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New trademark opposition procedure to be adopted in Russia

A novel trademark opposition procedure is about to be introduced soon in our country, said Dmitry Travnikov, the head of the Government Service department of the Russian Patent and Trademark Office (RUPTO), during his interview on Friday. According to the official, it will provide significant improvements to the whole trademark registration process in Russia.

Currently, the procedure is carried out as follows. All trademark applications filed with the RUPTO are first subject to the formal examination procedure and undergo a check for meeting several formal requirements, such as, for example, the presence of all necessary documents. Upon completion, the application passes to the substantive examination step, where the RUPTO’s examiners review and check it for features serving as unconditional or conditional grounds for a refuse.

The unconditional grounds are, among other, the lack of distinctiveness of the trademark, wrong categorization under the NICE classes, etc. The conditional grounds are usually caused by unintentional infringement, when the applied trademark is deceptively similar to another trademark covering the same type of products while being held by a third party.

The Russian Patent and Trademark Office proposes applicants to publish their trademarks on its website after checking against the unconditional grounds for a refuse. The web resource is planned to be publicly available, so that any party concerned by potential infringement of its trademark(s) can file objections within a three-month period. Currently, the Russian trademark database stays closed to the general public.

The RUPTO’s official has noted that this novel will help to reduce unnecessary time losses associated with the trademark registration procedure in Russia. Currently, examination of each application takes up to one year thus being totally unacceptable considering the modern business needs. Another way to shorten the overall duration of the procedure is to reduce the number of actions taken by the Office, including its information search-related activities, said Dmitry Travnikov. At the same time, the novel would help to further minimize examination arbitrariness and subjective judgments.

Among other checks, the RUPRO‘s examiner assesses the trademark for deceptive similarity to existing trademarks based on official methodological approaches, and makes a judgement on whether a consumer can confuse goods sold under these trademarks. The proposed trademark opposition procedure would allow a third-party rightsholder to file an objection against the registration of the trademark in question, if it finds that the mark is deceptively similar. ‘Thus, trademark infringement matters could be effectively regulated by the market members themselves’, added Travnikov.

A flip side to this novel is that businesses will have to constantly monitor all trademark applications filed with the Russian Patent and Trademark Office.

The public debate on this initiative is over, but, according to Dmitry Travnikov, any third party is welcome to share its opinion. A draft version of the bill and contacts for feedback are available at the RUPTO’s official website (in Russian): http://www.rupto.ru/search/c0c39d1c-392f-11e6-1806-9c8e9921fb2c.

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