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After registering a business in Russia, an individual entrepreneur or participants of a Limited Liability Company (LLC) should move on to directly conducting business activities. At this stage, an important question arises: how to make brand recognizable and successful in the market, attracting as many consumers and clients as possible?
A key element in achieving these goals is registering your own trademark, which will become the business's calling card and ensure its broad recognition.
What is a trademark, and why should a business register one?
Registering a trademark gives a business the sole authority to use a particular symbol, such as a word or image, to distinguish its products or services. The form a trademark takes can vary, depending on how the company chooses to represent itself to its customers.
Generally, the most popular trademarks are combined ones (including both text and image), as they allow securing rights to the company's slogan and an eye-catching image, which will later be associated with the company by consumers. Trademarks can also include only text (verbal) or only an image (graphic), and some companies even register three-dimensional shapes, sounds, and scents.
Benefits of trademark registration:
- Legal protection: After a trademark is registered, it becomes legally protected, preventing others from using it without consequences. If a company discovers unauthorized use of its trademark, it can file a lawsuit and seek compensation, which may range from 10 000 to 5 million RUB or more. Without trademark registration, competitors could take advantage of the situation by using or even registering the same mark first, putting the business at risk and requiring legal proof of ownership;
- Business expansion opportunities: a registered trademark opens doors for market expansion through franchising and licensing. If another business or individual wants to use the trademark, the owner can issue a licensing agreement, maintaining their rights while allowing partners to benefit from an established brand. In franchising, the benefits are similar: other businesses use the trademark owner's brand entirely, while the owner earns revenue;
- Counterfeit prevention: trademark protection boosts consumer confidence, assuring buyers of the authenticity of the products they purchase. The registration process also includes a check for potential similarities with existing trademarks. If a conflict is found, adjustments can be made, reducing the risk of infringing on other brands' rights;
- Marketing tool: beyond legal safeguards, a registered trademark is a core part of a company’s brand identity. It appears across various platforms, from product packaging to internal documents, enhancing brand visibility and helping establish a distinctive corporate image.
Owners of a trademark in Russia.
The Russian state agency responsible for intellectual property registration, Rospatent, places few restrictions on those seeking to register a trademark in Russia. Both Russian residents and foreign individuals or legal entities can become trademark owners. However, foreign nationals and companies must use a Russian patent attorney to register their trademark, as the attorney will manage the registration process and all interactions with Rospatent on their behalf.
Who can be a trademark owner:
- Russian legal entities: both commercial organizations (LLCs, JSCs, etc.) and non-commercial ones that are entitled to engage in entrepreneurial activities;
- Russian individuals: granted this right starting from June 29, 2023;
- Self-employed individuals in Russia;
- Individual entrepreneurs in Russia;
- Foreign individuals and legal entities;
- Groups of persons: in certain situations, it may be necessary to register a trademark under the names of multiple individuals. This is possible through the registration of a collective trademark, which grants each of these individuals the right to use it. This approach is particularly useful in cases of joint ventures, where several companies collaborate and form agreements to use the same brand.
Trademark registration by a foreign citizen in Russia.
Prior to filing a trademark registration application, foreign applicants should take into account that over 860 000 trademarks are already registered in Russia.* Given the vast number of existing trademarks, it has become increasingly challenging for designers and business owners to create something that truly stands out from competitors. For this reason, conducting a thorough preliminary search for any trademarks that may resemble the one you plan to register is essential. Additionally, carefully selecting the appropriate classes of goods and services under the International Classification of Goods and Services (ICGS) is a crucial step in the process.
Preparation for registration includes:
- Utilizing open and closed trademark databases: last year, Rospatent introduced a user-friendly, free-access database for registered trademarks. While this database offers valuable insights, it doesn’t cover all registered trademarks, making it advisable to consult specialists such as Russian patent attorneys or experienced lawyers for a comprehensive search. Consult-Group’s experts can perform a thorough uniqueness check and provide a detailed visual report to ensure your trademark’s distinctiveness;
- Choosing the right ICGS classes and corresponding goods/services: to secure extensive legal protection for your trademark, it’s crucial to carefully select the classes under the International Classification of Goods and Services (ICGS) that apply to your business. Missing key aspects of your operations could leave gaps in your trademark protection. For instance, a software development company should consider both Class 09 (for computer program production) and Class 42 (for software development) to fully cover its activities. Trademark registration specialists can assist in identifying non-obvious categories that, if overlooked, might lead to legal challenges down the road.
