RUSSIA
RUSSIA
actions, they can simply narrow the list of goods and services during the cancellation action, so they can take advantage of broader protection in Russia early on and prevent similar and identical trademarks.
Foreign brand owners should follow the three-application rule when filing trademark applications in Russia, to protect their brands as fully as possible. The first application should cover a mark as it is supposed to be used in Russia. This means that an applicant should include the word and design in its application, as it should be used in Russia. The second application should contain just the wording, focusing on the exact lettering of the word that the applicant wants to protect. This will help the applicant to have a broader scope of rights to protect its brand in relation not only to identical, but to similar trademarks. The third application should be a translation of the word into Russian. Of course, the Russian word sounds different from the English word, and when courts are comparing trademarks to find out if they are similar, the phonetic issue is the most decisive. However, the meaning of the word is very important too, and meaning can be lost when a word is translated into Russian if a direct translation does not exist.
IP enforcement
Foreign IP owners will be pleased to know that Russia will introduce a specialised court for IP rights, by March 2013 at the latest. As a part of Russia’s civil court system, the Court for Intellectual Property Rights will take over from Rospatent’s Patent Dispute Chamber and it will consider cases concerning all IP rights. It is not clear who will lead the court, but it will have 30 specialised judges.
Foreign IP owners will be pleased to note that the new court will be independent of Rospatent and the Patent Dispute Chamber. Currently, a refusal of a patent needs to be confirmed by the head of Rospatent. If a decision is appealed against, and subsequently overturned by the chamber, the refusal decision would be returned to the head of Rospatent for confirmation, even when the decision is contrary to the first one. Hopefully, the new independent Court for IP Rights will rectify this situation.
In cases of patent infringement, foreign patent owners have the option of enforcing their rights in administrative, criminal, or civil proceedings in Russia. When deciding on a proceeding for patent enforcement, it is important to analyse each case separately. Criminal proceedings are, perhaps, too severe for patent infringement cases. It is also difficult to prove wilful infringement and whether the use
210 World Intellectual Property Review e-Digest 2012
of a patent is lawful or not. Administrative proceedings are very fast. A patent owner must approach the police and produce the relevant documents, and if the police decide that they want to proceed, they can work on stopping an infringer’s activity. They have effective powers, including freezing an infringer’s bank accounts. However, a patent owner must push the police to help as they have a lot of things to deal with and patent infringement cases are not necessarily a priority.
Civil proceedings are not as fast. It can take months for a case to be decided, but the civil route is much more objective than administrative proceedings as it allows both sides to produce evidence. If an infringement needs to be stopped quickly, it is better to go to the police. If the situation is more complicated, then it’s better to use civil proceedings.
The most effective way of enforcing trademark rights is through customs. Putting a trademark on a customs register means that customs will monitor the import of goods that bear that particular trademark. Customs will inform a trademark owner’s Russian representative if a shipment of counterfeit goods is crossing the Russian border.
Elena Solovyova is a senior partner and trademark attorney at ARS Patent & Trademark. She can be contacted at:
solovyova@ars-patent.com
Vladimir Rybakov is a managing partner of ARS Patent & Trademark. He can be contacted at:
rybakov@ars-patent.com
Elena Solovyova is based in St Petersburg. She is a trademark attorney and is admitted to practise before the Russian Patent and Trademark Office. As a head of the trademark group at ARS Patent & Trademark, her practice focuses on all stages of trademark prosecution as well as on litigation in IP, including unfair competition.
Vladimir Rybakov is a Russian and Eurasian patent attorney and is admitted to practise before the Russian Patent and Trademark Office and the Eurasian Patent Office. His practice focuses on all stages of patent prosecution as well as litigation in IP matters.
www.worldipreview.com
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