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Trademark Renewal
In Russian Federation in order to maintain the validity of a trademark registration you must renew it every 10 years. The renewal process is fairly simple, you will need to provide trademark registration details and send us a power of attorney.
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Applications are handled by experienced local Trademark Attorneys to ensure that all legal requirements are met.
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If your trademark application is rejected, our Attorneys will inform you and advise you on the best course of action.
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A dedicated Account Manager will act as your point of contact for all communications.
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 Frequently Asked Questions
Trademark Registration
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Is there a time frame for the trademark registration approval?

The average time frame for the registration approval is 12 months, if no objections or oppositions arise.

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If I register my trademark in the Russian Federation, do I have protection in other territories?

No. Russian Federation is the territorial limit of protection.

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Do I need to sign a Power of Attorney?

Yes. Applicants are required to submit a signed power of attorney to complete the application.

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Are there any benefits from a pre-filing use of the trademark?

Pre-filing use is beneficial only in cases where the mark is basically non-distinctive. The applicant may use it to exhibit the mark’s distinctive qualities and to deal with challenges based on non-distinctiveness.

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Will there be problems in case I don’t use my trademark after registration?

Yes. A third party may attack the registered mark on the ground of non-use which will inevitably result to a cancelled registration.

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What are the types of trademark that can be registered in the Russian Federation?

Applicants may register any mark or sign that can graphically be reproduced and can make the good or service distinguishable from others. 

  • Names
  • Words
  • Motion
  • Devices
  • Sounds
  • Holograms
  • Colors
  • Slogans
  • Shapes with 3 dimensions
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What are the phases of application after a trademark has been filed in the Russian Federation?

These are the phases of trademark application: 

  1. Publication – The application details will be published in print and online. Making the following information available to everyone allows interested parties to oppose.
    • Mark
    • Goods/services
    • Applicant’s name
    • Applicant’s address
    • Date of application
    • Number of application
    • Information about priority claim
    • Trademark representation
  2. Examination – Trademark authorities will examine the application and make sure that it is compliant with all the requirements in terms of: classification, formalities, deceptiveness, clarity, descriptiveness, distinctiveness, and possible conflicts with other registrations.
  3. Registration – Provided there is no ground for rejection and oppositions have been successfully overcome, the issuance of registration will be the next step.
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What type of trademark is non-registrable?

The following marks/signs are banned by law: 

  • Marks that are in conflict with moral principles or a threat to public order
  • Marks that can be used primarily as a name of a geographic location
  • Marks without distinctive qualities
  • Marks that are generic or have a general meaning
  • Marks that feature a flag, symbol or name of a nation/region/state or an international organization
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Does the Russian Federation use the "Nice Classification" system?

Yes. The Russian Federation uses the Nice Classification. Multiple applications are not necessary to cover several classes of goods / services. Just one application would suffice.

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Is there any possibility to claim priority in the Russian Federation?

Yes. The home application date can be considered as the filing date in the Russian Federation if: 

  • The home country is a Paris Convention signatory
  • The home application was filed not exceeding 6 months prior to the filing of application in the Russian Federation
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What do I need to do to satisfy the use requirement?

Use the mark within 3 years from the date of its registration. It must be used commercially and must occur in the Russian Federation.

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Once my trademark has been registered, for how many years will be valid?

Registered marks in the Russian Federation have an initial validity of 10 years starting from the application date.

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What will be the renewal date of my trademark?

To know when you should first renew your trademark, count 10 years from the date when you filed for application.

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Is it legal to use my trademark even if it is not yet registered?

Yes. It is legal to use unregistered marks.

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Does having a registered trademark in the Russian Federation afford me any right?

Registration is necessary in order for trademark owners to afford rights. The first person to file for application will be entitled for the grant of registration.

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What is the web address of the trademark national office?

The Russian Federation trademark office is available online at https://www.fips.ru/

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Is there any need to use my trademark before I apply for registration?

No. There is no need to use the mark before filing the application.

