Specifics of trademark registration in the CIScountries
Efendi Law Firm
www.efendi-org.com
office@efendi-org.com
Illegal use of trademarks is one of themajor issues in the area of protection of rights of trademark owners in the CIS(Azerbaijan, Georgia, Russia, Ukraine, Belarus, Moldova, Kazakhstan,Uzbekistan, Tajikistan, Turkmenistan, Kyrgyzstan) countries. More thanthousands of cases related to illegal use of trademarks come out every year.
According to local laws the followingactions may constitute illegal use of trademarks:
- import of goods containing trademarksbelonging to third parties;
- storage and transportation of goods (containingthird party trademarks) with the purpose of further sale or disposal by othermeans;
-illegal use of trademarks without permission of their owners in the goodsoffered for sale;
In order to prevent illegal use oftrademark, trademark owner must register it. Let’s briefly outline the mainissues related to trademark registration. Trademark registration process startsfrom conducting trademark search. Trademark Offices of many CIS countries offertrademark search services. In such a case, trademark search is conducted amongregistered trademarks as well as pending trademark applications. Where anofficial trademark search is not available, trademark search is conducted onlyamong registered trademarks.
If as a result of trademark search noidentical or similar marks have been revealed all necessary documents areprepared and filed to Patent Office for trademark registration.
An application for trademarkregistration passes through two-stage process. In the first stage, which iscalled formal examination, all information and documents are being scrutinizedby Trademark Office. If all the requested documents are in compliance with the laws,Patent Office issues document confirming that application materials passed througha formal examination. This stage normally takes from 1 to 3 months depending ona country.
In the second stage, specialisedofficers – examiners at Trademark Office check compliance of applicationmaterials to the strict requirements of the local laws. This stage takes muchlonger time than a formal examination and may take up to 36 months depending ona country. In order to obtain registration certificate, it is required toproceed with payment of state fees promptly within the deadline set by locallaws.
Only upon receipt of payment Trademark Officeissues registration certificate and proceeds with publication of informationabout registered trademark at the next edition of trademark bulletin. Failureto pay before expiration of deadline results in application materials beingwithdrawn by Patent Office. However, it is possible to extend the paymentdeadline by filing relevant application and payment of additional state fee.
Many trademark owners wrongly believethat receipt of registration certificate is the final stage for protection oftheir trademark in the relevant jurisdiction. In fact, there are certain issueswhich must be taken into account after registering a trademark and obtainingregistration certificate.
Firstly, registration certificate isonly issued for 10 years and it is required to prolong it every 10 years. It isnecessary to check expiration date and proceed with timely payment of relevantfees. Failure to pay before expiration of deadline results in termination oftrademark’s protection in the relevant jurisdiction.
Secondly, it is crucial to monitormarket in the areas in which a trademark can be used. It is worth watching newtrademarks which are registered in the countries where a trademark owner isdoing business. Specialised IP firms (including Efendi Law Firm) offer “marketwatching services” and they may timely alarm you about new marks (similar toyour trademarks) coming out in the market.
Finally, the local laws provide thattrademarks must be used after registration at Trademark Office. Otherwise,legal protection of trademark can be cancelled before expiration of 10 years termif the trademark’s owner had not used it uninterruptedly within three or fiveyears since the registration date (term varies depending on jurisdiction). Manyfactors will be taken into account by Trademark Office when deciding whetherthe particular trademark had been in use or not (publication of trademark innewspapers, magazines, advertising materials etc.). One of the specifics of non-use disputes isthat the burden of prove lies on trademark’s owner. It is a trademark’s ownerwho has to prove that the trademark had been in use, not the other wayround.
The trademark practice in the CIS statesshows that trademark registries are overwhelmed with either non-used trademarksor with trademarks that are used only for certain classes compared to those inwhich they had been registered. The principle of “must-use your trademark” isdirected on solving this issue and encouraging trademark owners either usingtheir trademarks in all classes designated in trademark application or refrainingfrom registering trademarks in numerous classes and subsequently using only a fewof them.
It is vital to underline theimportance of trademark registration before start using trademark in aparticular country. Let me to bring your attention to one case related toviolation of trademark’s owner in Russia.
The question related to use of “Paclan”trademark had been considered for a long time in various state authorities(Appeal Palate of Russian Patent) and Arbitration Courts (Arbitration court ofMoscow, High Arbitration Court of Russian Federation).
European holding “Paclan” ownsthree companies in Belgium, Holland and Germany. These companies are involvedinto production and sale of household goods. In 1992 Paclan represented itsgoods at the Russian exhibition “KonsumExpo - 92”. Paclan remained satisfiedwith the results of the exhibition and saw further opportunities for itsbusiness in Russia. Paclan’s goods were introduced to the Russian market andthe business was booming. Paclan felt a need to register its trademark inRussia and the Belgian office of Paclan filed an application for registrationof Paclan trademark to Russian Patent Office in June 1992. However, the RussianPatent Office rejected the application based on the ground that application fora registration of identical mark had been already filed to RosPatent by otherentity. The applicant was unknown Russian company which did not have anyconnection to Paclan holding. The Russian company wanted to register Paclan markin Russia in the same classes in which Paclan holding intended to use itstrademark. The most interesting point was that the applicant in this case was aRussian firm specialising in provision of patent and trademark registrationservices. The obvious question arises why a firm offering patent and trademarkservices would be interested in registration of trademark related to productionand trade of polyethylene and foil? In fact, a Russian firm got information aboutforthcoming plans of a major western company to enter the Russian market. They wereaware that a new player in the market had not registered its trademark inRussia yet. Therefore, Russian firm filed documents to Russian Patent Officefor registration of trademark identical to the trademark of Paclan. The reasonwas to compel Paclan to purchase rights for its own trademark from Russianentity which had already been owner of Paclan’s trademark in Russia. Although,there is no established court practice for these type of cases in Russia, such deedsare far away from acceptable norms of international trade law. Even in Russia,the local laws can recognize such actions as “abuse of rights” and the courtcan rule on recognition of such illegal actions as unfair competitionactions.
Inconclusion, it is crucial for trademark owners to trust their trademarks toprofessional patent and trademark attorneys who would advise them aboutspecifics of trademark use and trademark registration in the particularjurisdiction. As it was shown above, it is important to register trademarkprior to start using it in the particular market. This will help preventingother dishonest third parties to register particular trademark on their ownname. In addition, trademark owners must be conscious about what happens afterthe trademark registration. If it is required, trademark owners must proceedwith timely actions which would be deemed as “use” of trademark according to locallaws and, thus, prevent potential non-use actions against their trademarks. Itis also wise to monitor market and timely bring actions against unfairentrepreneurs which abuse marks belonging to legal owners.
Literature:
- The Law on Trademarks and Geographical Indications of Republic of Azerbaijan dated June 12 1998;
- The Law of Trademarks and Service Marks of Republic of Belarus dated 5 February 2003;
- The Law of Trademarks and Service Marks of Republic of Kazakhstan dated 26 July 1999;
- The Law of Trademarks and Service Marks of Republic of Kyrguzstan dated 28 January 1998;
- The Law on Trademarks of Republic of Georgia dated 5 February 1999;
- The Civil Code of Russian Federation – Part IV dated 24 November 2006, in force from 1 January 2008;
- Resolution of Presidium of the Highest Arbitration Court of Russian Federation N 225/96, dated 15 October 1996.