| Strikethrough shows deleted or replaced portions. The symbol * indicates the place of insertion of new or replacement portions which appear in the middle column. | The symbol * (or a combination thereof) shows portions to be included in the text at the place marked likewise in the left column | Where necessary, parenthesized symbol(s) * shows to which particular amendment or modification this particular substantiation or comment refers. |
| LAW OF THE RUSSIAN FEDERATION "ON TRADEMARKS, SERVICE MARKS AND APPELLATIONS OF ORIGIN" | | |
| This Law and those legislative acts of constituent republics within the Russian Federation *which are to be passed on its basis shall govern relations arising in connection with the registration, legal protection and use of trademarks, service marks and appellations of origin. | | * The provisions of the Law are made to conform to the provisions of the RF Consitution |
| SECTION I. Trademark and Service Mark Chapter 1. Legal Protection of a Trademark and Service Mark Article 1. Trademark and Service Mark The trademark and the service mark (hereinafter, the "trademark") are designations * capable of distinguishing accordingly ** goods and services of juridical or natural persons from similar goods and services (hereinafter, "goods") of other juridical or natural persons. | * serving to distinguish ** goods and services [Genitive Case - B&M Tr. Dept.] | * A more objective wording is provided ** The case is changed in accordance with the rules of the Russian language |
| Article 2. Legal Protection of a Trademark 1. The legal protection of a trademark in the Russian Federation shall be accorded either on the basis of its state registration pursuant to the procedure established by this Law or by virtue of international agreements to which the Russian Federation is a party. 2. The right to a trademark shall be protected by law. 3. A trademark may be registered in the name of a juridical person, and also of a natural person engaged in entrepreneurial activity. | | |
| Article 3. Trademark Certificate 1. A trademark certificate shall be issued for a registered trademark. 2. The certificate shall establish the priority date of the trademark, the exclusive right of the trademark proprietor to the trademark in respect of the goods specified in the certificate. | | |
| Article 4. Exclusive Right to a Trademark 1. The proprietor of a trademark shall have the exclusive right to use the trademark* and dispose of it as well as to forbid its use by others. ** No one may use a trademark, to which protection has been extended in the Russian Federation, without the consent of its proprietor. *** | * to the extent that actions taken to exercise the aforementioned powers do not infringe on the rights of other right-holders. ** The exclusive right to a trademark shall be exercised during the validity term of the trademark's registration starting from the date when information concerning the registration of such trademark is published in the official newsletter of the Patent Office. *** The exclusive right to a trademark may not be the subject matter of a pledge. | * The language is added for the benefit of other holders of exclusive rights. ** The commencement of the term of validity of the exclusive right is thus determined. *** The proposed language meets the interests of the trademark proprietor, comes in line with Article 336 of the RF Civil Code and is consistent with the sphere of competence of the federal agency in the executive branch of government in charge of patents and trademarks, which sphere was delineated with due regard for the relevant provisions of the [Civil] Code. |
| 2. The unauthorized manufacture, use, importation, offer for sale, sale, and any other manner of introduction into commerce, or storage for the above purpose, of a trademark, or of a good designated by this trademark, or of a designation confusingly similar thereto with respect to similar goods shall be deemed to constitute an act of infringement of the rights such trademark's proprietor. * | * The use of a trade name reproducing a registered trademark with respect to similar goods shall not constitute an act of infringement of the rights of such trademark's proprietor to the extent that the right to such trade name was acquired before the date of priority of the trademark. | * The provision of the Law is made to conform to the Article 54 of the RF Civil Code |
| Article 5. Types of Trademarks 1. Verbal, figurative, three-dimensional and other designations or combinations thereof may be registered as trademarks. 2. The trademark may be registered in any color or color combination. | | |
| Article 6. Unqualified Grounds for Denial of Registration * | * Grounds for Denial of Registration | * This article is merged with Article 7, as it is not always possible to delimit clearly unqualified grounds for the denial of registration from other grounds for the same. |
| * 1. The registration of trademarks shall be prohibited where they consists merely of designations which: - have no distinctive ability;
- represent armorial bearings, flags and emblems of states; official names of states, emblems, abbreviated or full names of international intergovernmental organizations; official control and warranty signs and hallmarks, official seals, awards and other marks of distinction, or those confusingly similar to the above. Such designations may be included in a trademark as elements thereof not subject to protection with the consent of a relevant competent authority or their proprietor;
- have come into common use as designations of goods of a certain type;
- are generally accepted symbols and terms;
- indicate the type, quality, quantity, properties, intended purpose, and value of goods as well as the place and time of their manufacture or sale.
The designations referred to in paragraphs 2, 4, 5 and 6 of this Clause may be included as in trademarks as elements thereof not subject to protection, provided that they do not they hold a dominant position therein.
| * 1. The registration of trademarks shall not be permitted where they consists merely of designations which: - are devoid of distinctive ability; - have come into common use as designations of goods of a certain type; - are generally accepted symbols and terms; - are used to indicate the characteristics of goods, including type, quality, quantity, properties, intended purpose, and value of goods as well as the place and time of their manufacture or sale; - represent the form of a good, which form is determined exclusively .or predominantly by the nature and or designated purpose of such good. The designations described in this clause may be included in a trademark as its elements not subject to protection, provided that they do not hold a dominant position therein. ** The provisions of this clause shall not apply to designations which have actually acquired a distinctive character due to their use. | * The amendment takes, to the maximum extent possible, the provisions of Article 6quinquis of the Paris Convention. ** Relying on experience of patent offices of foreign countries. |
| * | * 2. The registration of trademarks shall not be permitted where they consist merely of designations which represent armorial bearings, flags and emblems of states, official names of states, emblems, abbreviated or full names of international intergovernmental organizations, official control and warranty signs and hallmarks, official seals, awards and other marks of distinction, or imitations thereof confusingly similar to the above. Such designations may be included in a trademark as elements thereof not subject to protection, subject always to the consent of a relevant competent authority or their proprietor | * This reason for denial is taken without any modifications from Clause 1, Paragraph 3 of this Article. The fact that this reason is isolated from others and presented as a separate provision corresponds to the unique, specific character of designations of this type which are capable of preventing a trademark from being registered by virtue of Article 6ter of the Paris Convention. |
| 2.* No designations shall be registered as trademarks or elements thereof, which are:
- deceitful or capable of misleading the consumer as to good or its manufacturer; - contrary to public interest, the principles of humanity or morality. ** | * 3. ** 4. Designations may not be registered as trademarks if they represent or include indications of place of origin of wines or liquors, but are intended to designate wines or liquors other than those originating from the geographical place concerned. | * The numbering of clauses is adjusted to reflect the inclusion of a new clause, Clause 2. ** The added clause is consistent with the provisions of Article 23 TRIPS. |
| Article 7. Other Grounds for Denial of Registration *
| | * This article is merged with Article 6, as it is not always possible to delimit clearly unqualified grounds for the denial of registration from other grounds for the same. |
| * 1. No designations may be registered as trademarks, which are identical with, or confusingly similar to:
- trademarks registered earlier or applied for registration in the Russian Federation in the name of another person with respect to similar goods;
- trademarks of other or persons protected without registration by the operation of international agreements to which the Russian Federation is a party;
- indications of place of origin of goods, protected in accordance with the laws of the Russian Federation, except in instances where they are included as elements not subject to protection in a trademark being registered in the name of an person having the right to use such indication;
- certification marks registered in accordance with the established procedure.
| 5. No designations may be registered as trademarks, which are identical with, or confusingly similar to: * - trademarks in respect of similar goods registered earlier or applied for registration in the Russian Federation, as well as protected by virtue of international agreements to which the Russian Federation is a party and having an earlier priority. Such registration may be effected if one and the same person is the proprietor of a registered, or the applicant for a, confusingly similar trademark with an earlier priority applied for in the Russian Federation; ** trademarks of other persons recognized in the Russian Federation to be well known trademarks. The Chamber for Patent-Related Disputes of the Patent Office (hereinafter, the "Chamber for Patent-Related Disputes) shall determine whether a trademark is well known in the Russian Federation or not. *** The registration of a designation confusingly similar to a trademark specified in paragraph 2 or 3 of this Clause shall be permitted in respect of a similar goods on condition that the proprietor of such trademark consents to the registration of the designation as aforesaid. | * The modified wording makes more specific the list of designations with respect to which applications for a trademark are subjected to examination. The need for such addition is dictated by practical work of the Patent Office. ** This provision is included [in the text] in order to implement Article 6bis of the Paris Convention extending legal protection to well known marks, and comes in line with the provisions of Article 15, Clause 3 TRIPS. *** The content of the proposed provision allows of co-existence of similar trademarks belonging to different persons, provided that they reach agreement to this effect. The possibility for the registration of similar marks (to the extent that the aforementioned condition is met) is provided by the EC Directive on harmonizing trademark legislation, and also by the laws of a number of leading nations, such Great Britain, Switzerland, and others. |
| *2. No designations shall be registered as trademarks if they reproduce:
- trade names (or a part thereof) known on the territory of the Russian Federation and belonging to other or persons who have acquired the right to such names before the date of receipt of the application for a trademark with respect to similar goods;
- industrial designs, the rights to which belong to other persons in the Russian Federation;
- titles of works of science, literature and art known in the Russian Federation, characters thereof or quotations therefrom, works of art or details thereof, without the consent of the copyright proprietor or his successors;
- family names, names, pseudonyms and derivatives therefrom, portraits and facsimile reproductions of renowned persons without the consent of the same, or of their heirs, of a relevant competent authority or of the Supreme Soviet of the Russian Federation to the extent that such designations are part of the historical and cultural heritage of the Russian Federation.
