Russia Adopts Strict Position on Revocation Procedures for Non-Use of Trademarks

The Russian Chamber on Patent Disputes, an appeal body of the PTO, has recently adopted a strict position on trademark revocation procedures.

As of January 1, 2009, the Chamber began rejecting revocation requests that could not be substantiated.

Russia’s strict new practice was caused by the high number of revocation requests filed in bad faith, with the sole intention of blackmailing legitimate trademark holders, who may prefer to pay a certain amount of money rather than go through cumbersome proceedings to prove use.

Under the previous Russian Trademark Law, any person could file a request for trademark revocation if such a trademark had not been used for a continuous period of three years.

After the new Russian IP legislation came into force on January 1, 2008, only interested persons were allowed to file revocation requests. However, the law did not define “an interested person.”

As of today, there is still no clear definition of what constitutes sufficient interest to file a request for trademark revocation due to non-use.

Since there are no clear guidelines, it is recommended that parties requesting revocation prove that they produce and/or market the trademarked goods in Russia, or have a bona fide intention to do so.

This can be proved with invoices, customs declarations, advertising materials, marketing research, dealers and distributors contracts and any other documents evidencing that applicants’ goods and services have been, or are intended to be released into the Russian market.

In addition, it is recommended that those requesting revocation submit samples of product packaging, labeled with the trademark in question.

For more information, please contact Alissia Shchichka in our Brussels office.