You have put a lot of thought into the product or service you are selling in Russia, and a lot of that effort went into the name you chose to call it. Likewise, you selected a name for your company that is unique to you and represents your business in the manner you envisioned for success. For these reasons, when you register those names, Russian law prevents others from using the same names to sell similar products and services. When someone violates these regulations, you are protected by law.
Trademark vs. Service Mark: What Is the Difference?
In Russia, as in other parts of the world, trademarks and service marks are unique identifiers of products and services. But people are often confused about the difference between the two. A trademark is a word, phrase, symbol, or logo that is used to brand, identify and distinguish a product. For example, a famous company around the world is Chanel. Chanel is a registered trademark for a line of luxury products. On the other hand, a service mark is used to identify or distinguish a service. McDonald’s is an example of a registered service mark because, while McDonald’s does sell food products, they are primarily a restaurant service company. Depending on whether you sell a product—like shoes—or a service—like house cleaning—you will either have a registered trademark or a registered service mark. Either way, the protections afforded to you in Russia are the same.
Trademark and Service Mark Protections in Russia
U.S. and European trademarks and service marks are not protected by the Russian law without special registration. In order to obtain legal protection for your trademark or service mark in Russia, you must register the mark with Rospatent, the Russian Federal Service for Intellectual Property. If you have registered your mark in another jurisdiction, it may be protected by an international agreement to which the Russian Federation is a party. In this case the international application on protection of your intellectual property should be approved by Rospatent. The Russian application can be declined, if there is another registered right of another business entity using the same or similar mark.
Unlike the United States, Russia is a “first-to-file” jurisdiction. This means that the legal entity that registers a particular mark first will be granted the rights to it. In the U.S., rights go to the entity that first puts the mark to use in commerce (known as “first-to-use” jurisdiction). Although unregistered signs used as trademarks do not enjoy legal protection, if you can show extensive use of the mark prior to filing, you may be able to demonstrate the distinctiveness of the trade or service mark in order to be granted rights over another entity using the same or similar mark.
Terms of a Trade or Service Mark Registration
When you register your trade or service mark, you will have legal protection for ten years from the date of filing. You may renew for an additional ten years during the last year of the original ten-year period, but if you fail to do so and allow the registration to lapse, another party may file to have your rights to the mark terminated. It is important that you record any changes which might affect the registration, such as changes of name or address of the trademark owner, mergers, or other transactions as soon as possible.
Benefits of a Trade or Service Mark Registration
- You can easily prohibit another entity using the same or similar mark in Russia within the validity term of the mark and claim damages due to violation of your intellectual property rights.
- You can prevent your competitors from creating barriers for your company for entering CIS markets by using the benefits of “first-to-file” jurisdiction in Russia.
- You can prohibit trespassing of goods with the same or similar mark (including import, export, or transit operations) through the border of the Eurasian Economic Union by entering your registered trademark into the custom registry of trademarks.
Legal Protections for Company Names
From the moment you register your company as a legal entity, you are entitled to protection for your company name. Choosing a name for your company is an important step in company formation. In Russia, a legal company name consists of two parts: the distinctive name of the company and the indication of its legal structure, such as LLC (limited liability company) or JSC (joint stock company).
When registering your company, you will be prohibited from using a name that is identical or confusingly similar to the company name of another legal entity if both entities are engaged in similar business activities and the other company registered first. The owner of a company name is allowed to use its company name exclusively, and to prohibit others from its unauthorized use. If another company uses the company name of a registered legal entity, they will be obliged to stop using it at the request of the owner of the company name and to compensate for any losses caused.
A company name owner may use its company name or individual elements of the name as a part of its trademark or service mark. A company name incorporated in a trade or service mark is protected regardless of the protection of mark itself.
Consult Jus Privatum With Any Trademark Questions
Protecting the name and other graphic representations of your company is vital to the success of your business. Make sure you have filed all of the correct applications to protect your trademark, service mark, and company name by working with the corporate attorneys of Jus Privatum. We would be glad to assist you with pre-trial procedures and court claims against your competitors misusing your trademark, service mark, or your company name. Connect with us via the link on this page and we will contact you soon.