FYI: the more ICGS classes you include in your trademark application, the higher the registration fees will be. However, the quantity of goods or services listed within a single class does not impact the overall fee.
Russian law requires foreign citizens and companies to hire a Russian patent attorney for trademark registration in Russia. Only through a licensed attorney can interactions with Rospatent be carried out, as they represent the foreign applicant during the process.
FYI: companies and citizens from CIS countries (e.g., Belarus, Kazakhstan) do not need to engage a patent attorney, as Russia has agreements with these states.
FYI: if a foreigner establishes a company in Russia or registers as an individual entrepreneur, the trademark registration process becomes easier, as the need for a Russian patent attorney is eliminated.
Once a representative is appointed, the trademark’s uniqueness is verified, and the appropriate ICGS classes are selected, the next step is to submit the registration application.
The application must include:
- A completed application form;
- An image of the trademark along with a detailed description: even if the trademark consists solely of text, an image is still required. It’s recommended to place the text on a white background to avoid inadvertently adding additional colors. For trademarks that include images (with or without text), a thorough description of even the smallest design elements is necessary for Rospatent experts to evaluate and successfully register the trademark;
- A power of attorney or another document authorising the representative;
- Proof of payment of the state fee: the fees can be paid before the application is submitted (with payment receipts attached) or within two months after submission. In practice, it’s better to pay promptly to prevent any delays in the application review process.
FYI: Rospatent allows trademark applications to be submitted in a foreign language only if accompanied by a notarized Russian translation. Otherwise, the application must be filled out entirely in Russian.
Once submitted, the application enters Rospatent’s review process, which involves two main stages: formal examination and substantive examination. During the formal examination, only the correctness of the documents and the payment of the initial two state fees are verified. The substantive examination, which takes more time, involves a detailed review to ensure the trademark does not infringe on third-party rights, does not closely resemble already registered trademarks, and meets all legal requirements under Russian law.
FYI: while the official maximum time for trademark registration in Russia is up to 18 months, in practice, the process usually takes around 8 months.
After passing both examinations, the trademark is registered, and Rospatent publishes the relevant information. A three-month period follows during which third parties may submit objections to the registration. If no objections are filed, Rospatent issues an electronic certificate of trademark registration (with the option to request a paper copy). The certificate is valid for 10 years and can be renewed indefinitely for additional 10-year periods.
FYI: under Russian law, a trademark must be actively used in commerce. If it is not used for three years after registration, any interested party may request the early termination of the trademark rights.
FYI: if a foreign company or individual already holds a registered trademark in their home country or another jurisdiction, they can transfer the rights to a Russian company through a licensing agreement. This arrangement allows the Russian company to legally use the brand within Russia in exchange for royalty payments.
* Based on information from the official website of the President of the Russian Federation – results of a meeting with members of the Government of the Russian Federation, 2023.
How will the conditions for trademark registration change at the end of 2024–2025?
In 2024, a draft law was introduced proposing amendments to the Regulation on patent and other fees, which will impact the trademark registration process. The draft has already gone through public discussions and independent reviews and is expected to be considered by the Russian Government soon, with its adoption likely in mid-autumn 2024.
Key changes in the draft law regarding trademarks:
- Increase in state fees: trademark registration fees will rise by 10–15%;
- Elimination of the 30% discount: the discount for submitting applications electronically via the State Services portal or Rospatent's "ARM-Registrar" system will be removed;
- Alterations to fee payment deadlines: currently, state fees can be paid within two months of receiving the payment notification. Under the new law, this deadline will be shortened to one month. Previously, if the main deadline was missed, applicants had an additional six-month window to pay with a 50% penalty. After the changes, this extension will be reduced to one month, and the penalty will double to 100% of the original fee.
Given the upcoming changes, we recommend considering trademark registration now to minimize the costs of this procedure.