| * 6. Designations may not be registered as trademarks (for any goods) if they are identical with or confusingly similar to the appellations of origin which are subject to protection under this Law, unless included as elements subject to a disclaimer in a trademark being registered in the name of a party eligible to use such appellation of origin. | * Since the provision speaks of "any goods", the extent of legal protection is extended to include appellations of origin. |
| * | * 7. The registration of a trademark in the name of an agent or representative of the person which (who) is the proprietor of such trademark in one of the countries, signatories of an international agreement to which the Russian Federation is a party. | * This provision is included [in the text] in order to implement Article 6septies of the Paris Convention extending legal protection to well known marks, and comes in line with the provisions of Article 15, Clause 3 TRIPS. |
| Chapter 2. Registration of a Trademark Article 8.* Application to Register a Trademark | * 7 | * The number of the article is adjusted. |
| * 1. An application to register a trademark (hereinafter, an "application") shall be filed by a juridical or natural person (hereinafter, an "applicant") with the State Patent Office of the Russian Federation (hereinafter, the "Patent Office"). | * 1. A juridical or natural person engaged in entrepreneurial activity (hereinafter, an "applicant") shall file an application to register a trademark (hereinafter, an "application") with the Patent Office. | * This wording develops the provision of Article 2, Clause 3 of the Law and makes more specific the range of persons having the right to file an application for the registration of a trademark. |
| 2. An application may be filed through a patent attorney is registered with the Patent Office. *
| * 2. Dealings with the Patent Office may be conducted by an applicant, the proprietor of a trademark or another person concerned either independently or through a patent attorney registered with the Patent Office. | *, **, *** The proposed amendment proceeds from the premise idea that dealings with the Patent Office are not limited to trademark registration alone. |
| Foreign juridical or natural persons permanently residing outside the Russian Federation or their patent attorneys shall deal ** with matters relating to the registration of trademarks through patent attorneys who are registered with the Patent Office.*** The powers of a patent attorney shall be certified by a power of attorney issued in his name by the applicant.**** ***** The requirements made in respect of patent attorneys, and the procedures for their certification and registration****** shall be established by the Regulations for Patent Attorneys approved by a resolution of the Government of the Russian Federation.
| ** with the Patent Office *** except application filing, fee payment and other actions as determined by the Patent Office, which they may carry out independently. If, in accordance with this Clause, an applicant, the proprietor of a trademark or another person concerned deals with the Patent Office independently, the Patent Office may request that his/its address for correspondence in the Russian Federation be indicated by any of the above **** or by his/its representative. ***** A national of the Russian Federation permanently resident therein may be registered as a patent attorney. Other requirements ****** , and their powers in dealing with matters relating to the legal protection of trademark, service marks and appellations of origin shall be as laid down by law and other regulatory legal acts of the Russian Federation concerning patent attorneys. The appointment of a patent attorney shall be reported to the Patent Office in accordance with the procedure laid down by the Patent Office. | **** The added language corrects the failure of the present Law to envisage a situation whereby a power of attorney [to conduct dealings with the Patent Office] is issued by a foreign applicant's representative rather than the applicant himself. ***** This qualifying stipulation aims to preclude competition on the part of foreigners on the market of patent-related services which would otherwise have an extremely adverse effect on the business of Russian patent attorneys. ****** This addition aims to enhance the legal status and responsibility of patent attorneys/ |
| 3. An application must pertain to a single trademark. | | |
| 4. An application must contain: | | |
| 4. An application must contain: a request to register a designation as a trademark with an indication of the applicant, its location or his/her place of residence; the designation applied for* and its description; a list of goods in respect of which the registration of the trademark is requested, grouped by classes of the International Classification of Goods and Services for the Registration of Marks. The application shall be submitted in the Russian language.** | ** and signed by the applicant and, where the application is filed through a patent attorney, by the applicant or the patent attorney. | * The adjustment is made to make the provision conform to the provisions of the Trademark Law Treaty. ** This amendment is made in order to ensure only one interpretation of this article in toto, which allows an application to be filed either by the applicant himself or solely by such representative thereof, who is a patent attorney (such restricted representation is explained in this case by the fact that the matter at hand is a claim of rights, in view of which the representative must meet certain qualification requirements). |
| 5. The following documents shall be attached to the application: a document evidencing payment of a fee of such amount as may be established; * the rules of a collective mark, if the application is filed in respect of a collective mark. | * a description of the designation applied for; | * This provision is transferred from Clause 4, since its presence is of no importance for the determination of a trademark's priority in accordance with Article 9, Clause 1 of this Law. |
| The documents attached to the application shall be either in Russian or in another language. If the documents are submitted in such other language, their translation into Russian shall be enclosed with the application. The translation into Russian may be submitted by the applicant** within two months of the date of receipt by the Patent Office of the application containing documents in a language other than Russian. | ** not later than two months after the date of when the Patent Office notified him/it of the need to comply with this requirement. | ** This amendment aims to create more solid guarantees of observance of the applicants' rights. |
| * *6. The requirements in respect of documents attached to the application shall be as determined by the Patent Office. | * 6. The date of filing an application with the Patent Office shall be determined by the date of receipt of the documents provided by Clause 4 of this Article and, where the said documents were not filed at once, by the date of receipt of the last of the documents submitted. 7. Upon the filing of an application, any person shall be entitled to familiarize himself with the material originally attached thereto. The procedure for getting acquainted with the material attached to an application shall be laid down by the Patent Office. * 8. | * The inclusion in the Law of this provision determining the application filing date is consistent with the Provisions of Article 4 of the Paris Convention and Article 5 of the Trademark Laws Treaty. * The numbering of clauses is adjusted. |
| Article 9. Priority of a Trademark | * 8 | * The number of the article is adjusted |
| 1. The priority of a trademark shall be established by the date of* the application's receipt at the Patent Office in form and substance meeting the requirements set out in Article 8, Clause 4 of this Law. | * filing the application with the Patent Office. | * The qualifications made are consistent with the provisions of Articles 4 and 11 of the Paris Convention. |
| 2. The priority of a trademark may established by the date of filing of the first application in a state which is a member of the Paris Convention for the Protection of Industrial Property (Convention priority), if* the application has been received at the Patent Office within six months of such filing date. | * the filing of the application with the Patent Office was completed | * The qualifications made are consistent with the provisions of Articles 4 and 11 of the Paris Convention. |
| 3. The priority of a trademark placed on exhibits shown at official or officially recognized international exhibitions held on the territory of a state which is a member of the Paris Convention for the Protection of Industrial Property may be the date of commencement of the public showing of the exhibit (exhibition priority), if* the trademark application has been received at the Patent Office within six months of such commencement date. | * the filing of the application with the Patent Office was completed | * The qualifications made are consistent with the provisions of Articles 4 and 11 of the Paris Convention. |
| * | * 5. The priority of a trademark under a divisional application shall be determined by the date of submission to the Patent Office of the initial application of same applicant and, where the right exists to establish an earlier priority by the initial application, then by the date of such priority, provided that as of the date of filing the divisional application, the initial application is not recalled nor deemed to be recalled, and further provided that the divisional application is filed prior to a decision being made with respect to the initial application. | The possibility for dividing a new application from the initially filed application is consistent with the provisions of Article 7 of the Trademark Law Treaty. |
| * | * 6. If, in the course of examination, it is determined that identical trademarks with fully or partially coinciding lists of goods and the same priority date have been applied for registration, then in respect of the coinciding goods the registration of the trademark applied for may, subject to agreement between the applicants, be effected in the name of one of them. In the event that identical trademarks with fully or partially coinciding lists of goods and the same priority date have been applied for registration by one and the same applicant, then the registration of the trademark in respect of the coinciding goods the registration of the trademark may be effected under one of the applications at the applicant's option. Within six months of the date of receipt of the corresponding notification, the applicants (applicant) shall inform the Patent Office under what particular application registration is sought. If, within the prescribed time, no such information is communicated to the Patent Office and no request is submitted for the extension of the prescribed time, the applications shall be deemed recalled. | In the event that |
| * 5. The priority of a trademark may be established by the date of the international registration of the trademark in compliance with international agreements to which the Russian Federation is party. | * 7 | * The numbering of clauses is adjusted. |
| Article 10.* Examining an Application for a Trademark | * 9 | * The number of articles is adjusted. |
| 1. The examination of an application shall conducted by the Patent Office and shall comprise a preliminary * examination and an examination of the designation applied for. | * formal | *This amendment reflects the meaning of the first stage of such examination and comes as a move to standardize the terminology used in the Trademark Law and the Russian Patent Law. |
| 2. While an application is being examined and while a decision in respect thereof is pending, the applicant shall be entitled to supplement, update or amend the material attached to the application.* on his/its own initiativ`e. ** Should any supplementary material alter an application in substance, such material shall not be accepted for consideration and may be formally filed by the applicant as an independent application. | ** Should such supplementary material refer to goods not included in the application as of the date of its filing or substantially alter the designation applied for, such material shall not be accepted for consideration, and the applicant shall be notified accordingly. | * Apart from corrections and revisions, an application may need amendments of a different character. Besides, it would be improper to limit the procedure for amending documents attached to an application solely by changes made on the applicant's initiative. ** This is to replace the concept of "supplementary material altering an application in substance" with more specific language. |
| * | * 3. Any change in the identity of the applicant in the event of assignment of an application or in the event of change of the applicant's name and also corrections of obvious and spelling mistakes in documents attached to the application may be made prior to the date of registration of the trademark. | * This addition is consistent with applicable legislation and comes in line with the interests of applicants. |
| *3. While an application is being examined, the Patent Office shall be entitled to request from the applicant additional material in the absence of which the examination is impossible. ** Such additional material requested by examiner(s) shall be submitted within two months of the date of receipt of the request. Upon the applicant's petition this period may be prolonged on condition that such petition is filed prior to the expiration of this period. Should the applicant fail to submit the requested material on time or ignore the examiner's (examiners') request, the application shall be deemed recalled. | 4. ** The procedure laid down by Clause 2 of this Article shall apply to any supplementary material which refer to goods not included in the application as of the date of its filing or substantially alter the designation applied for. Such additional material requested by examiner(s) shall be submitted within two months of the date of the applicant receiving the request or copies of material counter-posed to the application, provided that the applicant asks for such copies within one month of the date of the applicant receiving the request from the examiner(s). Where the applicant fails to submit the requested material on time or to file a timely request for extending the prescribed time period, the application shall be deemed recalled. The time reserved for replying to a query or request may be extended by not more than six months. | ** This amendment will make it possible to shorten the time reserved for the examination in respect of a substantial number of applications. |
| *4. An application may be recalled upon the applicant's request at any stage of its examination, but no later than the date of registration of the trademark. | * 5. | * The numbering of clauses is adjusted. |
| * | * 6. While an application is being examined and while a decision in respect thereof is pending, the applicant shall be entitled to file a divisional application in respect of the same designation containing a list of those goods indicated in the initial application as of the date of its filing with the Patent Office, such goods not being similar to the goods covered by the initial application. | The added language is consistent with the provisions of Article 7 of the Trademark Law Treaty. |
