In general, it is not recommended to use a trade mark in Russia before filing an application. The possibility of having your trade mark pirated is too great, even though Russian law has built defences against the pirates. This does not concern non-distinctive designations: they are pirate-proof for obvious reasons. As time goes by the designation becomes recognizable and filing of a trade mark application advisable. The trade mark has acquired distinctiveness through use

The Paris Convention contains for such purposes Article 6 quinquines which suggests considering all factual circumstances of use, especially the length of time during which a trade mark has been used. The relevant clause in the Russian Trade Mark Law appeared only in 2002 and was transferred to Part IV of the Civil Code. The relevant Article (1483.1.4) forbids registration of non-distinctive designations but makes an exception for designations that acquired distinctiveness through use.

It is worth noting that neither the Paris Convention nor (in our case) any authoritative source in Russia mention that the territory of use should be limited by the territory of the country where protection is sought. Nor is there any mention of the required duration of use. Moreover, Article 6 quinquines sets forth that every trade mark registered in a home country may be applied for and be protected as is, that is the principle telle quelle is declared. It is nowhere mentioned that the use should be made on the territory where protection is sought and before filing the application.

If there is no conflict with a senior right or otherwise the applicant may demand application of the special Article 6 quinquines provision. Unfortunately the Chamber of Patent Disputes refused to answer an opposition filed by Industria Licorera de Caldas against refusal to register the trade mark Ron Viejo de Caldas.

The February 2008 issue of Managing IP examined this case and can be seen for details. We are not aware whether the case was brought to the court though several months have gone by. Cases such as this are not very rare and it would be interesting if a precedent were created.

Vladimir Biriulin

Gorodissky & Partners
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