The present Rules for the Recognition of a Trade Mark as Well Known in the Russian Federation (the "Rules") are laid down pursuant to Article 43 of RF Law No. 3520-1 "On Trade Marks, Service Marks and Appellations of Origin" (hereinafter referred to as the "Russian Trade Mark Law"), dated September 23, 1992 (published in the Vedomosti [Gazette] of the Congress of People's Deputies and the Supreme Council of the Russian Federation, 1992, No. 43, Article 2322) and determine the procedure for and requirements in respect of the recognition of a trade mark as well known in Russia by virtue of Article 2, Clause 1 of the Trade Mark Law, and Article 6^bis of the Paris Convention for the Protection of Industrial Property dated March 20, 1883 as revised at Brussels on December 14, 1900, at The Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967, and amended on October 2, 1990.

1. General Provisions

   1.1. For the purposes of these Rules, a trade mark or service mark (hereinafter, collectively, a "trade mark") well known in the Russian Federation shall be understood to mean a trade mark protected on the territory of the Russian Federation by virtue of its state registration, or a trade mark enjoying protection on the territory of the Russian Federation without registration by virtue of an international agreement or treaty to which the Russian Federation is a signatory, and also a designation used as a  trade mark but having no legal protection in the Russian Federation, which trade mark or designation, as a result of its intensive use, has become well known among relevant groups of the general public with respect to goods of a particular manufacturer.

   A trade mark recognized as well known may, in accordance with Article 7, Clause 1 and Article 28, Clauses 1 and 2 of the Russian Trade Mark Law and Article 6^bis of the Paris Convention for the Protection of Industrial Property serve as the basis for rejecting another party's request for the registration of such party's trade mark, invalidating the registration of another party's trade mark, or prohibiting another party from using a trade mark, which is identical with or confusingly similar to the well known mark, intended for Application to similar goods; provided, however, that the date on which the mark was recognized as having become well known is earlier than the date of priority of such other party's mark.

   1.2. The examination of Applications for the recognition of a trade mark as well known in the Russian Federation shall be governed by the "Rules for the Filing of Complaints, Applications and Petitions and Review Thereof by the Supreme Patent Chamber of the Russian Agency for Patents and Trade Marks (hereinafter referred to as the "Review Rules") approved by Rospatent Order No. 107 dated May 21, 1998 (registered with the RF Ministry of Justice on July 23, 1998 under Registration No. 1568 and published in the Bulletin of Regulatory Acts by Federal Agencies in the Executive Branch of Government, No. 19 of August 17, 1998) as revised and amended by Rospatent Order No. 232 dated December 4, 1998 (registered with the RF Ministry of Justice on February 3, 1999 under Registration No. 1696 and published in the Bulletin of Regulatory Acts by Federal Agencies in the Executive Branch of Government, No.6 of February 8, 1999), and by these Rules.

   1.3. An Application for the recognition of a trade mark as well known (hereinafter referred to as the "Application") may be filed with the Supreme Patent Chamber of the Russian Agency for Patents and Trade Marks (hereinafter referred to as the "Supreme Patent Chamber") by a party which deems its trade mark as well known (hereinafter referred to as the "Applicant") in particular when the Applicant's use of its trade mark and receipt of business advantages therefrom is hindered by another party's filing of an Application for the registration of a trade mark, by the registration of a trade mark in the name of another party, or by another party's use of a trade mark identical with or confusingly similar to the Applicant's trade mark and intended for use with similar goods.

   If actions relating to the registration or use of a trade mark are deemed to be an act of unfair competition, such Application may be filed at any time while this trade mark's registration remains valid.

2. Documents Which May be Attached to an Application

   2.1.   An Application shall indicate from what date the Applicant deems its trade mark as well known on the territory of the Russian Federation.

   2.2.   Actual evidence in confirmation of the fact that a trade mark is well known (to be attached to an Application in accordance with Clause 2.6 of  the Review Rules) may be provided, for example, in the form of information contained in relevant documents concerning the following:

   intensive use of such trade mark in the Russian Federation. Information to this effect may include the following: the date of commencement of the trade mark's use; a list of locations where goods have been sold, in respect of which the trade mark has been used; the sales volumes of such goods; the manner in which the trade mark was used; the mean annual number of consumers of such goods; the market position of the manufacturer in a particular economic sector, etc.;

   countries where the trade mark has become well known;

   investments in trade mark advertising (for example, annual statements [of the company concerned]);

   value (worth)  of the trade mark, as per the data contained in such annual statements;

   results of a consumer poll on whether the trade mark is well known (to be conducted by an independent specialized agency or firm which must take into account recommendations made by the Russian Agency for Patents and Trade Marks (hereinafter referred to as "Rospatent");

   Where appropriate, an Applicant may be requested to provide the Supreme Patent Chamber with other information to confirm that such Applicant's trade mark is indeed well known in the Russian Federation.

   2.3.   Five copies of a depiction of the trade mark shall be attached to an Application and filed together therewith. These shall be made on dense and durable paper (a photograph, a print, etc.), its size being 8 cm by 8 cm. Depending on the type of the designation in question, the width of the photograph or print may be 8-10 cm.

   If the designation is a label, then the label itself may be attached.

   If a designation is three-dimensional, then an overall view thereof shall be filed together with all necessary projections of the filed designation in order to enable viewers to get a conclusive impression thereof.

   Any designation shall be filed in such color or color combination in respect of which it is claimed that the trade mark is well known.