| Article 11.*Preliminary** Examination | * 10 ** formal | * The number of articles is adjusted. ** See comments on Article 9 (as per the new numbering) |
| 1. A preliminary* examination of an application shall be conducted within one month of the date of its receipt at **the Patent Office. | * formal ** filing with | * See comments on Article 9 (as per the new numbering) ** This amendment is consistent with the provisions of Article 4 and 11 of the Paris Convention. |
| * 2. A preliminary examination shall aim to check on the contents of an application, the presence of the necessary documents and on their conformity with the established requirements. Depending on the findings of a preliminary examination, the applicant shall be notified either of the acceptance of the application for further examination or of the denial of acceptance. | * 2. A formal examination shall aim to check on the contents of an application, the presence of the necessary documents and on their conformity with the requirements set out by Article 7, Clause 4 of this Law. Depending on the findings of the formal examination, the application shall either be accepted for further examination or a decision shall be made to deny its acceptance. | * This amendment clarifies the meaning of the first stage of the examination. The status of the communication to be sent to the applicant is made more specific, as it is referred to as a "decision" in Article 13, Clause 1 of the Law. |
| * 3. In the case of acceptance of an application for examination, the applicant shall be notified of the established trademark priority, except to the extent that the applicant claims convention or exhibition priority, but, as of the date of the application's acceptance for review, has failed to adduce the necessary documents in substantiation of this claim. ** | * 3. The applicant shall be notified of the positive outcome of the formal examination and of the date of the application's filing determined pursuant to Article 7, Clause 6 of this Law. ** 4. The decision to deny acceptance of an application for consideration at the stage of formal examination may, if made in breach of the procedure for examining applications as laid down by this Law, be re-considered by the Patent Office within three months after the date of the decision being forwarded to the applicant, but at no time later than the date of the applicant's objections to the Chamber for Patent-Related Disputes. | * This provision aims to provide more solid guarantees of observance of applicants' rights. |
| Article 12. * Examination of a Designation Applied For | * 11 | * The number of the article is adjusted. |
| 1. The examination of the designation applied for shall be carried out upon the termination of the preliminary examination. The examination shall aim to check on compliance of the designation applied for with the requirements set out in Articles 1 and 6 and Article 7, Clause 1** of this Law, and to establish the priority of the trademark unless it has been established during the preliminary examination. | * formal ** Article 1 and Article 6, Clauses 1-6 | * See comments on Article 9 (as per the new numbering) ** This amendment adjusts the numbering in accordance with amendments made to Article 6 (as per the new numbering). |
| 2. Depending on the findings of the examination, a decision shall be made * either to register the trademark or to deny registration thereof. | * passed | * A more relevant term is used. |
| * | * 3. Before a decision is passed in accordance with the findings of the examination of a designation applied for, a notice may be forwarded to the applicant concerning the findings of the check of the designation applied for (conducted to determine its conformity with the requirements made by Clause 1, Paragraph 2 of this Article), suggesting that the applicant submit its arguments in connection with the line of reasoning therein set out. The applicant's arguments shall be taken into account in passing a decision based on the findings of the examination applied for, provided that they are adduced within six months after the date of the notice being forwarded to the applicant. The decision of the examiner(s) in respect of a designation applied for to deny its registration as a trademark by reason of the possibility of the consumer being misled as to a particular good or its manufacturer may be re-considered by the Patent office within the time fixed by Paragraph 1 of this Clause, provided that the granting of the request to alter the applicant, if submitted after the date of the decision being passed, precludes the possibility of this reason being used in the course of the decision's re-consideration. | * The suggestions aim to provide more solid guarantees of observance of the applicants' rights and to reflect the provisions of the Articles 5 (5 and 6) of the Madrid Agreement and the Protocol thereto. |
| | * 4. A decision passed in accordance with the findings of the examination of a designation applied for may, if made in breach of the procedure for examining applications as laid down by this Law, be re-considered by the Patent Office within three months after the date of the decision being forwarded to the applicant, but at no time later than the date of receipt of the applicant's objection at the Chamber for Patent-Related Disputes. | * This amendment aims to provide more solid guarantees of observance of the applicants' rights. |
| * 3. The decision to register a trademark may be revised in view of the receipt of an application enjoying an earlier priority date in compliance with Article 9 of this Law. | * 5. The decision to register a trademark may be re-considered by the Patent Office before the trademark is actually registered for the following reasons: the filing of an application which enjoys an earlier priority in accordance with Article 8 of this Law in respect of an identical or confusingly similar designation in respect of similar goods; the registration as an appellation of origin of a designation identical with or similar to such trademark; the discovery of the application for a identical trademark or of a protected trademark with a fully or partially coinciding list of goods with the same or an earlier priority; the granting of a request for altering the applicant, which caused a possibility to emerge for the consumer being mislead as to the good or its manufacturer in the event of the designation applied for being registered as a trademark. | * This supplement itemizes reasons for re-considering the decision of the examiner(s). |
| Article 13.* Appeals Against Decisions on Applications and Restoration of Missed Time Periods | * 12. | * The number of the article is adjusted. |
| *1. Where an applicant takes exception to the decision made upon the findings a preliminary examination or an examination of the designation applied for, the applicant shall be entitled to file an appeal with the Chamber of Appeals of the Patent Office (hereinafter referred to as the Chamber of Appeals) within three months of the date of receipt of the decision. The appeal shall be considered by the Chamber of Appeals within four months of the date of its receipt. | *1. Where an applicant takes exception to the decision to refuse acceptance for consideration made upon the findings a formal examination of the designation applied for, or to refuse to re-consider a decision passed, or to recognize an application as having been recalled, the applicant may lodge an objection with the Chamber for Patent-Related Disputes within three months after the date of receipt of the decision, or of the notice of refusal to re-consider the decision, or of the notice whereby the application is recognized as having been recalled, the applicant may submit an objection with the Chamber for Patent-Related Disputes within three months of the date of receipt of such decision, such notice of refusal to re-consider, or such notice to recognize the application as having been recalled, or of copies of material counter-posed to the designation, as requested from the Patent Office, provided that the applicant requested the same within one month of the date when he received the decision. | * With reliance on the arguments of an applicant, the examiner(s) may re-consider the decision himself (themselves); such a provision comes in line with the conditions of the Madrid Agreement and the Protocol thereto. The wording is in harmony with the above changes to Article 10 of the Law. The disbanding of the Appeals Chamber is explained by the realization that it is inexpedient to have at the Patent Office two bodies empowered to consider oppositions and cancellation requests in accordance with administrative procedure. |
| 2. Where an applicant takes exception to the decision passed by the Chamber of Appeals, the applicant shall be entitled to file a further appeal with the Supreme Patent Chamber of the Russian Federation (hereinafter referred to as the Supreme Patent Chamber) within six months of the date of receipt of the decision. The decision passed by the Supreme Patent Chamber shall be final.
| | |
| 3. An applicant shall be entitled to familiarize himself with the material referred to in the decision of the examiner(s).
| | |
| The applicant may request copies of such material within one month of the date of receipt of the decision on the application.
| | |
| * 4. The time periods provided for by ** Article 10, Clause 3 of this Law and Clauses 1 and 3 of this Article, if missed by an applicant, may be restored by the Patent Office pursuant to an appropriate request of the applicant, which shall be field not more than two months after the date of their expiry, provided that the reasons [for having missed such periods] are confirmed to have been valid and that the [requisite] fee is paid. *** | * 2. ** Article 9, Clause 4 of this Law and Clause 1 *** Such request shall be submitted to the Patent Office simultaneously with the material requested by the examiner(s) or with a request for extending the time for its submission or, alternatively, simultaneously with filing an opposition with the Chamber for Patent-Related Disputes. | * The numbering of clauses is adjusted. ** The changes reflect the amendments to be made to Article 9 and this Article of the Law. |
| Article 14.* Registration of a Trademark | * 13. | * The number of the article is adjusted. |
| On the basis of the decision to register a trademark, the Patent Office shall, within one month after the date of receipt of a document evidencing the payment of such fee as may be established, register the trademark in the Russian State Register of Trademarks and Service Marks (hereinafter, the “Register"). Such entry in the Register shall include the trademark, information about trademark proprietor, the date of priority of the trademark, the date of its registration, the list of goods in respect of which the trademark has been registered, and other information relating to the registration of the trademark, as well as any subsequent changes in such information.* ** | ** In the event of failure to submit to the Patent Office as required a document evidencing the payment of a fee for the registration of the trademark and the issuance of a certificate in respect thereof, the trademark shall not be registered, and the corresponding application shall be deemed to have been recalled. The full list of information to be submitted shall be as determined by the Patent Office. | *It appears to be more appropriate to provide the full list of information to be entered in the Register in a regulatory legal act by the Patent Office rather than to mention part of such information in the Law. ** The absence of such a provision leaves undefined the legal status of applications under which no fee was paid for the registration of trademarks and the issuance of certificates in respect thereof. The proposed amendment will enable the federal patent office to be more flexible in compiling the Register; it constitutes a step toward standardizing this provision with that of Article 14 (as per the new numbering). |
| Article 15.* Issuance of a Trademark Certificate | * 14. | * The number of the article is adjusted. |
| 1. The Patent Office shall issue a trademark certificate within three months * of the date of the trademark being recorded in the Register. | * one month | * This amendment aims to shorten the time needed to issue the title document to the proprietor of a trademark evidencing his exclusive rights. |
| 2. The form and content of the certificate shall be as determined by the Patent Office. | | |
| Article 16.* Term of Validity of Registration | *15. | ** The number of the article is adjusted. |
| 1. The registration of a trademark shall remain valid for * ten years as from the date of the application's receipt at the Patent Office. | * until the expiration of ** filing with | * The term of validity of the exclusive right is adjusted. ** This suggestion corresponds to the language added to Article 8, Clause 6 of the Law. |
| 2. The term of validity of a trademark registration may be extended at the request of its proprietor to be filed during the last year of such validity term, each time for a period of ten years. After the expiration of the term of validity of a trademark registration, a six-month term may, upon the request of its proprietor, be extended thereto for the purpose of extending the term of validity, provided that the proprietor pays an additional fee in respect thereof. | | |
| 3. An entry concerning the extension of the validity term of a trademark registration shall be made by the Patent Office in the Register and the trademark certificate. *
| * 3. The Patent Office shall make an entry in the Register to the effect that the term of validity of a trademark registration has been extended, and the trademark proprietor shall be notified accordingly. Upon the request of a trademark proprietor, an entry to such effect shall be made in the trademark certificate. | * The proposed amendment is in harmony with the practice accepted in the world’s leading nations; it serves the purpose of preserving trademark certificates. |
| Article 17. *Modifications to Registration | *16. | * The number of the article is adjusted. |
| * The proprietor of a trademark shall notify the Patent Office of any changes in its corporate/official name or his first, second and family names, any reduction in the list of goods in respect of which the trademark is registered, any alteration of individual elements of the trademark, not affecting its substance, and of other changes not related to the trademark registration. ** Any modifications to the Register and the trademark certificate shall be made subject to payment of an appropriate fee. ***
**** | * 1. ** In the event that the registration of a trademark effective in respect of several goods is challenged on such grounds and under such procedure as are determined by Article 28 of this Law, such registration may be divided at the request of the proprietor of the trademark. A request for the division of the registration of a trademark may be filed before a decision is passed by that body which is empowered to consider the dispute concerning the validity of such trademark registration. Such division shall be by means of dividing, between or among registrations, the goods in respect of which the trademark was registered. No division of similar goods between or among registration shall be permitted. *** Modifications to the Register shall be made subject to payment of an appropriate fee, and the proprietor of the trademark shall be notified accordingly. At the proprietor’s request, an entry reflecting the corresponding modification shall be made in the trademark certificate. **** 2. The Patent Office may, on its initiative, amend the trademark registration in order to correct obvious and technical mistakes made thereby. | ** The numbering of clauses is introduced. ** This amendment extends the provisions of Article 10, Clause 6 of the Law and corresponds to the provisions of Article 7 of the Trademark Law Treaty. *** This amendment is consistent with the practice accepted in the world’s leading nations; it serves the purpose of preserving trademark certificates. **** This suggestion aims to provide more solid guarantees of observance of the rights of trademark proprietors. |
| Article 18.* Publishing Information Concerning Registration | * 17 | * The number of the article is adjusted. |
