Procedures for recognition of famous trademarks in Russia

In the context of international economic integration, building and protecting a trademark does not stop at registration but also requires recognition of value and reputation in the market. In Russia, a country with a developed economy and a complex intellectual property legal system, recognition of a famous trademark not only helps businesses strengthen their position but also brings significant legal benefits. As of August 2024, there were 262 trademarks in the List of Famous Trademarks in Russia. However, the procedure for recognition of a trademark in Russia requires careful preparation, legal knowledge, and appropriate approach strategies. In the following article, Viet An Law will present current regulations on procedures for recognition of famous trademarks in Russia.

What is a famous trademark?

A famous trademark is a special type of trademark that has certain characteristics and certain advantages for the copyright owner.

According to Article 1508 of the Civil Code of the Russian Federation:

“Upon the request of a person who believes that a trademark used by him or a name used as a trademark is a well-known trademark in the Russian Federation, a trademark protected on the territory of the Russian Federation based on state registration or under an international treaty of the Russian Federation, or a name used as a trademark but not legally protected on the territory of the Russian Federation, may be recognized by the federal executive body of intellectual property as a well-known trademark in the Russian Federation, if this trademark or name, due to its widespread use at the time specified in the application, is widely known to relevant consumers in the Russian Federation of the applicant’s goods.”

Procedures for recognition of famous trademarks in Russia

According to Article 1508 of the Russian Civil Code, in order to be recognized as a well-known trademark, it is necessary to file a corresponding application with Rospatent. To file an application, it is necessary to fill in an application for recognition of a well-known trademark, which must be filed in relation to a trademark in any form.

This is a different regulation compared to Vietnam. Currently, Vietnam does not have a procedure to recognize a trademark as famous. The recognition of fame is mainly established in judgments on intellectual property disputes over trademarks. Therefore, this is a process that Vietnam can refer to develop regulations on recognizing the list of famous trademarks to make it more convenient in the process of registering and opposing trademark applications with signs that are identical or confusingly similar to trademarks considered famous (at a higher level than ordinary trademarks).

Information required in the application

The application shall be signed by the applicant or the applicant’s representative and shall include the following information:

• Name of the applicant;

• The applicant’s location (place of residence) must clearly state the country code according to the standards of the World Intellectual Property Organization (WIPO);

• Contact information;

• Trademark certificate number (international registration number) if an application is filed about the trademark;

• The registration number of the state trademark registration application (if any), if the application is filed about a name;

• List of goods and/or services for which the applicant requests recognition of the trademark or the name used as a trademark is a well-known trademark, grouped into classes in the International Classification of Goods and Services (ICGS);

• Description of the name used as a trademark;

• The date on which the applicant requests recognition of the trademark or name used as a trademark as a well-known trademark;

• Arguments that the trademark or name used as a trademark, due to its widespread use at the time stated in the application, is widely known to relevant consumers in the Russian Federation about the applicant’s goods or services; and

• Other information relating to the mark or name used as a mark, relating to the recognition of a well-known mark (if any, at the applicant’s initiative).

• The application must also be accompanied by a power of attorney confirming the authority of the applicant’s representative.

Documents to be submitted with the application

As noted above, the application must be accompanied by documents confirming the well-knownness of the mark or name. These documents and materials must reflect the following:

• Time of commencement of use of trademark;

• Description of the trademark, owner, statutory documents, assignment agreements, license agreements (if use is made by the licensee), confirmation of legal succession;

• Registered trademark in the name of the applicant: Russian certificate, international registration, certificate of national registration abroad;

• Countries in which the mark is widely known and information on where, when, and by whom the mark began to be used;

• Information on the provision of services under the trademark: documents confirming the provision;

• Information on sales areas, product categories (catalogs, programs, projects); usage methods; information on advertising and advertising costs;

• Data on the average annual number of service users (visitors);

• Data on trademark value;

• Sociological consumer surveys confirm that the trademark has become well-known among a certain group of consumers; and

• Information about participation in exhibitions in Russia and abroad, awards and prizes with famous trademarks, etc.

It should be noted that generalizations should not be made; the information should refer specifically to trademarks or names that are recognized as commonly used in connection with certain goods and/or services.

State fees

A state fee is required for consideration of an application for protection of a well-known trademark in the Russian Federation, which is based on the results of the examination of the application. The state fee is R40,000 (around US$400), according to Section 2.29 of Appendix No. 1 to the Regulation on Taxation in the Russian Federation. The completed application together with a package of documents is submitted to Rospatent.

Examination and Certification Process

An application for recognition of a well-known trademark is examined at a meeting of the council, where the council will consider all documents submitted by the applicant and listen to the arguments of the applicant or the representative participating in the examination of the application.

In case the application is successfully examined and a decision is made to accept the application, information about the famous trademark will be included in the List of Famous Trademarks. This information includes the registration number of the famous trademark, the image (copy) of the famous trademark, information about the copyright owner of the famous trademark, the list of goods and services, the date the trademark was recognized as a famous trademark in general, the date Rospatent decided to recognize the trademark or designate it as a famous trademark, the date the famous trademark was included in the List, the date of publication of information about the famous trademark in the official newsletter of Rospatent, contact address and other information related to the famous trademark.

The Certificate of Well-Known Trademark is issued to the applicant in electronic form and, upon the applicant’s request, in paper form within one month from the date the trademark is included in the List of Well-Known Trademarks.

Benefits of being recognized as a famous trademark

The procedure for recognition of a trademark as a famous trademark has several characteristics. This procedure is quite laborious and time-consuming in collecting the necessary documents and papers. However, when recognized as a famous trademark, there will be the following advantages:

• Legal protection is valid indefinitely, i.e. there is no need to renew the trademark every 10 years and incur corresponding costs;

• Legal protection of a well-known trademark also extends to goods that are not similar to the goods for which the trademark is recognized as well-known, if the use of this trademark by another person in connection with those goods would lead consumers to associate it with the owner of the exclusive right to the well-known trademark and thus could infringe upon the legitimate interests of that owner (Clause 3, Article 1508 of the Civil Code of the Russian Federation), i.e. legal protection is broader;

• The special status of a trademark increases the competitive advantage and confirms the owner’s position – public confirmation of the widest popularity of the trademark in Russia and a clear connection of the trademark with the copyright holder.

Above is Information on procedures for recognition of famous trademarks in Russia. If you need advice on regulations related to intellectual property, please contact Viet An Law – IP Firm for the best support.

Reference: Maria Dvornikova, Asiaiplaw