Legal Protection of a Trademark of a Foreign Legal Entity in the Russian Federation
The Russian Federation is a signatory to the Paris Convention On Protection of Industrial Property. Pursuant to Art. 6 of the Paris Convention, a trademark properly registered in any country of the Industrial Property Protection Union (including member-states of the Convention) is regarded as independent from trademarks registered in other countries of the Union, including its country of origin. The patents which have been applied for registration in different countries of the Union are also independent of the patents taken out for the same invention in other countries, no matter whether the latter are members of the Union or not (Art. 4 bis of the Convention).
Every trademark properly registered in a country of origin may be applied for registration in other countries of the Union and is protected there as it is (Art. 6 guinguies of the Convention). Terms of application for and registration of trademarks are governed in each country of the Union by its national law.
Art. 2 of the Law of RF On Trademarks, Service Marks, and Names of Goods' Places of Origin, establishing that the legal protection of a trademark in the RF is provided on the basis of its statutory registration following the procedure set forth therein or by virtue of international treaties of the RF, corresponds to the international treaty.
The trademarks protected in the territory of the RF without registration by virtue of international treaties of the RF comprise international trademarks registered in compliance with the Madrid Agreement On International Marks Registration of 1891, whereof Russia is a member, too.
The Madrid Agreement provides that the countries covered thereby constitute the Special Union for international registration of marks. Citizens of a country - signatory to the Agreement may secure in all other signatories to this Agreement protection of their marks applicable to goods or services and registered in the country of origin by application for these marks to the International Bureau of Intellectual Property organized pursuant to the Convention of 1967 establishing the World Intellectual Property Organization. As soon as a trademark is registered with the International Bureau, it is protected in each country - signatory of the Madrid Agreement as if it were applied for directly there.
Thus, registration of a trademark pursuant to laws of any Union member does not imply per se its legal protection in the territory of the RF without its registration pursuant to Russian laws. The registration of a trademark in a member-state of the Union may only give ground for rejection or invalidation of the registration and result in prohibition to use the trademark which is a reproduction, imitation, or interpretation of another mark since it may cause confusion with the trademark which, according to a competent body of the country of registration or a designated country, is already well-known there as the mark of an entity enjoying privileges pursuant to the Paris Convention and is used for identical or similar products. This provision is also applicable to those cases when an essential element of a mark is a reproduction of such well- known mark or an imitation capable which may cause confusion with the latter. (Art. 6 bis of the Convention).
The Rules of Recognition of a Trademark as Well-Known in the Russian Federation approved by the Decree of the Russian Agency for Patents and Trademarks (Rospatent) dated 17.03.2000, No.38, set forth grounds for recognition of a trademark or a service mark (hereinafter - "the trademark") as well-known. A well-known trademark is a trademark protected in the territory of the RF on the basis of the statutory registration, a trademark protected in the territory of the RF without registration by virtue of an international treaty of the RF, as well as any denomination used as a trademark but having no legal protection in the territory of the RF, which as a result of the intense use have become well-known in the RF among respective groups of population with respect to the products of a certain manufacturer.
With due regard for the foregoing, in view to protection of a trademark against unlawful use which may be done through registration in the territory of the RF of the trademark belonging to a foreign legal entity by another person, the trademark should be registered following the procedure established by current laws of the RF.
Pursuant to para. 2, Art. 8 of the Law of RF On Trademarks, Service Marks, and Names of Goods' Places of Origin foreign legal entities or natural persons residing permanently outside the RF or their patent attorneys should conduct affairs related to trademarks registration through patent attorneys registered with the Patent Department of RF. A patent attorney's authorities are certified by a power of attorney issued by an applicant.
As to other matters connected with trademarks registration, foreign legal entities and natural persons exercise the rights and bear responsibilities provided for by the Law of RF On Trademarks, Service Marks, and Names of Goods' Places of Origin same as Russian legal entities and natural persons.
After registration of a trademark the right to use it may be assigned pursuant to Art. 26 of the Law by the trademark's owner (a licenser) to another person (a licensee) under a license agreement. The license agreement should stipulate that the licensee's goods quality will not be poorer than that of the licenser's goods, and that the licenser will exercise control over compliance with such condition. Besides, the license agreement should be registered by the department which has registered the trademark (service mark). The body effecting registration of trademarks and, accordingly, license agreements, as well as trademark assignment agreements is the Russian Agency for Patents and Trademarks (Rospatent).