| Information pertaining to the registration of a trademark and recorded in the Register pursuant to Article 14* of this Law shall be published by the Patent Office in its official newsletter within six months** after the date on which such trademark was recorded in the Register or since*** the date of on which changes were made in the Register to the registration of the trademark. | * 13 ** forthwith *** after | * The name of the agency is changed [sic! – B&M Tr. Dept.] ** *** The proposed shorter period comes in line with the requirements of TRIPS. |
| Article 19. * Registration of a Trademark in Foreign Countries | * 18. | * The number of the article is adjusted. |
| Juridical and natural persons of the Russian Federation shall have the right to register trademarks in foreign countries. An application for the international registration of a trademark shall be filed via the Patent Office. | | |
| * | * Chapter 3. Legal Protection of Well Known Trademark Article 19. Well Known Trademark 1. A trademark protected in the Russian Federation on the basis of its state registration, a trademark protected in the Russian Federation without registration by virtue of an international agreement to which the Russian Federation is a party, and also a designation used as a trademark but having no legal protection in the Russian Federation, which have become well known in the Russian Federation among corresponding groups of the public as a result of their intensive use in relation to goods of a certain juridical or natural person may be recognized to be a well known mark in the Russian Federation. No trademark may be recognized to be well known if it becomes well known after the date of priority of another person’s trademark identical with or confusingly similar to the former and intended for use in respect of similar goods. 2. A trademark well known in the Russian Federation shall be accorded legal protection provided for by this Law in respect of trademarks. In the event that a trademark which has already been registered in respect of specific goods is recognized to be a trademark well known in the Russian Federation, legal protection shall also extend to dissimilar goods on condition that the use of such similar trademark by another person in respect of dissimilar goods points to their connection with the proprietor of the trademark well known in the Russian Federation and encroaches on such proprietor’s interests. Article 20. Extending Legal Protection to a Well Known Trademark 1. Legal protection shall be extended to a well known trademark pursuant to a decision of the Chamber for Patent-Related Disputes, by which a trademark is recognized to be well known in the Russian Federation in accordance with the findings of the review of the application requesting the recognition of the trademark to well known in the Russian Federation. The procedure for filing such application to, and for its review by, the Chamber for Patent-Related Disputes shall be laid down by the Patent Office. 2. The Patent Office shall record a trademark recognized to be well known in a List of Trademark Well Known in the Russian Federation (hereinafter, the “List”). The makeup of information to be thus recorded in the List shall be determined by the Patent Office. The List shall also include changes relating to any such well known trademark. 3. The Patent Office shall issue a certificate in respect of a well known trademark within one month after the date of the trademark’s recording in the List. The form of the certificate and the content thereof shall be as determined by the Patent Office. 4. Information relating to a well known trademark recorded in the List in accordance with Clause 2 of this Article shall be published by the Patent Office in the official newsletter forthwith after its recording in the List. 5. Legal protection extended to a well known trademark shall be of unlimited duration. | * The inclusion of this chapter aims to implement Article 6bis of the Paris Convention, which extends legal protection to well known trademarks and comes in line with the provisions of Article 16, Clause 3 of TRIPS. |
| Chapter 3.* Collective Mark | * 4. | * The number of the chapter is adjusted. |
| Article 20.* Right to a Collective Mark | * 21. | * The number of the article is adjusted. |
| * 1. The collective mark shall be understood to mean a trademark of a guild, business association or other voluntary alliance of businesses (hereinafter, an "alliance") intended to designate goods manufactured and/or sold thereby and possessing the same qualitative or other common characteristics. | * 1. The collective mark shall be understood to mean a trademark intended to designate manufactured and/or sold goods possessing the same qualitative or other common characteristics, such trademark belonging to an association, the existence of which is not against the laws of a country where such association has been established. | * This amendment comes in line with current Russian legislation and the provisions of Article 7bis of the Paris Convention. |
| 2. A collective mark and the right to use the same may not be transferred to other persons. | | |
| Article 21.* Registration of a Collective Mark | * 22. | * The number of the article is adjusted. |
| 1. An application for the registration of a collective mark shall be accompanied by the rules of the collective mark which shall indicate the official name of the alliance authorized to register the collective mark in its name, a list of businesses* entitled to use the mark, the objective of its registration, a list and a description of the same qualitative or other common characteristics of the goods designated by the collective mark, the terms and conditions of its use, the procedure for control over such use, and liability for breaching the rules of the collective mark. | * persons | * This amendment will make it possible to embrace diverse formations desiring to organize an association which registers a collective mark in its name. |
| 2. The Register and the certificate of a collective mark shall, in addition to information provided by Article 14* of this Law, include information about businesses* entitled to use the mark. Such information and an excerpt from the rules of a collective mark indicating the same qualitative or other common characteristics of the goods in respect of which such mark is registered shall be published by the Patent Office in its official newsletter. The proprietor of a collective mark shall notify the Patent Office or any changes in the rules of the collective mark. | * 13 ** persons | * The number of the article is adjusted. ** This amendment will make it possible to embrace diverse formations desiring to organize an association which registers a collective mark in its name. |
| 3. In the event that a collective mark is used in relation to goods that do not have the same qualitative or other common characteristics, the registration may be terminated in full or in part before the expiration of the term of its validity pursuant to a decision of the Supreme Patent Chamber passed upon the request of any person. ** | * court judgement ** 4. A collective mark or an application for its registration may be transformed, accordingly, into a trademark or an application for its registration and vice versa. The procedure for such transformation shall be laid down by the Patent Office. | * This matter is up to courts to decide, as it is not related in any way to the protectability of a trademark. ** The need for this amendment made itself felt during practical work of the Patent Office. |
| Chapter 4.* Use of a Trademark | * 5. | * The number of the chapter is adjusted. |
| Article 22.* Use of a Trademark and Consequences of Non-Use Thereof | ** 23. | * The number of the article is adjusted. |
| 1. Use of a trademark shall be understood to mean its use by the trademark proprietor or a person to which (whom) such right has been extended pursuant to a license agreement in compliance with Article 26 of this Law on goods in respect of which such trademark has been registered, and/or on the packaging thereof. Application of a trademark in advertising, printed matter, letterheads, and during demonstration of exhibits at exhibitions and fairs held in the Russian Federation may be recognized as its use; provided, however, valid reasons exist for non-use of such trademark on goods and/or their packaging. | | |
| A2. Juridical and natural persons engaged in business as intermediaries may, pursuant to an appropriate agreement, use their own trademark alongside the trademark of the manufacturer of goods, as well as in its place and stead. | | |
| 3. The term of validity of the registration of a trademark may be terminated in full or in part before the expiration of such term pursuant to a decision passed by the Supreme Patent Chamber upon the requests of any person in view of uninterrupted non-use of the trademark for five years after the date of its registration or five years preceding the date of filing such request.* ** Whenever a decision is to be take on an early termination of the term of validity of a trademark registration in consequence of its non-use, consideration may be given to evidence adduced by the trademark's proprietor to the effect that the trademark was not in use for reasons for which the proprietor was not responsible. | * The validity of a trademark registration may be terminated [before the expiry of its actual term] in respect of all or part of the goods because of uninterrupted non-use of the trademark during any three years after its registration by a decision of the Chamber for Patent-Related Disputes adopted at the request of any person filed during such period of uninterrupted non-use. ** Proof of use of a trademark shall be adduced by its proprietor. The use of a trademark, individual elements of which have been altered while its substance has remained unchanged, shall not entail an early termination of the term of validity of the trademark. | * This amendment alters the period of non-use of a trademark [leading to its invalidation]. ** This amendment takes into account to the maximum degree the provisions of Article 5 C-(1) and (2) of the Paris Convention. |
| Article 23.* Limit to the Rights Arising out of the Registration of a Trademark | *24. | * The number of the article is adjusted. |
| The registration of a trademark shall not entitle its proprietor to prohibit other persons from using such trademark in respect of those goods introduced into commerce* either directly by the trademark proprietor or with the consent thereof. | * in the Russian Federation | * The territory where the limit-of-rights principle applies is defined more specifically. |
| Article 24.* Warning Sign | * 25. | * The number of the article is adjusted. |
| The proprietor of a trademark may affix a warning sign* beside its (his) trademark indicating that the designation used is a trademark registered in the Russian Federation. | * in the form of the Latin letter R or the symbol ® or the verbal designation "Trademark" or "Registered Trademark" | *The proposed amendment as regards warning signs comes in line with world practice and is present in applicable laws of such countries as, for example, the USA and Japan. |
| Chapter 5.* Transfer of a Trademark | * 6. | * The number of the chapter is adjusted. |
| Article 25.* Assignment of a Trademark | * 26. | * The number of the article is adjusted. |
| A trademark may be assigned by its proprietor to a juridical or natural person* under an appropriate agreement in relation to all or part of the goods in respect of which it is registered. No assignment of a trademark shall be permitted if it may be the reason for misleading the consumer with respect to goods or its manufacturer. | * engaged in entrepreneurial activity | * This amendment makes the provision conform to the provision of Article 2, Clause 3 of the Law. |
| Article 26.* Grant of a License for the Use of a Trademark | * 27. | * The number of the article is adjusted. |
| The right to use a trademark may be granted by the trademark's proprietor (licensor) to another person* (licensee) under an appropriate license agreement. | * juridical or natural person engaged in entrepreneurial activity | * * This amendment makes the provision conform to the provision of Article 2, Clause 3 of the Law. |
| A license agreement shall contain a condition whereby the quality of the licensee's goods shall not be inferior to the quality of the licensor's goods and that the licensor shall exercise control over compliance with such condition. | | |
| Article 27. Registration of a Trademark Assignment or License Agreement*
| * Article 28. Registration of Trademark Assignment, Grant of a License to Use a Trademark and Pledge of Exclusive Right to a Trademark | * The number of the article is adjusted and the title is made to conform to Article 164 of the RF Civil Code. |
| A trademark assignment or a trademark license agreement shall be registered with the Patent Office, failing which no such assignment or license agreement shall be deemed valid.*
| * Transactions involving the transfer of a trademark (assignment of a trademark, or the grant of a license to use a trademark) and also involving the pledge of the exclusive right to the trademark shall be subject to registration with the Patent Office. Failing such registration, no transaction as aforesaid shall be valid. The procedure for and conditions of registering such transactions shall be laid down by the Patent Office. | * The content of this article is made to conform to Article 164 of the RF Civil Code regulating state registration of transactions and is brought in line with the sphere of competence of the federal agency in the executive branch of government in charge of patents and trademarks. |
| Chapter 6. Termination of Legal Protection of a Trademark*
| *Chapter 7. Invalidation of a Trademark Registration and Termination of Legal Protection of a Trademark | * The number of the chapter is adjusted and the title of the chapter is made to conform to its contents. |
| Article 28. Invalidating the Registration of a Trademark*
| * Article 29. Challenge and Invalidation of the Registration of a Trademark | *The number of the article is adjusted and the title of the article is made to conform to its contents. |
| *1. The registration of a trademark may be invalidated in full or in part at any time during its term of validity if effected in breach of the requirements set out in Article 2, Clause 3 and by Article 6 of this Law or within five years after the publishing of information in the official bulletin for reasons set out by Article 7 of this Law. 2. Any person may, within the time frame provided by Clause 1 of this Article, institute a cancellation action at the Appeals Chamber against the registration of a trademark. Such cancellation action against the registration of a trademark shall be considered within four months of the date of its initiation.
