Changes to Russian trademark legislation 1

On 25 October 2002 the Russian Parliament passed in the second reading a new law On Introducing Amendments (the "Amendments") to the Law on Trademarks, Service Marks and Names of Origin of Goods (the "Trademark Law"). The Amendments reflect the practices of the Russian PTO and the courts in handling the "grey" areas of the law, the most important of which are cybersquatting and the dilution of famous trademarks.

Overall, the Amendments make the law more favourable to trademark holders. They are also designed to make the process of trademark registration and examination simpler as well as to improve enforcement measures against trademark infringement.

The Amendments provide that the exclusive rights of a trademark holder include the right to bar registration of identical and/ or confusingly similar domain names. Such provisions were lacking in the law and led to many cybersquatting cases involving such companies as Kodak, Coca-Cola, Nivea, and Quelle. Although the new provisions are designed to battle cybersquatting, they need to be further clarified to avoid unjustified pressure being put on good faith domain name holders as well as "reverse domain name hijacking".

Another area in Russian trademark law that was underdeveloped was the concept of a "famous trademark", i.e. a trademark which has become famous among consumers and is strongly associated with a particular product or a producer through its intensive use in commerce. Famous trademarks may be protected in Russia either through their registration with the Russian PTO or without such registration in accordance with international treaties and bilateral agreements to which Russia is a party. Prior to the Amendments, "famous trademarks" were considered famous only in respect of a particular class of goods and/or services. This led directly to their dilution by trademark pirates who were able to register identical trademarks in respect of non-crossing similar goods and/or services. The Amendments introduce the concept of trademark dilution and stipulate that designations identical to famous registered trademarks may not be registered at all. This should be the case if the use of the identical designation would lead to the association of the designation with the famous trademark holder and such association may harm the reputation of the latter. Note that the stipulation is expressed in such a way as to be applicable irrespective of the type of goods and/or services which the pirates apply for. Non-identical but confusingly similar designations, however, may be registered for crossing goods and/or services subject to consent by the famous trademark holder.

Although this is a significant development, further clarification is required to avoid uncertainty and bias in its application. For example, in identifying dilution it would be reasonable to use such factors as the degree of distinctiveness of a famous trademark, the geography of its use, the degree of its recognition, and the presence of "bad faith" by the infringing party.

The Amendments must pass the third reading in the Duma, may be subject to examination by the Federation Council and then signed by the President before taking effect.

For further information please contact David Griston at [email protected] or on 00 7 095 2585000.