A Latin American brand on the Russian market: registering the mark and stopping copycats

What is happening

A Brazilian cosmetics manufacturer is entering the Russian market through a distributor. The mark is registered only in Brazil, and the distributor offers to register it in Russia in its own name to save time.

An Argentine winery has learned that a similar name is already being used in Russia for another wine. It needs to find out whether that company holds a registration and what can be done.

A Chilean company is seeking protection for its mark in several countries at once, including Russia, and is choosing between a national application to Rospatent and an international registration.

What the law says

• A trademark serves to distinguish goods and services; an exclusive right is recognised in a registered mark and is evidenced by a certificate (Article 1477 of the Civil Code).
• In Russia, protection extends to trademarks registered by the federal intellectual property authority (Rospatent) and in cases provided for by an international treaty of the Russian Federation (Article 1479 of the Civil Code). Registration in the country of origin does not in itself give protection in Russia.
• The owner may use the mark and prohibit others from using it. Without the owner's consent, signs confusingly similar to the mark may not be used for similar goods and services where this creates a likelihood of confusion (Article 1484 of the Civil Code).
• Russia is part of the Madrid System for the international registration of marks, so protection in Russia can also be obtained through an international registration designating Russia. Whether this route is open to a particular applicant depends on whether its own country participates.
• A representative's authority is confirmed by a power of attorney (Article 185 of the Civil Code). Where foreign-language documents must be filed with a certified translation, a notary certifies the accuracy of the translation or the translator's signature (Article 81 of the Fundamentals of Russian Legislation on Notaries No. 4462-1 of 11 February 1993).

What we do

• We run a clearance search in Russia for registered and pending marks identical or similar to yours for your goods and services.
• We determine the classes and draft the specification of goods and services to cover your actual products and expansion plans.
• We choose the route, a national application to Rospatent or an international registration designating Russia, and prepare the documents, working with a patent attorney where needed.
• We follow the examination and prepare responses to examiners' requests and notices.
• We secure your rights in the distribution agreement: who owns the mark, on what terms the partner uses it and what happens on termination; the partner is prohibited from registering the mark itself.
• If a similar sign is already used or registered, we assess your position and propose next steps: negotiation, a cease-and-desist letter, a challenge to the registration, a lawsuit.
• We arrange translation of documents into Russian and its notarial certification; documents in Portuguese are translated with the help of a translator.

What we will need from you

• A representation of the mark and details of its registrations in other countries.
• The goods and services for which the mark is or will be used in Russia.
• Owner details: an extract from the commercial register and a power of attorney for the representative.
• Existing agreements with Russian partners and information on any similar signs you have found.