3. An appeal against a decision of the Appeals Chamber may be lodged with the Supreme Patent Chamber within six months of the date of its passing. A decision of the Supreme Patent Chamber shall be final.
| * 1. The registration of a trademark may be challenged and invalidated: (1) in full or in part at any time during its term of validity, if effected in breach of the requirements set out in Article 6, Clauses 1-4 of this Law; (2) in full or in part at any time within five years after the publishing of information in the official newsletter, if effected in breach of the requirements set out in Article 6, Clauses 5-7 of this Law. The requirements set out by Paragraphs 1 and 2 of Article 6, Clause 5 of this Law shall be deemed breached on condition of the confirmation of the fact that the use of trademarks in respect of similar goods has caused confusion; (3) in full or in part at any time within five years after the publishing of information in the official newsletter, if the registered trademark reproduces the following: a trade name (or a part thereof) known in the Russian Federation in respect of similar goods, an industrial sample, or a certification mark, the right to which have emerged in the Russian Federation before the date of priority of such registered trademark; the name of a work of science, literature or art, a character or a quotation therefrom, a work of art or its detail, provided always that such trademark has been registered without the consent of the copyright holder or its/his successor; the first name, family name or pseudonym or a derivative therefrom, a portrayal portraits and facsimile reproductions of renowned persons, provided always that such trademark has been registered without the consent of such person or his/her successor; a designation which has been used for a long time by another persons to designate similar goods, provided always that such use began prior to the date of priority of the trademark whose registration is being challenged, and the period of use of the designation is longer than the period of the trademark's use; (4) in full or in part at any time during its term of validity, if effected in breach of the requirements set out in Article 2, Clause 3 of this Law; (5) in full or in part at any time during its term of validity, if effected in the name of an agent or representative of the person which (who) is the proprietor of such trademark in one of the countries, signatories of an [international] agreement to which the Russian Federation is party, without the consent of such trademark's proprietor; (6) in full or in part at any time during its term of validity, if actions undertaken by the proprietor of the trademark in registering the same have been recognized to be an act of unfair competition. 2. The extension of legal protection to a well known trademark may be challenged and invalidated in full or in part at any time during its term of validity, if effected in breach of the requirements set out in Article 19, Clause 1 of this Law. 3. Within such time and on such grounds as provided by Subclause 1 and Subclause 3 of Clause 1 of this Article, any person may file an opposition with the Chamber for Patent-Related Disputes against the registration of a trademark, save when an opposition is filed by reason provided for by Paragraph 1 of Subclause 2 of Clause 1 of this Article with account taken of the provisions of Paragraph 2 of Clause 1 of this Article. Such opposition is filed by the proprietor of a trademark with an earlier priority in respect of similar goods, which (who) regards his mark as being confusingly similar to the trademark, the registration of which is being challenged. Within such time and on such grounds as are provided by Subclause 5 of Clause 1 of this Article, any person may file an opposition with the Chamber for Patent-Related Disputes against the registration of a trademark. An opposition against the registration of a trademark, if by reason provided for by Subclause 6 of Clause 1 of this Article, shall be filed with the Chamber for Patent-Related Disputes by the proprietor of the trademark which is protected by virtue of international agreements to which the Russian Federation is a party. An opposition against the extension of legal protection to a well known trademark, if filed by reason provided for by Clause 2 of this Article, may be filed by any person to the Chamber for Patent-Related Disputes. The procedure for filing oppositions and their review by the Chamber for Patent-Related disputes shall be as laid down by the Patent Office. A request for invalidating a registration by reason provided for by Subclause 6 of Clause 1 of this Article shall be filed with the federal anti-monopoly agency or a court in accordance with Russian legislation. 4. The registration of a trademark shall be invalidated in full or in part pursuant to a decision made by: the Chamber for Patent-Related Disputes; the Patent Office; the federal anti-monopoly agency; or a court judgement, provided that such decision or judgement has taken legal effect. | *This suggestion describes in more specific details the grounds for invalidating a trademark registration and names agencies authorized to consider objections to the registration of trademarks. |
| * Article 29. Canceling the Registration of a Trademark | * Article 30. Termination of a Trademark Registration | * The number of the article is adjusted and the title of the article is made to conform to its contents. |
| * The registration of a trademark shall be cancelled by the Patent Office: - on the expiration of the term of its validity as provided by Article 16 of this Law;
- pursuant to a decision of the Supreme Patent Chamber to terminate before the expiration of the validity term by reason of a collective mark being used on goods that do not have the same qualitative or other common characteristics as required under Article 21, Clause 3 of this Law;
- pursuant to a decision of the Supreme Patent Chamber to terminate before the expiration of the validity term by reason of the mark's non-use in accordance with Article 22, Clause 3 of this Law;
- in the event of its invalidation pursuant to Article 28 of this Law;
- on the liquidation of the juridical person which is to be the proprietor of the trademark;
- pursuant to a decision of the Supreme Patent Chamber in the event of the trademark becoming a designation in common use as a designation of goods of a certain type;
- in the event of its abandonment by the proprietor of the trademark.
