Getting the Trademark recognized as a well-known

Under the rules of the Russian Federation on the recognition of a trademark as well known, a trademark can be recognized as well known if it has acquired a general notoriety to a substantial segment of the public, has gained recognition through its active use and is also known to propietors on the Russian market in its areas of trade.

The authorized agency for acknowledgement of the trademark as well-known, is the Federal Service for Intellectual Property (Rospatent).

The statutory acts under which the mark is recognized as well-known are the Articles 1508, 1509 of the Civil Code of the Russian Federation.

A trademark can also be recognized as well-known under the decision of the court.

Application for recognition of a trademark as well-known

The basis for recognition of a trademark as well-known is an Application filed by an interested individual or juridical person.

Evidences certifying a trademark as well-known

These include documents which can confirm:

• Intensive use;
• The extent of well-knownness;
• The duration and geographical extent of the use of the trademark globally;
• Promotional details of the trademark, including advertising, exhibitions of goods (services) for which the trade mark is applied;
• Costs for advertising of the trademark (annual financial reports);
• Any registrations or applications on registration, indicating the use or recognition of the trade mark;
• Successful exercise of rights to the trademark in other contracting parties of the Paris Convention;
• The cost (value) of the trademark;
• Surveys from relevant customers’ circles, actual consumers of the goods for which the trade mark is applied;
• Results of marketing surveys, indicating the share of the company on the market;
• Recognition of the trademark as well-known in other countries;
• Value of the trademark as an intangible asset;
• Other evidences which could support the recognition of the trade mark as well-known.

A trademark cannot be recognized as well-known if they become well-known after the priority date of an identical or confusingly similar trademark, registered for similar goods and owned by other parties.

The legal protection of a well-known trade-mark

Granting right protection to a well-known trademark means the recognition of the exclusive right to the well-known trademark.

The legal protection of the well-known trademark covers also the goods non-homogenous to those in which regard the trademark was recognized as well-known. If the use of the trademark by other parties is associated among relevant circles of consumers of the well-known trademark, this can infringe the lawful interests of the owner of said well-known trademark.

Decision on recognition of the trademark as well-known

Upon review of the application, Rospatent decides to recognize the trademark as well known, or issues a decision to refuse such recognition.

Recordal in the State Register of well-known trademarks in Russia

In case of a positive result, the information on the trademark being recognized as well-known shall be recorded in the State register of well-known trademarks in Russia.

The certificate of the registration of a well-known trademark is issued within a month from the date of its recordal in the register.

Publication of information on the well-known trademark

Information on the trademark recognized as well-known under the decision of Rospatent, shall be published in the official Bulletin.