Changes to Russian trademark legislation 2

On 11 December 2002 the Russian Parliament passed the federal law "Amending the Law on Trademarks, Service Marks and Names of the Origin of Goods" (the "Amendments"). This new law makes substantial changes to Russia's trademark legislation, which has been in place since 1992.

Overall, the Amendments make Russia's trademark legislation more favourable to the owners of trademarks. The changes are designed to make the process of registering and examining trademarks simpler, as well as improving enforcement measures against trademark infringement.

The most significant changes introduced by the Amendments concern counterfeiting, cybersquatting and famous trademarks.

The Amendments provide that goods bearing labels and trademarks that are illegal, or violate the exclusive rights of a trademark owner, shall be classed as counterfeits. This provision enables the authorities to destroy the counterfeit goods, as well as impose criminal liability on the violator.

The Amendments also provide that a trademark holder's exclusive rights shall include the right to prevent identical and/or confusingly similar domain names being registered. The law previously lacked such provisions and as a result there have been many cybersquatting cases involving companies such as Kodak, Coca-Cola, Nivea and Quelle.

The concept of a "famous trademark" (a trademark, which has become famous amongst consumers and is strongly associated with a particular product or producer through its intensive use), was another area of Russian trademark law that was underdeveloped. Famous trademarks may be protected in Russia, either by being registered with the Russian Patent and Trademark Office, or in accordance with international treaties and bilateral agreements to which Russia is a party. However, prior to the Amendments, famous trademarks were only considered famous if they fell into particular categories of goods and/ or services. Therefore, trademark pirates were previously able to register an identical trademark to that of a famous trademark for similar goods and/or services as long as they fell into different categories. This led directly to the dilution of famous trademarks in Russia.

The Amendments introduce the concept of preventing the dilution of trademarks and stipulate that designations identical to those of registered famous trademarks may not be registered as trademarks for the same categories of goods and/or services as the famous trademark, where the use of the identical designation would lead to the association of the famous trademark and such association might harm the reputation of the owner of the famous trademark. Non-identical but confusingly similar designations (i.e. designations that are registered for dissimilar goods and/ or services), may be registered subject to the consent of the owner of the famous trademark.

For further information please contact David Griston at [email protected] or on 00 7 095 2585000.