| The registration of a trademark shall be terminated: on the expiration of the term of its validity as provided by Article 15 of this Law; pursuant to a court judgement that has taken legal effect concerning an early termination of the registration by reason of a collective mark being used on goods which do not have the same qualitative or other common characteristics as required under Article 22, Clause 3 of this Law; pursuant to a decision of the Chamber for Patent-Related Disputes that has taken legal effect concerning an early termination of the registration by reason of the trademark's non-use in accordance with Article 23, Clause 3 of this Law; pursuant to a decision of the Patent Office that has taken legal effect concerning an early termination of the registration in the event of liquidation of the juridical person which is to be the proprietor of the trademark or in the event of discontinuance of the entrepreneurial activity of the natural person who happens to be the proprietor of the trademark, and in the absence of a successor; pursuant to a decision of the Chamber for Patent-Related Disputes that has taken legal effect concerning an early termination of the registration in the event of the trademark becoming a designation in common use as a designation of goods of a certain type; in the event of its abandonment by the proprietor of the trademark; pursuant to a decision of the federal anti-monopoly agency of a court judgement that has taken legal effect, whereby actions undertaken by the trademark's proprietor in registering or using the mark have been recognized an act of unfair competition, and also a court judgement whereby the proprietor of the trademark is recognized to have abused its right to the trademark; pursuant to a decision of the Patent Office that has entered into legal force on pre-term cessation of its validity in connection with the transformation of the trademark upon the request of its owner, into the compliance mark by the federal executive body, responsible for inter-branch coordination and operational regulation in the sphere of standardization, metrology and certification following the procedures established by the Government of the Russian Federation. A trademark may be transformed in a compliance mark in prior to January 1, 1992 a designation, identical or confusingly similar to this trademark, was used by several state enterprises on the goods, that were produced in accordance with the state standards and are similar to the goods, in relation to which this trademark has obtained legal protection after January 1, 1992. 2. Legal protection of a well known trademark shall terminate on the grounds provided for by Paragraphs 4-8 of Clause 1 of this Article and also pursuant to a decision of the Chamber for Patent-Related Disputes in the event that a well known trademark loses those features described by Paragraph 1 of Article 19, Clause 1 of this Law. | |
| SECTION II. Appellation of Origin | | |
| Chapter 7.* Appellation of Origin | * 8. | * The number of the chapter is adjusted. |
| Article 30.* Appellation of Origin and Its Legal Protection | * 31. | * The number of the article is adjusted. |
| 1. An appellation of origin shall be understood to mean the name of a country, community, locality or another geographical object (hereinafter, “geographical object”), which is used to designate goods the special properties of which are determined, exclusively or substantially, by the natural conditions or human factors specific to such geographical object or jointly by such natural conditions and human factors. The historical name of a geographical object may serve an appellation of origin. 2. A designation shall not be deemed an appellation of origin if it represents or includes the name of a geographical object, but is commonly used in the Russian Federation as a designation for a certain type of goods which is not associated with their place of production. | | |
| Article 31.* Eligibility for Legal Protection | * 32. | * The number of the article is adjusted. |
| 1. Legal protection of an appellation of origin in the Russian Federation shall stem from its registration in accordance with the procedure prescribed by this Law or by virtue of international agreements to which the Russian Federation is a party. | | |
| 2. An appellation of origin shall be protected by law. 3. An appellation of origin may be registered by one or more juridical or natural persons. A registrant of an appellation of origin shall be entitled to use the same if goods produced by such person meet the requirements set out in Article 30,* Clause 1 of this Law. The right to use the same appellation of origin, if duly registered, may be granted to any juridical or natural person located or resident in the same geographical object and producing goods with the same properties. ** 4. The registration of an appellation of origin shall be valid indefinitely. | * 31 ** producing goods with the same properties and situated in the geographical object whose name was registered as such appellation of origin. | * The number of the article is adjusted. ** This amendment makes it possible to pass more objective decisions concerning the grant of the right of use of appellations of origin. |
| Chapter 8.* Registration and Grant of Right to Use an Appellation of Origin | * 9. | * The number of the chapter is adjusted. |
| Article 32.* Application for Registration of and Grant of Right to Use an Appellation of Origin | * 33. | * The number of the article is adjusted. |
| 1. An application for the registration of and grant of the right to use an appellation of origin or an application for the grant of the right to use an appellation of origin already registered (hereinafter, “application”) shall be filed by an applicant(s)*with the Patent Office either independently or through a patent attorney** in accordance with Article 8,*** Clause 2 of this Law. | * natural and/or juridical person(s) (hereinafter, the applicant) ** registered with the Patent Office *** 7 | * This amendment corresponds to the provisions of Article 32, Clause of the Law. ** This revision corresponds to that made to Article 8 of the Law. *** The number of the article is adjusted. |
| 2. An application shall be filed for a single appellation of origin. | | |
| 3. An application shall contain the following: statement requesting the registration of and grant of the right to use an appellation of origin or the grant of the right to use an appellation of origin already registered, naming the applicant(s) and its/his (their) location(s) or domicile(s). designation applied for; type* of goods for which the registration of and grant of the right to use the appellation of origin or the grant of the right to use the appellation of origin already registered is sought, and an indication of their place of production (boundaries of the geographical object); and
description of the special properties of such goods. An application shall be in the Russian language.** | * description ** and signed by the applicant or, if filed through a patent attorney, by the applicant or the patent attorney. | * This amendment underlines that an appellation of origin does not necessarily individuate a good but rather in indicates workmanship, technique of manufacture, etc. in most cases. ** This amendment is made in order to ensure only one interpretation of this article in toto, which allows an application to be filed either by the applicant himself or solely by such representative thereof, who is a patent attorney (such restricted representation is explained in this case by the fact that the matter at hand is a claim of rights, in view of which the representative must meet certain qualification requirements). |
| 4. An application shall be accompanied by the following: *statement issued by a competent authority** and serving to confirm that the applicant is resident in the geographical object concerned and produces goods the special properties of which are determined by the natural conditions or human factors specific to such geographical object or jointly by such natural conditions and human factors; with regard to a foreign applicant: document certifying its/his right in the country of origin to the appellation of origin applied for; document evidencing payment of such fee as may be established. Documents accompanying an application shall be filed in Russian or another language. If they are filed in such other language, the application shall be accompanied by their translation into Russian. The applicant may submit such translation into Russian within two months of the Patent Office’s of an application containing documents in a language other than Russian.*** **** | * with regard to a Russian applicant: ** (competent authorities) *** not later than two months after the date when the Patent Office sent it a notice of the need to comply with this requirement. **** 5. The date on which an application shall be deemed filed with the Patent Office shall be the receipt date of the documents listed in Clause 4 of this Article or, if such documents were submitted other than simultaneously, the receipt date of the last of such documents filed. | * More specific requirements are made depending on whether the applicant is a Russian or foreign juridical or natural person. ** This amendment is necessitated by the practice of the patent office which shows that, as a rule, documents from several agencies or departments are submitted, each confirming within the limits of its competence some or other piece of information. *** This language is added because of the need to standardize the provisions of Section I of the Law relating to trademarks and Section II of the Law relating to appellations of origin. **** This amendment aims to provide more solid guarantees of observance of the applicants' rights |
| 5.* The requirements in respect of documents attached to the application shall be as established by the Patent Office.
| *6. | *The numbering of clauses is adjusted. |
| Article 33.*Examining an Application | * 34. | * The number of the article is adjusted. |
| 1. The examination of the application shall conducted by the Patent Office and shall comprise a preliminary* examination and an examination of the designation applied for. | * formal | *This amendment reflects the meaning of the first stage of such examination and co mes as a move to standardize the terminology of used in the Law and the Russian Patent Law. |
| 2. While an application is being examined and while a decision in respect thereof is pending, the applicant shall be entitled supplement, update or amend on its initiative the material attached to the application . Should any supplementary material alter an application in substance, such material shall not be accepted for consideration and may be formally filed by the applicant as an independent application.* | *and the applicant shall be notified accordingly. | * This amendment aims to create more solid guarantees of observance of the applicants' rights. |
| 3. While an application is being examined, the Patent Office shall be entitled to request from the applicant additional material in the absence of which the examination is impossible. Such additional material requested by examiner(s) shall be submitted within two months of the date of receipt of the request.* Upon the applicant's petition this period may be prolonged on condition that such petition is filed prior to the expiration of this period. Should the applicant fail to submit the requested material on time or ignore the examiner's (examiners') request, the application shall be deemed recalled. | * the applicant receiving the request. ** In the event that the applicant fails to provide the material requested or to submit a request for an extension of the time period prescribed for the submission of such material, the application shall be deemed recalled. The period of time prescribed for responding to the examiner’s request may be extended, but by not more than six months. A decision to deem an application to have been recalled may be reversed by the Patent Office, if made in breach of those conditions for deeming an application to have been withdrawn which are set out in this Law and within three months of the forwarding date of a notice sent to advise the applicant about its/his application deemed to have been recalled, but at no time later than upon the receipt of the applicant’s appeal as provided for in Article 35, Clause 1 of this Law.`` | * ** The proposed amendments revise the procedure and will make it possible to shorten the period are |
| 4. A preliminary* examination of an application shall be performed within two months of the date of its receipt by** the Patent Office. A preliminary examination shall aim to check on the contents of an application, the presence of the necessary documents and on their conformity with the established requirements. Depending on the findings of a preliminary examination, the applicant shall be notified either of the acceptance of the application for examination or the denial of acceptance.***
| * formal ** filing with *** A formal examination of an application shall aim to check on its contents, the presence of the necessary documents, and their conformity with the requirements formulated by Article 33, Clause 3 of this Law. Depending on the findings of the formal examination, the application shall be accepted for consideration or a decision shall be made to refuse to accept the same for consideration. **** An applicant shall be notified of the positive outcome of a formal examination and of the application filing date as determined in accordance with Article 32, Clause 5 of this Law. ***** A decision made upon the findings of a formal examination to refuse to accept an application for consideration may be reviewed by the Patent Office, if made in breach of the procedure for considering an application as required hereunder and within three months of the forwarding date of such decision sent to the applicant, but at no time later than upon the receipt of the applicant’s appeal by the Chamber for Patent-Related Disputes. | * Same as Article 33 of the Law. ** Same as Article 11 of the Law. *** This amendment explains what is done at the first stage of the examination. **** ***** The suggestions aim to provide more solid guarantees of observance of the applicants' rights. |
| 5. The designation filed* under an application which has been accepted for examination shall be checked for compliance with the requirements set out in Article 30* of this Law. *** | * applied for ** 31 *** Pending a decision upon the findings of an examination of a designation applied for, the applicant may be notified of the results of a check performed to verify the compliance of such designation to the requirements set out in Article 31 of this Law along with an invitation to submit its/his arguments regarding the grounds of such notification. The applicant's arguments shall be taken into account in decision-making based on the findings of the examination of the designation applied for, provided that the same are submitted within six months of the date of giving such notice. | * The wording is more accurate. ** The number of the article is adjusted. *** This suggestions aims to provide more solid guarantees of observance of applicants' rights. |
| 6. Depending on the findings of the examination, the Patent Office shall decide either to register the corresponding appellation of origin and grant the right to use the same or to refuse to register the appellation of origin and grant the right to use the same, or shall decide to grant the right to use the corresponding appellation of origin already registered or to refuse to grant such right. * | * A decision upon the findings of an examination conducted in respect of a designation applied for may be re-considered by the Patent Office on its initiative, if made in breach of the procedure for the consideration of applications as prescribed by this Law and within three months of the date of such decision being forwarded to the applicant, but at no time later than upon the receipt of the applicant’s opposition by the Chamber for Patent-Related Disputes. | * This suggestion aims to provide more solid guarantees of observance of the applicants' rights. |
| 7. An applicant may withdraw an application at any time during its examination. | | &n bsp; |
| Article 34.*Appeals Against Decisions on Applications and Restoration of Missed Periods of Time | * 35. | * The number of the article is adjusted. |
| * 1. Where an applicant takes exception to the decision made upon the findings a preliminary examination or an examination of the designation applied for, the applicant shall be entitled to file an appeal with the Chamber of Appeals within three months of the date of receipt of the decision. The appeal shall be considered by the Chamber of Appeals within four months of th e date of its receipt. 2. Where an applicant takes exception to the decision passed by the Chamber of Appeals, the applicant shall be entitled to file a further appeal with the Supreme Patent Chamber within six months of the date of receipt of the decision. The decision passed by the Supreme Patent Chamber shall be final.
