Protecting Brands in the Current Russian Environment

Reports that IP rights have been suspended in total or that infringers and pirates have free reign to ignore IP rights have been, thankfully, overstated, but there is still good reason or worry about protection of IP in general and brands in specific.

Recent changes in Russian IP rules have included elimination of compensation for compulsory licensing of patents for rights holders associated with "unfriendly" countries and the possibility for the Russian government to designate certain goods or groups of goods from IP protection during 2022. While these new rules give the Russian government unprecedented authority to act against IP rights, to date, no such actions have been taken.

Further, there has been one case, where a Russian court declined to enforce IP rights simply because the rights owner was from an "unfriendly" jurisdiction. While this case may have seemed politically motivated in violation of law, we cannot yet say that this is an indicator of a trend in court or administrative practice.

Battening Down the Hatches – Prepare for Stormy Weather

We can expect a challenging environment for IP rights protection. Aside from changes to the rules and possible government actions, we expect local pirates, infringers and trolls to become more active. Because of this, it is all the more important to take active measures to assess and address risks to brand portfolios.

There are several actions we suggest in this regard.

Registration

Russia is a first to register jurisdiction. In nearly all cases (there are some narrow exceptions for especially famous trademarks and for other special situations), trademark protection is granted only upon registration – actual use will not provide legal protection in nearly all cases.

This means that if you have a brand or mark you have been using or intend to use in Russia, it is important to initiate a registration application right away. Trolls are waiting to take up valuable brands and marks and the best defense is a good offense – beat them to the punch and file the application!

Monitor and Quick Response

It is important to monitor the market for infringement and similar marks and to watch the trademark office for applications and registrations of objectionable marks.

As the economic situation in Russia tightens, we expect increased activity in infringement and attempts to register questionable marks. It will become only more difficult to enforce rights as time goes by, so it is important to identify problems and take swift actions.

Having your business team and lawyers monitor the market and trademark office is a good start, and use of a monitoring system will help with on-going exposure.

Avoid Non-Use Cancellation

Russian trademark law allows for a third party to file a full or partial cancellation of a registered trademark based upon non-use of the trademark for a period of three years. This can apply to the entire mark or to any of the classes of goods or services associated with the mark. Moreover, it is very difficult, if not impossible to cure the non-use once a cancellation action is initiated. Therefore, it is important to assess and address any non-use cancellation risks before trouble appears.

Summary

Protection of IP rights will be increasingly difficult in Russia and it is important to prepare now. We are ready to help with any aspect of this.