WELL-KNOWN TRADEMARKS
trademark as well-known the appropriate request should be fi led with Rospatent. T ree types of designations may be
recognised as well-known in Russia: • A Russian national trademark registration; • An international trademark registration protected in Russia; and
• A trademark that is not registered in Russia. A well-known trademark shall be
granted
the same legal protection as an ordinary trademark. In addition, a well-known trademark provides its owner with certain important advantages: • T e legal protection
of a well-known trademark is not time-limited;
• Protection extends to goods or services of a diff erent kind;
• Protection of a well-known mark may start from the period predating the fi ling date of the request to recognise the trademark as well known; and
• T e commercial value of a well-known trademark is higher than that of an ordinary trademark.
Proving fame Well-known status should be shown by numerous documents and materials confi rming the intensive use of the mark and its reputation among consumers as well-known in association with the relevant goods or services and the trademark owner. In seeking to have its trademark recognised as well-known, the applicant should indicate the goods or services for which the mark became well-known and the date from which it became well-known. T e procedure involves the following steps:
• Collecting evidence of use including opinion polls that identify the goods or services for which the trademark has become well-known and the date from which it has become well-known; • Preparing and fi ling a petition Rospatent;
with
• Considering the petition (which is done by the board of examiners); and
• Making a decision and issuing a certifi cate confi rming well-known status. As a rule the applicant is not involved in
the proceedings beyond fi ling the request with the authorities, but if the board believes the applicant should be involved, it might be invited to the hearing or asked to provide some clarifi cation. Along with a petition for the recognition
of a well-known trademark, the following information may be submitted: • T e results of a consumer survey, performed by a specialist organisation, revealing consumer knowledge of the trademark;
• Examples of intensive use of the trademark, especially in Russia;
www.worldipreview.com
“THERE ARE NO REQUIREMENTS TO VALIDATE WELL-
KNOWN TRADEMARKS, BUT SUCH MARKS ARE VULNERABLE TO CANCELLATION OR INVALIDATION ACTIONS FILED BY INTERESTED PARTIES.”
• A list of countries where the trademark has acquired well-known reputation;
• Examples of advertising costs incurred relating to the trademark and examples of advertising;
• Details of the value of the trademark; • Publications in Russian periodicals; and • Documents containing information about supplies of goods to Russia, etc. It
is not compulsory to submit all of
that consumers have a strong association between the trademark and the goods or services for which it is used, and with the trademark owner. Oſt en consumers recognise the trademark but have little knowledge about its owner. A trademark may belong to an IP right owning
company, but its name might not be known to consumers. Furthermore, if the date from which the applicant would like to have its trademark recognised as well-known refers to a period in the past, the supporting evidence should predate the date mentioned in the request. If the applicant disagrees with the decision of
Rospatent, there is an opportunity to dispute the decision with the IP Court. Protection of a well-known trademark is
not time-limited. T ere are no requirements to validate well-known trademarks, but such marks are vulnerable to cancellation or invalidation actions fi led by interested parties. When a trademark is recognised as well-
the
above evidence. Trademark legislation does not contain a list of obligatory documents that must be submitted with a petition for the recognition of well-known status. Special attention should be paid to opinion
poll results. Such polls must be carried out in at least six of Russia’s largest cities, including Moscow and Saint Petersburg. Other cities may be chosen by the applicant depending where the trademark is used. Determining the date from when the trademark
became well-known is also crucial, and careful review of all available materials is required. T e date from which the trademark became well- known should be indicated precisely. A petition to recognise a trademark as well-
known may further be denied if, for example: • T e submitted materials and documents do not prove the fame of a mark in association with all goods mentioned in the petition;
• T ere is a discrepancy between the mark for which the petition was made and the form in which it has been used; and
• T e submitted materials do not prove that the mark was used by the trademark owner, etc.
Rospatent takes a strict
approach towards
petitions to recognise marks as well-known, and these are denied quite oſt en. T e main diffi culty encountered during proceedings is demonstrating
Vladimir Trey is a partner at Gorodissky & Partners and a Russian trademark attorney. He specialises in trademarks, in particular trademark proceedings in Russia and the CIS and Baltic states, and under the Madrid Protocol. He can be contacted at:
pat@gorodissky.ru
known, Rospatent will include it on the list of well-known trademarks and a certifi cate will be issued. Once the mark has been included on the list, information relating to the well-known trademark is published in the Offi cial Gazette, as well as on the online open register. Currently (March 2015) there are 149 published well-known trademarks in Russia, including ‘Nike’, ‘Coca- Cola’, ‘Disney’, ‘Tiff any’, ‘Intel’, ‘Gallup Institute’, ‘Adidas’, ‘Gillette’, ‘Nikon’, ‘Elle’ and ‘Heinz’. Interest in the recognition of well-known trademarks in Russia is growing constantly. A well-known trademark registration may be an eff ective enforcement instrument and a very valuable piece of an IP portfolio.
World Intellectual Property Review May/June 2015
31
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Shutterstock.com
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