| * 1. Should an applicant take exception to a decision upon the findings of a formal examination to refuse to accept its/his application for consideration, or an examination of the designation as applied for, or refusal to review any such decision, or a decision to deem the application to have been recalled, the applicant may file an appropriate objection with the Chamber for Patent-Related Disputes within three months of the date of receipt of the respective decision, notice of refusal to review the same, or notice of the decision to deem the application to have been recalled. The procedure for the filing of such objections with and for their consideration by the Chamber for Patent-Related Disputes shall be laid down by the Patent Office. | * The wording comes in line with the amendments proposed in connection with Article 33 of the Law. It appears inexpedient to have at the Patent Office two bodies empowered to consider oppositions and cancellation requests in accordance with administrative procedure. |
| *3. The time periods provided for by Article 32, Clause 3 of this Law and Clauses 1 and 3 of this Article, if missed by an applicant, may be restored by the Patent Office on the basis of an appropriate petition of the applicant, which shall be field not more than two months after the date of their expiry, provided that the reasons [for having missed such periods] are confirmed to have been valid and that the fee is paid. *** | * 2. ** 34 *** Such petition shall be filed with the Patent Office together with the material requested by the examiner(s) or with a request for extending the time period prescribed for its submission, or with an objection filed with the Chamber for Patent-Related Disputes. | *The numbering of clauses is adjusted. ** The number of the article is adjusted. *** This amendment comes in line with the requirements of current procedural legislation.. |
| Article 35.* Registration of Appellation of Origin and Issuance of Certificate for Right to Use Appellation of Origin | * 36 | * The number of the article is adjusted. |
| 1. On the basis of a decision by the examiner(s), the Patent Office shall register the appellation of origin in the Russian State Register of Appellations of Origin (hereinafter, the “Register"). *Records in the Register shall include the appellation of origin, information about the holder of the certificate of the right to use the same (hereinafter, “certificate”), the type of goods for which the appellation of origin was registered, a description of their special properties, and other information relating to the registration of and grant of the right to use the appellation of origin, and an extension of the certificate’s validity period, as well as subsequent changes to such information. ** | * The Register shall include information relating to the registration of and grant of the right to use the appellation of origin, as well as subsequent changes to such information. ** The full makeup of such information shall be as determined by the Patent Office. | * ** The proposed amendments will enable the federal patent office to be more flexible in compiling the Register; they consitute a step toward standardizing this provision with that of Clause 3 of this Article. |
| 2. The Patent Office shall issue a certificate of the right to use an appellation of origin within three months** of the date of receipt of a document evidencing payment of the fee. ** | * one month ** Unless a document evidencing payment of the fee for the issuance of a certificate of the right to use an appellation of origin is duly submitted, the certificate of the right to use the appellation of origin shall not be issued and the corresponding application shall be deemed recalled. | * This amendment aims to shorten the time needed to issue a title document to the proprietor of a trademark. ** The absence of such a provision leaves undefined the legal status of applications under which no fee was paid for the issuance of a certificate of the right to use an appellation or origin. |
| 3. The form and content of such certificate shall be as determined by the Patent Office. | | |
| Article 36.* Term of Validity of Certificate for Right to Use Appellation of Origin | * 37. | * The number of the article is adjusted. |
| 1. A certificate shall remain valid *for a term of ten years as from the date of the application's receipt at the Patent Office. | * until the expiration of ten years as from the date of the application's filing with | * This amendment comes in line with that made to Article 33, Clause 4 of the Law. |
| 2. The term of validity of a certificate may be extended at the request of its holder and subject to the submission* by it (him) of a statement issued by a competent authority and confirming that the holder of the certificate is situated (resident) in the geographical place concerned and produces goods featuring those properties which are stated in the certificate. Such request shall be filed during the last year of the term of validity period of a certificate. The validity term of a certificate shall each time be extended for ten years. At the request of a certificate holder, a six‑month period may be granted thereto for extending the validity term of the certificate upon the expiry thereof subject to payment of an additional fee. | * of the following: by the certificate holder: of a statement issued by a competent authority (authorities) and confirming that the holder of the certificate is situated in the geographical object concerned and produces goods featuring those properties which are stated in the certificate; by the foreign certificate holder: a document confirming the latter’s right to use the appellation of origin in the country of origin of such goods. | * This amendment is based on experience of practical work of the patent office and the actual content of documents submitted thereto. |
| *3. An entry concerning the extension of the validity term of a certificate shall be recorded by the Patent Office in the Register and in the certificate. | * 3. An entry concerning the extension of the validity term of a certificate shall be recorded by the Patent Office in the Register and the holder of the certificate shall be notified accordingly. At the request of a certificate holder, an extension entry shall also be made in the certificate. | * This amendment constitutes a move toward standardizing the provisions of the Law. |
| Article 37.* Amendments to Register and to Certificate ** | * 38 ** for the Right to Use an Appellation of Origin | * The number of the article is adjusted. ** This amendment is prompted by the need to cite the full name of the document of title. |
| * The holder of a certificate shall notify the Patent Office of any changes in its corporate/official name or his first, second and family names, as well as any other changes relating to the registration of and grant of the right to use an appellation of origin. Any modifications to the Register and ** the certificate shall be made subject to payment of an appropriate fee. *** | * 1. ** , if the certificate holder so requests, *** 2. The Patent Office may on its own initiative make amendments to the Register in order to correct obvious and technical mistakes made earlier thereby. At the request of the holder of a certificate of the right to use an appellation of origin, such amendments shall also be made to the certificate. | *The numbering of clauses is introduced. ** This amendment constitutes a move toward standardizing the provisions of the Law. *** This suggestion aims to provide more solid guarantees of observance of the rights of the holder of a certificates of the right to use an appellations of origin. |
| Article 38.* Publishing Information About Registration of and Grant of Right to Use Appellation of Origin | * 39. | * The number of the article is adjusted. |
| *Information pertaining to the registration of and grant of the right to use an appellation of origin recorded in the Register pursuant to Article 35 of this Law shall be published by the Patent Office in its official newsletter within six months after the date on which they were recorded in the Register. | *Information pertaining to the registration of and grant of the right to use the appellation of origin recorded in the Register pursuant to Article 36 of this Law, except for information which describes any special properties of the good [to which the appellation of origin refers], shall be published by the Patent Office in its official newsletter forthwith after the date on which they were recorded in the Register or the date on which changes were recorded in the Register pertaining to such registration of and grant of the right to use the appellation of origin. | * In order to protect the interests of certificate holders, it appears unnecessary to publish information describing special properties of goods. |
| Article 39.* Registration of Appellation of Origin in Foreign Countries | * 40. | * The number of the article is adjusted. |
| 1. Juridical and natural persons of the Russian Federation shall have the right to register appellations of origin in foreign countries. 2. An application for the registration of an appellation of origin in foreign countries shall be filed after the registration of and grant of the right to use such appellation of origin in the Russian Federation. | | |
| Chapter 9.* Use of Appellation of Origin | * 10. | * The number of the chapter is adjusted. |
| Article 40.* Use of Appellation of Origin | 41. | * The number of the article is adjusted. |
| 1. Use of an appellation of origin shall be understood to mean its use on goods and their packaging, as well as in advertising, prospectuses, invoices, blank forms and other documentation connected with the commercial use of such goods. | | |
| 2. A registered appellation of origin may not be used by such parties as do not have an appropriate certificate, even if they indicate the true place of origin of the corresponding goods or use the appellation of origin in its translation or in a combination with such words as "kind", "type", "imitation" and the like, nor may a designation similar* to it be used for similar goods if it is capable of misleading **consumers as to the place of origin or special properties of the goods concerned. | * any ** the consumer | * This amendment aims to expand legal protection available to appellations of origin. ** The word is changed. |
| 3. The holder of a certificate may not grant licenses to other persons for the use of the respective appellation of origin. | | |
| Article 41.* Warning Sign | *42 | * The number of the article is adjusted. |
| The holder of a certificate may affix a warning sign* beside an appellation of origin, such sign indicating that the designation used is an appellation of origin duly registered in the Russian Federation. | * in the form of a verbal designation "Registered Appellation of Origin" or "Reg. AoO." | *The proposed amendment as regards warning signs comes in line with world practice and constitutes a step toward standardizing the provisions of the Law dealing with trademarks and appellations of origin. |
| Chapter 10. *Termination of Legal Protection for Appellation of Origin | 11. | * The number of the chapter is adjusted. |
| *Article 42. Invalidating Registration of Appellation of Origin and Certificate of Right to Use Appellation of Origin
| *Article 43. Challenge of the Registration of Appellation of Origin and Certificate of Right to Use Appellation of Origin and Invalidation Thereof | * The number of the article is adjusted. Amendments to Chapter 10 aim to expound legally meaningful actions provided for by Article 41 [sic! – B&M Tr. Dept.]. |
| * 1. The registration of an appellation of origin may beinvalidated if carried out in violation of any requirements set out in this Law.
2. The registration of an appellation of origin may be terminated in connection with the disappearance of conditions specific to the geographic object concerned and of the possibility of producing goods featuring such properties as are described in appropriate records in the Register.
Apart from the above grounds, the registration of an appellation of origin registered in the name of a foreign juridical or natural person may also be terminated if such person loses the right to such appellation of origin in the country of origin of the corresponding goods.
3. A certificate of the right to use an appellation of origin may be invalidated if it was issued in breach of any requirements set out in this Law.
4. A certificate may be terminated in the following circumstances:
if the corresponding goods lose those special properties as described in the records made in the Register regarding the appropriate appellation of origin;
if the registration of the appellation of origin is cancelled;
if the juridical person holding the certificate is liquidated;
on the basis of an appropriate request filed by the holder of the certificate with the Patent Office.
5. Any person may file with the Chamber of Appeals a cancellation action against the registration of an appellation of origin and against the issuance of a certificate of the right to use an appellation of origin on those grounds which are listed in Clauses 1-4 of this Article. Such action shall be considered within four months of its receipt date. The canceling party and the holder of the certificate shall be entitled to take part in the review of any such cancellation action.
6. An appeal against a decision of the Appeals Chamber may be lodged with the Supreme Patent Chamber within six months of the date of its passing. A decision of the Supreme Patent Chamber shall be final.