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What are the grounds for a Trademark Application to be opposed?

The following are possible grounds for an application to be challenged: 

  • Conflicting registration that was filed earlier
  • Mark is opposed to moral principles or public policy
  • Mark uses geographical indications
  • Mark has a broad meaning, i.e., generic
  • Mark is conflicting with trade names
  • Mark is conflicting with notorious trade names
  • Mark uses protected flags, emblems or armorial bearings
  • Mark is functional, not distinct, misleading, disparaging, deceptive, or descriptive
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Who can contest my trademark registration?

Anyone or any interested party can oppose the registration.

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Is it possible to cancel a registration?

Yes. A registration may be cancelled on the following grounds: 

  • Use requirements under Section VIII.A are not satisfied
  • Bad faith
  • Proprietary rights
  • Geographical indication
  • Against standards of moral or public order
  • Mark is functional, misleading, disparaging, deceptive, not distinctive, or descriptive
  • Unauthorized use of especially protected armorial bearings, emblems of states or flags
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Are there any rights established by having a registered trademark?

Yes. Owners of registered marks can afford these rights: 

  • Exclusive rights to use and make profits from the mark
  • Rights to take an action to cancel any conflicting registration
  • Rights to take a legal action against infringement
  • Rights to take payment for damages caused by infringement
  • Rights to authorize/license third parties to use the mark
  • Rights to appeal from customs authorities for the seizure of counterfeit imported goods
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How long is the opposition period?

The opposition period begins on the date when the application was filed and will end on the date the mark was registered.

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Is the Russian Federation a member of the Madrid System?

Yes. The Russian Federation is a signatory of international treaties like the Madrid Protocol and the Madrid Agreement.

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Do I need to present periodic statements of use?

No, these are not a requirement.

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When should I renew my trademark?

Renewals must be settled every 10 years from the registration date or the last renewal date.

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What will be the renewal date of my trademark?

To know when you should first renew your trademark, count 10 years from the date when you filed for application.

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Is there any documentation that should be presented when renewing a trademark?

When renewing a trademark, a power of attorney must be presented in the trademark office.

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If my trademark expires, do I have a grace period?

Owners are given 6 months to renew the mark after its expiration date.

Basic Questions
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What is a trademark?

A trademark identifies a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by trademark registration.

With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services, and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.

 Some symbols to consider:

® Means the trademark is registered.

TM Some countries use this trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.

SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.

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What is the difference between a trademark, patent and copyright ?

You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or services from others in the market.

patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.

You cannot patent an idea alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.

Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:

  1. a) artwork (2 or 3 dimensional),
  2. b) photographs, graphic drawings, and designs as well as other forms of creativity;
  3. c) songs, music, and sound recordings of all kinds;
  4. d) books, manuscripts, publications, and another written work; and
  5. e) plays, movies, shows, and other performance arts.

 

Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.

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What is the difference between TM, SM, ® and other symbols?

The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use circle‑R or circle‑C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.

  • TM: The TM or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
  • SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
  • ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
  • ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered or not.
  • Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
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What are trademark classes?

Trademark Offices around the world use classes to divide commercial products and services into defined categories.  When you apply for your trademark to protect your brand, you must define the class or classes that you believe best describe your business activity. 

Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.

These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics. 

Trademark protection only extends to commercial use within your specified classes.  It is, therefore, possible for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.

You can search for your trademark class with this Trademark Class Search tool.

Trademark Search
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Why do I need to perform a trademark search?

Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name? 

Too many people use a name without knowing whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.  

It is a good idea to carry out some research before starting to do business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class.  The other company may object to you using the trademark and legally prohibit you from doing so.

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Do I need an Attorney to perform a Trademark Search?

No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.

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Where can I perform a trademark search?

If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.

Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing far more than you intended to pay. The trademark search is a critical part of the process.

A broad trademark search is essential in today's marketplace, given the increasing number of unregistered and common law trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.

Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A  Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.

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