Trademark squatting

TRADEMARK SQUATTING.

Trademark squatting, it is one of the problems which foreign companies are faced at on the Russian market. Unfortunately, the current law is not sophisticated enough to prevent this. The practice has become a serious problem for companies seeking to do business in Russia. Once they enter to the market, they often get to learn that their marks are already registered on the territory of the Russian Federation by other Russian legal entities or businessmen.

The matter is the protection to a Trade Mark is granted only against a state trademark registration. In order to register a Trade Mark – an application should be filed with the Russian patent office. So, there are a number of cases when Russian trademark squatters file applications for the marks which are identical to the trademarks of foreign companies as soon as they get information about the intention of these companies to start business in the Russian Federation. Then, the squatters offer these companies to buy their own marks. And the prices are something about $500 000 at average.

Another way of trademark squatter’s activity is the registering of a similar mark, I mean a mark which is similar to a Trade Mark of a foreign company. Of course, you can file a law suit against such a squatter. But it is very difficult to prove his action as an unfair competition, especially in the case when the mark is similar to your Trade Mark (Trade Mark of your company).

Many foreign companies such as Forbes, KODAK and Audi could tell their own stories of trademark squatting. Here is one bright example about Starbucks. This company was itching to open up some stores in Russia in the early 2000s. But it couldn’t do so under its famous brand name because a Russian trademark squatter had registered the company’s Trade Mark in Russia. Then, he offered to give up the trademark registration if Starbucks paid him $600,000.  It took Starbucks more than three years to cancel the registration and win back the rights to its Trade Mark. The company incurred significant legal expenses, but the biggest cost for Starbucks was that it had to delay its entry into the Russian market. The company opened its first store in Russia only in 2007.  Another fresh example (2012- 2013 years)  of trademark squatting. A well-known trademark “ Galaxy”  of the company Galaxy Samsung is already registered by a Russian company “Simbirsk-Kroun” with respect to the same goods as the company Galaxy Samsung produces. This Russian Trade Mark registration does not allow the Samsung company to enter in the Russian market under its Trade Mark. The a cease-and-desist letter to stop using the mark “Galaxy” was forwarded to the Samsung company from the mentioned Russian company.    

COUNTERFEITING GOODS. A Russian Interior Ministry investigation has estimated that up to a third of everything sold to consumers in Russia is a counterfeit.  The fakes don’t end at handbags and running shoes, but extend to chemicals and pharmaceutical products, medicines and food. Once, after you have been already selling your goods on the Russian market, you will be surprised to reveal that some of your goods are also coming from China, Kazakhstan, Ukraine or other countries. The most part of counterfeit goods comes to Russia from these countries. So, I’d like to suggest foreign companies, as a remedy against import of the counterfeit goods, to insert its Trade Marks into the list of Intellectual property objects of the Russian Customs. What does it mean? You company applies to the Russian Customs with a statement to stop goods marked with you Trade Mark coming from other countries, but your mark must be registered as a Trade Mark on the territory of the Russian Federation.   

REISTRATION OF A TRADEMARK. Obtaining the protection to your Trade Mark on the territory of the Russian Federation. A Trade Mark is a sign which can distinguish the goods and services of one trader from those of another. A sign includes, for example, words, logos, pictures or a combination of these.  Basically, a Trade Mark is a badge of origin, used so that customers can recognize the product of a particular trader. Trade Mark can be a word, a logo, a name, a slogan, a combination of colors, a packaging, a sound and a combinations of thereof.

To be registrable your Trade Mark must be:

a.         Distinctive for the goods or services which you are applying to register it for,    And

b.         Not deceptive, or contrary to law or morality, And

c.         Not similar or identical to any earlier marks for the same or similar goods and services.

You may be wondering why should my (our) company register the Trade Mark? The answer is simple: a valid trademark registration significantly improves your business to protect and enforce your brand. It is also critical to protecting the good will of your company. A valid trademark registration provides additional legal right that strengthens your Trade Mark. Once your company enters the Russian market I, as a patent attorney, advise you immediately to register a Trade Mark of your company or to file a trademark application with the Federal service on Intellectual Property of the Russian Federation (ROSPATENT).   According to the Paris Convention for the Protection of Industrial Property : “The conditions for the filing and registration of Trade Marks shall be determined in each country of the Union (Union of countries –members of Paris Convention) by its domestic legislation.”      

© Irina Kvasova, 2011–2012 years © Авторские права на статью защищены, 2011- 2012 гг.              

The  Intellectual Property Court  was established in the Russain Federation by the Federal constitutional law in 2011. On September 23, 2013 the Intellectual Property Court was officially open in Moscow. It is a court of first instance and it has competence in the following cases: – cases regarding the grant of the protection for results of intellectual property and the means of individualization of legal persons, goods and services; – cases on determination of a trademark holder or patent holder; – cases regarding infringement of the exclusive rights of a trademark holder or a patent holder; – cases regarding infringement of copyright; and some other cases.

INTERNATIONAL  EXHIBITION   “WORLDFOOD-2013” in Moscow from September 16 till 19.

–      Should  I  register my mark on the territory of the Russian Federation?

It was a question from a representative of one foreign company,

a participant of the International Exhibition.

–      Yes, the registration of the Trade Mark is required to establish rights in a mark in Russia.

 

According to the Russian Law :

  1. You  cannot  establish  the  exclusive  right   in  your  mark  based only on legitimate  use  of  the  mark  in  Russia.
  2. You  have  to register  your  mark  with  the  Federal  Services  on Intellectual  Property.

–      Can  I  file by myself an application to register  my Trade Mark with the Federal Services on Intellectual Property ?

–      No, you  have  to  engage  a  Russian  patent  attorney to  register your mark. According to the Rules for filing an application to register a Trade Mark any foreign individuals or company should to appoint a representative that is a Russian patent attorney. To obtain a patent on your invention or industrial design a foreign company should engage a Russian  patent  attorney.

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