How to register a TM in Russia?

Introduction

A trademark (the TM), is the main instrument of a business to highlight its products and services on the market, and the customers not to confuse the brand with others.

Registration of a trademark  grants you the exclusive right to:

  • increases the uniqueness of your brand — no one else will be entitled to use the same and/or very similar trademark for selling the same goods and providing the same services;
  • use a trademark exclusively — if you come up with an original name and register a trademark, you will become its sole copyright holder and you have the unique opportunity for developing your own business through franchising;
  • put the ® symbol next to your brand — to show that it’s yours and warn others against using, selling or otherwise licensing your brand;
  • protect legally — you may take legal action against anyone who uses your brand without your permission, including counterfeiters.

You need to register a trademark in each country where you plan to operate and use it constantly. According to the general rule, the rights to it may be cancelled ahead of time if the TM is not actually used for business continuously for the last 3 years.

How to register a TM

I. Preliminary stage and requirements

Conner&Co may conduct a preliminary research for similar or authentic trademarks in order to avoid further refusal on registration. This is not a 100% guaranteed confirmation but will relieve a large scope of similar registered trademarks for your consideration.

The Federal Service for Intellectual Property (the “Rospatent”) checks trademarks for three types of similarities:

  • graphic — visual similarity of trademarks;
  • phonetic — auditory similarity;
  • semantic — similarity of trademarks in meaning or key idea.

II. Preparing of documents

To register a trademark, you will need the following documents:

  • registration application — including information on the applicant, its place of residence or location;
  • trademark designation (wording, logo or combination);
  • description of the trademark;
  • a list of goods and services which should be protected (from International classification of goods and services list ( the “ICGS”));
  • consent to process personal data in several cases.

III. Payment of state fees

During the application process the following fees are required to be paid:

  • formal examination within 1 month — checking the list of the necessary documents for compliance needed for proceeding to the next stages. RUB 3500 (for first 5 classes of application) + RUB 1000 for each additional ICGS class.
  • substantive examination of a trademark within 12 months — analysis of the content of the claimed trademark for uniqueness, originality and the absence of close analogues and decision-making based on its results. RUB 11,500 (for first class of application) + RUB 2500 for each additional ICGS class over 1.

The registration of the TM  is completed within 18 months and 2 weeks according to the legislation in case there are no objections from a third party or Rospatent itself. In practice, it is usually completed earlier — in 12 months.

IV. Apply to register your TM

Prepared documents must be submitted to Rospatent. This can be done in several ways:

  • in person at the main office department of Rospatent;
  • online (to be advised additionally);
  • by post.

V. The final stage

In case Rospatent approves the application for registration, the following fees should be paid accordingly:

  • registration fee — RUB 16,000 (for first 5 classes of application) + RUB 1000 for each additional ICGS class.
  • trademark certificate fee for issuing it — RUB 2000.

Once your TM is registered

Your trademark will be active for 10 years and you may renew it for unlimited times.

You can dispose of your trademark in any legal way and Conner&Co will assist by providing the corresponding legal services and helping to monitor the protection process of your TM during this period:

  • licence — transfer the right of use of your TM to third parties and Conner&Co is ready to provide you with a wide range of services related to: drafting licence agreements and their registration at the Intellectual Property Office in accordance with the local law regulations;
  • “full” or “partial” transfer of ownership of a trademark;
  • prohibition of import of counterfeit products;
  • use the trademark for raising the authorised capital amount as an intangible active after an evaluation is conducted;
  • take out a loan secured by a trademark;
  • enter into a franchise agreement and grant the right to use your trademark.

Conner&Co can provide trademark registration services not only in Russia, but also in the UK and worldwide.  

Please feel free to contact us for further information.