7. The registration of an appellation of origin and a certificate of the right to use an appellation of origin shall be cancelled by the Patent Office if invalidated by a decision made by the Supreme Patent Chamber.
| * 1. The registration of an appellation of origin may be challenged and invalidated at any time during the entire length of its validity term, if effected in breach of any requirements set out in this Law. A certificate of the right to use an appellation of origin may be challenged and invalidated at any time during the entire length of its validity term if issued in breach of any requirements set out in this Law, or in connection with the invalidation of the registration of such appellation of origin. 2. Any person may file a cancellation action against the registration of an appellation of origin and against the issuance of a certificate of the right to use an appellation of origin with the Chamber for Patent-Related Disputes within such time frame and on such grounds as are provided for by Clause 1 of this Article. The procedure for the filing of such cancellation actions with and for their consideration by the Chamber for Patent-Related Disputes shall be as laid down by the Patent Office. 3. The registration of an appellation of origin and a certificate of the right to use an appellation of origin shall be invalidated on the basis of: a decision by the Chamber for Patent-Related Disputes that has taken legal effect; or a court judgement that has taken legal effect. | *This suggestion describes in more specific details the grounds for invalidating the registration of an appellation of origin and the right to use such appellation of origin, and names agencies authorized to consider any corresponding objections. |
| * | *Article 44. Termination of Registration of Appellation of Origin and Certificate of Right to Use Appellation of Origin 1. The registration of an appellation of origin shall be terminated: upon the disappearance of conditions specific to a particular geographical object and of the possibility of producing goods featuring those properties which are described in appropriate records in the Register; upon the loss by foreign juridical or natural persons of the right to such appellation of origin in the country of origin of the corresponding goods. 2. The certificate of the right to use an appellation of origin shall be terminated: upon the loss by the corresponding goods of their special properties as described in entries relating to such appellation of origin and recorded in the Register; upon the termination of the registration of the appellation of origin; upon the liquidation of the juridical person holding such certificate; on the basis of an appropriate request filed by the holder of the certificate with the Patent Office. 3. Any person may file a motion to terminate the registration of an appellation of origin and a certificate of the right to use an appellation of origin with the Chamber for Patent-Related Disputes on those grounds which are listed in the second and third paragraphs of Clause 1 and the second and third paragraphs of Clause 2 of this Article. Any person may file a motion to terminate a certificate of the right to use an appellation of origin with the Patent Office on those grounds set out in the fourth paragraph of Clause 2 of this Article. The procedure for the filing of such motions with and for their consideration by the Chamber for Patent-Related Disputes shall be laid down by the Patent Office. 4. The registration of an appellation of origin and a certificate of the right to use an appellation of origin shall be terminated pursuant to: a decision by the Chamber for Patent-Related Disputes; a decision by the Patent Office; or a court judgement, provided that such decision or judgement has taken legal effect. | |
| SECTION III. Final Provisions | SECTION III. Final Provisions | |
| Article 43.* State Patent Office of the Russian Federation | * 45. | * The number of the article is adjusted. |
| *In conformity with this Law, the State Patent Office of the Russian Federation shall steer a uniform policy for the protection of trademarks and appellations of origin in the Russian Federation, accept for consideration applications for the registration of trademarks and applications for the registration of appellations of origin, as well as applications for the registration of and grant of the right to use an appellation of origin, perform related examinations, carry out the state registration of such trademarks and appellations of origin, grant relevant certificates, publish official information, issue rules and explanations regarding the application of this Law, and shall perform such other functions related to trademarks and appellations of origin in accordance with the Regulations on the Patent Office as approved by the President of the Russian Federation. | * For the purposes of implementing a state policy in the field of legal relations pertaining to the legal protection of trademarks and appellations of origin, a special federal agency in the executive branch of government in charge of patents and trademarks (Patent Office) shall be established within the system of state agencies of the Russian Federation. Acting either independently or through specialized state institutions accountable thereto, the Patent Office shall perform the following functions provided for by this Law: accept for consideration applications for the registration of a trademark, for the registration of and grant of the right to use an appellation of origin, and for the grant of the right to use an appellation of origin already registered; perform related examinations and make decisions upon the findings of such examinations to refuse to accept such applications for consideration, to register or to refuse to register an appellation of origin, to register an appellation of origin and grant the right to use the same or to refuse to register such appellation of origin and grant the right to use the same, or to grant or to refuse to grant the right to use an appellation of origin already registered; state-register trademarks and appellations of origin; issue certificates; compile and update data products and publish official information; maintain international cooperation in the legal protection of trademarks and appellations of origin; effect certification and registration of patent attorneys; issue rules and other regulatory legal acts as regards the application of this Law, while acting within the limits of the Patent Office's sphere of competence; decide other matters related to the provision of legal protection for trademarks and appellations of origin. | |
| Article 44. *Fees | * 46. | * The number of the article is adjusted. |
| Legally meaningful actions involved in the registration of a trademark and the registration of and grant of the right to use an appellation of origin shall be performed for a fee. Such fees shall be payable to the Patent Office. The list of actions to be performed for a fee, the schedule of such fees, the relevant payment periods, and grounds for the refunding of fees paid shall be as determined as by the Russian Government. | | |
| Article 45. *Settlement of Disputes Arising in Connection With Application of This Law | * 47. | * The number of the article is adjusted. |
| 1. Disputes arising in connection with the application of this Law shall be examined* in accordance with the procedure laid down by Russian legislation, including disputes over: infringement of the exclusive right to a trademark; ** conclusion of and performance under trademark license agreements and assignments; unlawful use of an appellation of origin. | * by courts within the limits of their jurisdiction **early termination of the registration of a collective mark by reason of it being used on goods which do not have the same qualitative or other common characteristics. | *This amendments defines more specifically the range of disputes to be considered by courts. |
| 2. *The Supreme Patent Chambershall examine disputes falling within its competence in accordance with Articles 13, 21, 22, 28, 29, 34 and 42* of this Law. | * Chamber for Patent-Related Disputes * 12, 23, 29, 30, 35, 43 and 44 | * The name of the institution is revised. * The numbers of the articles are adjusted. |
| Article 46. *Liability for Unlawful Use of Trademark and Appellation of Origin | *48. | * The number of the article is adjusted. |
| 1. Such use of a trademark or appellation of origin or of a designation similar to a trademark or appellation of origin in respect of similar goods as runs counter to the provisions of Article 4, Clause 2 and Article 40,* Clause 2 of this Law shall entail civil and/or criminal liability in accordance with Russian legislation. | *41 | This amendment corresponds to the provision of Article 6, Clause 6 and the amendment made to Article 40 of the Law. |
| 2. Remedies available under civil law in connection with unlawful use of a trademark shall include the following, in addition to claims for the discontinuance of such infringement or for payment of related damages: publication of a court judgement in order to redress the damage done to the business reputation of the injured party; removal of the unlawfully used trademark or designation confusingly similar thereto from the corresponding goods or their packaging or* destruction of the manufactured images of such trademark or designation confusingly similar thereto. | * and/or | * The wording is revised. |
| 3. A person making unlawful use of a registered appellation of origin or designation confusingly similar thereto shall be obliged, if required to do so by the holder of a certificate of the right to use such appellation of origin, a non-governmental organization or a public prosecutor: to discontinue its use and compensate all injured parties for related losses, as well as to contribute to the local budget the amount of profits derived from such unlawful use of the appellation of origin in excess of such damages; to publish the relevant court judgement in order to redress the damage caused to the business reputation of the injured party; and remove the unlawfully used appellation of origin or designation confusingly similar thereto from the corresponding goods or** their packaging, or destroy the manufactured images of such appellation of origin or designation confusingly similar thereto. | *a governmental agency, public prosecutor or non-governmental organization: and/or | * This amendment broadens the range of institutions and persons empowered to raise the issue of unlawful use of an appellation of origin. ** This amendment makes the provision more specific. |
| 4. A person affixing a warning sign regarding a trademark or appellation of origin which has not been duly registered in the Russian Federation shall be liable pursuant to the procedure laid down by Russian legislation. | | |
| Article 47.* Rights of Foreign Juridical and Natural Persons | * 49. | * The number of the article is adjusted. |
| Foreign juridical and natural persons shall enjoy the rights granted by this Law on a par with juridical and natural persons of the Russian Federation by virtue of international agreements to which the Russian Federation is a party or on the basis of reciprocity. The right to register appellations of origin in the Russian Federation shall be granted to juridical and natural persons of countries granting the same rights to juridical and natural persons of the Russian Federation. | | |
| Article 48. * International Agreements | * 50. | * The number of the article is adjusted. |
| Where an international agreement to which the Russian Federation is a party establishes rules other than those herein contained, the rules of the international agreement shall apply. | | |
| | Articles 2 and 3 of the Draft Federal Law "On Amendments and Modifications to the Russian Federation Law 'On Trademarks, Service Marks and Appellations of Origin' " Article 2. With regard to those applications for the registration of a trademark, for the registration of and grant of the right to use an appellation of origin, and for the grant of the right to use an appellation of origin already registered, which were filed during the effective term of the RF Law "On Trademarks, Service Marks and Appellations of Origin" the following transitional arrangements shall apply until this Federal Law takes effect: 1. Applications for the registration of a trademark, a service mark, for the registration of and grant of the right to use an appellation of origin, and for the grant of the right to use an appellation of origin already registered, which are pending as of the date of this Federal Law taking effect, shall be considered by the Patent Office pursuant to such procedures as are stipulated by this Federal Law. 2. Oppositions or cancellation actions, and also complaints, petitions and requests which are still proceeding in the Appeals Chamber at the RF Patent Office or in the RF Higher Patent Chamber as of the date of this Federal Law taking effect, shall be considered by the Patent Office's Chamber for Patent-Related Disputes pursuant to such procedures as are stipulated by this Federal Law. 3. With regard to designations applied for prior to this Law taking effect those requirements shall apply which were in effect on the date when the corresponding applications. | Separate regulation with respect to applications referred to in this Article is necessitated by the application of a uniform procedure for considering applications filed pursuant to different legislative acts. The need for separate regulation with respect to complaints, petitions and requests referred to in this Article is explained by the fact that the amended and modified version of the Law "On Trademarks, Service Marks and Appellations of Origin" provides for a single appeals body (Chamber for Patent-Related Disputes) instead of two (Appeals Chamber and Higher Patent Chamber). The need for separate regulation with respect to applications referred to in this Article is explained by the fact that they were filed at the time when the protectability criteria applied, which are to be modified (Articles 6 and 7 of the Law). |
| | Article 3. This Federal Law shall take effect upon the expiration of ten days after the date of its official publishing | |
