By Natalia Galdetskaya, Olimpline Consulting
Foreign investors wishing to sell product in Russia should be aware that Russia acknowledges main international intellectual property conventions such as the Madrid Agreement Concerning International Registration of Trademarks and the Paris Convention for the Protection of the Industrial Property.
However, Russian law indicates that only legal entities and individual entrepreneurs can hold the rights over a trademark. Foreign companies have same right and responsibilities as domestic companies in this area. Foreign companies can initiate a trademark registration even without Russia operations, while such a business, providing it does not maintain an operating presence in Russia, is not under obligation to register with the Russian tax authority.
Still, at least two points need to be considered:
- Trademarks can only be held by the foreign parent company itself and not any Russian operating subsidiary. International company’s affiliated branch or representative office may not register a trademark if they are not registered as legal entities and do not meet the definition of the trademark holder according to the Russian civil law.
- It is also important to mention that foreign companies, unlike companies of Russia, can interact with Russian Agency of Patents and Trademarks (Rospatent) only through Russian patent attorneys. A power of attorney defines the authority of a selected firm. It has to be presented upon demand of Rospatent. A translation of the power of attorney has to be attached if the original language is not Russian.
Stages of registering a trademark in Russia
- Filing of an application and documents according to the requirements of Rospatent. Submissions should include the trademark registration statement; the trademark itself and its description; a list of goods and services for the mark (the International Classification of Goods and services should be applied). Receipts showing the payment of the registration fee should be included. All documents should be submitted in Russian, Although the Russian Civil Code does not require foreign companies to submit their business license, it is recommended to have them prepared (along with an notarized translation) in case if such a request appears from the side of Rospatent.
- The application is examined, and its compliance with the legal standards is checked. As the result the application is either accepted or rejected.
- The trademark is examined according to its compliance with Russian Law. Foreign companies that are willing to register a trademark in Russia are advised to consult with a local lawyer to familiarize themselves with these requirements and restrictions in registering symbols, images and words that could be perceived as offensive by certain groups of people based on their national, religious or other identity.
As the result of the third stage Rospatent will make a decision on the trademark application.This procedure is concluded with the official registration of the trademark. The exclusivity period for the trademark is 10 years (counting from the submission date) and may be extended.
Before approaching the submission stage, the following actions can considerably ease the process of trademark registration:
- An existing trademark search will help to avoid the similarities with similar trademarks in Russia;
- Selecting a competent trademark law firm;
- Planning the future usage of the trademark and ensuring it covers all usages and future developments, such as the transfer of rights, disposition of rights, disuse of trademark and their possible legal and tax consequences.
This article was written by Natalia Galdetskaya of Olympline Consulting in Russia, a Dezan Shira & Associates partner firm. Olympline can assist with foreign company trademark registrations throughout Russia. Please email firstname.lastname@example.org for further assistance or visit www.dezshira.com.
Dezan Shira & Associates is a pan-Asia, multi-disciplinary professional services firm, providing legal, tax and operational advisory to international corporate investors. Operational throughout China, ASEAN and India, our mission is to guide foreign companies through Asia’s complex regulatory environment and assist them with all aspects of establishing, maintaining and growing their business operations in the region. This brochure provides an overview of the services and expertise Dezan Shira & Associates can provide.