choose which application will be examined further. The term therefor is 6 months. If no such decision has been taken within this period, all applications are deemed to be withdrawn.

 

Section 10 establishes that the term for filing additional materials may not be extended unlimitedly, but the maximal term is 6 months. This term may be extended only in special cases.

 

In Section 13 there are no changes with regard to the reinstatement term of two months. There has to be mentioned that at the Russian PTO there are no three instances any more but only two. The Board of Appeal has been abolished as well as the Higher Patent Chamber. Now there is only the Board for Patent Disputes.

 

Section 17 „Amendments of the Registration“ allows explicitly a division of a trademark in case, if registration of this trademark has been opposed. However, a division of a trademark may only take place, if the divisional application does  contain non-similar goods or services with regard to the goods or services which remain in the parent trademark.

 

In Section 19.1 there have been included special provisions with regard to well-known trademarks which had not been earlier contained in the law. There is now established that well-known trademarks which are already registered shall be protected also for goods and services which are not similar to the goods and services with regard to which the trademark is considered to be well-known, if the use of such goods by a third party can be associated by the consumers with the goods or services of the owner of the well-known trademark and, thus, can impair his legal rights.

 

The special register for well-known trademarks remains, there shall also be issued a special certificate.  The legal protection of a well-known trademark is unlimited.

 

Section 20 about collective trademarks provides for that in accordance with international agreements of the Russian Federation an association which foundation and activity do not infringe the laws of the state in which it has been founded may apply for registration of a collective trademark in the Russian Federation. Now it is possible to transform a collective mark into a usual mark and vice versa.

 

In Section 22 the grace period for use has been limited from 5 to 3 years. Whether this new rule is an advantage especially for the pharmaceutical industry can be doubted. It is only an advantage with regard to cancellation of pirate marks, in which case 5 years has been a long period of time. Furthermore, there has been explicitly established that the use of a slightly changed trademark shall also be deemed as the use of the trademark, if the essence of the trademark stays unchanged. If there are given serious reasons, the grace period for use can be extended. This Section makes an explicit difference between the manufacturer and the seller. The seller obtains the right to use his own trademark together with the trademark of the manufacturer. But what will occur, if the manufacturer does not use his trademark or does not own any at all, for example, if goods are manufactured to order of another company. A lot of goods are made to order and are praised by the sellers as their own goods. The same situation is with regard to services: travel agencies, for example, offer under their name package tours for which they do not render any services except of marketing, because there are local hotels, travel guides, travel and other enterprises.

 

In accordance with Section 23 the rights of the trademark owner exhaust, when his goods have been brought  on the market of the Russian Federation through him or with his consent.

 

In Section 24 there is defined a notice of reserved rights, namely „R“ or „R“ in a circle or with a definition „Trademark“ or „Registered Trademark“.

 

In Sections 25 to 27 about assignment or licensing of trademarks the term „natural person“ has been specified by the term „engaged in entrepreneurial activity“ in order to exclude pirates (comments see above). Trademarks may only be assigned, if they do not deceive the consumers as to the goods or their manufacturer. This wording makes possible a lot of ways of interpretation. What does „deceive“ mean? Is it illegal, if, for example, a well-known trademark of a manufacturer A is purchased from a bankrupt’s estate by the buyer B and the goods are further on manufactured? The market does not know it, and not everyone reads economic newspapers attentively. Shall there every time be added a term „after purchase from A“, or does it only mean that trademarks which sound like geographical designations cannot be purchased by a buyer from another continent or other region. In this case, for example a trademark „Manhattan“ cannot be bought by a German or French company.

 

With regard to the grounds for cancellation (Section 28) there has been added that also trademarks in the name of an agent or a representative may be cancelled. Furthermore, trademarks may be cancelled, if the owner has infringed the law on unfair competition. To the „respective provisions with regard to cancellation of well-known trademarks“ there has also been made an addition „as far as the conditions of Section 19.1,1 has not been met“. A trademark in the name of an agent can only be cancelled upon a petition of an interested owner of a trademark that is registered in a member state of a Paris Convention. In other cases everyone can file a petition for cancellation.

 

With regard to the registration of appellations of origin (Section 32) there has been established that only Russian applicants shall furnish a decision of a competent authority in case of a geographical designation. For foreign applicants there remained the definition that there shall be furnished a document that confirms their rights in the appellation of origin. But there is not mentioned which kind of document it must be.

 

In Section 34 the term for filing an appeal has been reduced from four to three months, the term for reinstatement remained here also two months. An appeal will no longer be filed to the Board of Appeal but to the Board for Patent Disputes. Thus, there is only one instance for appeals at the Russian PTO left.

 

In Section 40 with regard to the use of appellations of origin, to the usual term „on the goods“ there has been added „on labels“. The scope of protection of an appellation of origin has been extended from the earlier definition „goods of the same type“ to „every kind of goods“. There has also been added a paragraph which says that goods, labels and packaging of these goods, on which there is illegally used an appellation of origin or a similar designation, shall be considered as a counterfeit.

 

The competent authority for cancellation of an appellation of origin is the Board for Patent Disputes. The grounds for a cancellation are specified more detailed in Section 42. For example, there are mentioned foreigners who have lost their right in the country of origin of goods. In this case the appellation of origin will be also cancelled in Russia. There is a link between foreign and Russian appellations of origin (in accordance with Section 24(9) of the TRIPS). There is explicitly indicated that everyone may file a petition for cancellation.

 

Section 43.1 refers to the „Board for Patent Disputes“ which is the only board at the Patent Office that is authorised for appeals in all cases in which an appeal is allowed, namely, in accordance with Sections 13, 19, 22, 28, 29, 34, 42 and 42.1. Against a decision of this Board there can be filed an appeal to the court.

 

In Section 46 which regulates the responsibility for the illegal use of trademarks and appellations of origin there has been explicitly worked out that not only counterfeit goods shall be destroyed but also labels and packaging. The infringer shall bear the costs for the destroying. If goods, labels and packaging have been imported separately, not only the final infringer shall incur liability, but also the manufactures of labels and packaging. These objects can be confiscated by the State or handed over  to the owner of rights.

 

The damages have been specified. The damages amount now to 1 000 to 50 000 minimum salaries that are established by the law. At present, that is equivalent to 3 200 to 160 000 Euro. The minimum salary is 100 Rubel, and the rate of exchange is now 1:32.

 

In accordance with the provisional regulations all pending cases at the Patent Office, namely, in the first instance, shall be processed in accordance with the new Law. The cases pending in the second and third instances shall be processed there, till the Board for Patent Disputes begins to work. Then all cases will be forwarded to this Board, but will be processed in accordance with the former Law.