   Graphically, any such depiction must be of  high quality.

3. Review of an Application

   3.1.   In considering an Application, the Collegiate Board of the Supreme Patent Chamber of Rospatent shall take into account all information and arguments adduced by the Applicant pursuant to Clause 2.1 of these Rules and shall do so in accordance with the procedure laid down by Clause 2.5, Paragraphs 3 and 6 of the Review Rules.

   3.2.   A trade mark may not be recognized as well known in instances where the Supreme Patent Chamber ascertains that:

   factual material provided by an Applicant pursuant to Clause 2 of these Rules fails to confirm that the Applicant's trade mark is well known as from the date indicated in the Application;

   there is a trade mark which is identical with or confusingly similar to the Applicant's trade mark and such identical or similar trade mark has been registered in the name of another party in respect of similar goods, its priority date being earlier than the date from which the Applicant seeks its trade mark to be recognized as well known.

   3.3    It is not permitted to attach additional material to an Application if such material contains the Applicant's request for the recognition of its trade mark as well known as from a date other than the date set out in the Application.

   Such  material may be formally submitted as an independent Application.

4. Decision of the Supreme Patent Chamber to Approve an Application for the Recognition of a Trade Mark as well Known

   In the event that Rospatent's Supreme Patent Chamber approves an Application, such decision shall contain the following information:

   the date of the decision;

   the registration No. of the well known mark;

   a depiction of the well known mark;

   the date from which the trade mark is recognized as well known in the Russian Federation;

   the name of the owner of the trade mark and the address of its location or residence;

   a list of goods and services in respect of which the trade mark is recognized as well known; this must be arranged by classes of the International Classification of Goods and Services for the Registration of Marks approved by the Nice Agreement, concluded at Nice on June 15, 1957, as subsequently revised and amended.

5. Concluding Provisions

   5.1. Immediately after the decision of the Supreme Patent Chamber takes effect, a trade mark recognized as well known shall be entered in the list of trade marks well known in the Russian Federation. Such list shall include information about the owner of a particular well known trade mark; the effective date of the decision to recognize it as well known; the date from which it is recognized as well known in the Russian Federation; and a list of goods and services in respect of which it was so recognized.

   5.2. Information relating to the recognition of a trade mark as well known shall be published by Rospatent in its official bulletin forthwith upon the inclusion of the trade mark into the list of trade marks well known in the Russian Federation.

   5.3.   A decision taken by the  Supreme Patent Chamber may be appealed in court.

   5.4.   Legal protection of a well-known trade mark is determined pursuant to the established procedure.

   Information regarding the termination of legal protection of a well known trade mark shall be entered in the List of Trade Marks Well-Known in the Russian Federation, and Rospatent shall forthwith publish such information in its official bulletin.

6. Transitional Provisions

   Applications filed with Rospatent's Higher Patent Chamber and not reviewed before the effective date of these Rules shall be reviewed with due regard for the earlier requirements as to the filing of Applications for the recognition of a trade mark as well known, and under the procedure laid down by these Rules.

1. Consumers shall be polled by an independent specialized agency or firm.

2. Any such poll shall target consumers in at least six population centers in the Russian Federation. A poll shall always include the cities of Moscow and St. Petersburg. Other localities shall be determined by an applicant depending on the nature of its production activities.

3. A model polling form is set out in Exhibit 2. The number of respondents and, consequently, of questionnaires must be such as to make a poll representative (objective). In view of this, the maximum number of questionnaires shall not be limited, while the minimum number must not, as a general rule, be fewer than 500 in Moscow and St. Petersburg and not fewer than 125 in each other populated locality.

4. To determine whether trade marks intended for use with capital goods are well known or not, it is expedient to conduct a poll among specialists who are, or work for, users of goods of this kind (these may be specialists in industry or commerce).

   To determine whether trade marks intended for use with consumer goods are well known or not, it is expedient to conduct a poll among 'average' consumers (in terms of age, sex, education, social status, income, and connections with a product designated by a given trade mark) and specialists in the corresponding industry or branch of commerce.

5. When a polling form is being filled in, respondents (both specialists and buyers) shall be asked to answer the following questions:

   whether they know a given trade mark;

   which of the parties named below[1] in  their opinion is the owner of the trade mark or the manufacturer of products designated by the trade mark;

   what their source of information is about the given trade mark.

6. For a trade mark to be recognized as well known, the number of affirmative responses should be at least 60 per cent of users described in Clause 4, Paragraph 1 of these Regulations, and at least 30 per cent of consumers described in Clause 4, Paragraph 2 above.
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Sample Questions Which Should be Included in a Consumer Polling Form

Specimen Trade Mark

1. Do you know this trade mark (yes, no)

2. Indicate which of the parties named below[2] is the owner of the trade mark or the manufacturer of products designated by this trade mark;
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3. Do you know what goods are designated with this trade mark (if yes, please indicate):

4. When and how did you learn about the existence of this trade mark?

5. Population center locality where the poll was conducted

6. Personal particulars of the respondent

7. Signature of the respondent

[1] The polling firm or agency responsible for such a poll shall specify several corporate or personal names, one of which shall be the name of the party which filed an Application for the recognition of its trade mark as well known in the Russian Federation.

[2] The polling firm or agency responsible for such a poll shall specify several corporate or personal names, one of which shall be the name of the party which filed an Application for the recognition of its trade mark as well known in the Russian Federation.