Early trademark termination in Russia: procedure and features

Every trademark right-holder must understand that in addition to the privileges and opportunities that exclusive rights to his sign provide, there are also certain obligations for its use, in case of non-fulfillment of which, it is possible to lose the rights to it.
According to the Russian legislation it’s possible to terminate legal protection for an unused trademark. This procedure is regulated by Art. 1486 of the Civil Code of the Russian Federation. Thus, if the mark is not used continuously for three years from the moment of its registration, any person of interest may file a claim and initiate a cancellation action of trademark registration based of its non-use.
It should also be noted that early trademark termination can be either applied to all goods and/or services for which it was registered or just for their part.

Person of interest. The features of the claim.

It’s important to note that the legislation restricted the circle of people who are entitled to file   a claim for early termination of trademark protection. For example a person who may file such a claim can be:
  • A legal person or an individual entrepreneur.
  • A person who intends to use a disputed sign for the production of goods or services in the same classes.
  • The right-holder of the sign, which is identical or similar to the point of confusion in the same classes.
  • The right-holder of exclusive rights to a similar or identical trademark registered in the territory of foreign countries (for the same classes) who intends to use the designation in the Russian Federation.
It should be noted that just the fact of filing national application of an identical or similar trademark is not in itself a proof of the person's interest, since any person has the right to file such a claim.

Procedure for early trademark termination

The process of early trademark termination has two stages of conflict resolution. First stage is the pre-trial dispute settlement, and the second one is the court proceedings. Let's review both procedures and their features in more detail.

Pre-trial dispute settlement.

First of all, the person of interest sends the offer to the right-holder not earlier than 3 years after the state registration of the trademark in which it can ask for 2 things:
  1. To file a motion to the Russian patent office for renunciation of registered trademark.
  2. To sign an agreement on the assignment of the exclusive rights to the trademark.
If, after the expiry of the 2-month period, the right-holder has not taken the appropriate actions, an interested person has the right to initiate the court proceeding in respect of an early termination of the protection of the disputed mark in the 30-day period. In addition, an interested person may send another offer (C&D letter) to the right holder of the trademark within 3 months from the date of sending the previous one.

Court proceedings.

As mentioned above, the person’s of interest claim for early termination of trademark protection is filed to the Court of Intellectual Rights, and according to legislative norms, the right-holder bears the burden of proof and must provide the evidence of proper trademark use or evidence of non-use due to circumstances beyond its control.
It should also be noted that the continuous three-year period of non-use of the trademark is counted from the moment of filing of the claim for early termination.
​Let's give an example:
The filing date of the claim is 20.09.2017
The date of state trademark registration – 15.02.2010
The period for which the trademark owner is obliged to provide the evidence of its trademark use is from 20.09.2014 to 20.09.2017.

​Proof of the use of the trademark are the facts of its demonstration for the individualization of goods or services for which it was registered. For example: bills, certificates of conformity, promotional products, product samples, contracts of delivery or provision of services, invoices etc.
In addition, the use of a modified trademark is also allowed, but only if it does not affect its distinctive properties and does not change its essence.
​Proper use also includes:
  • the use of TM by another person, on the basis of a license;
  • use of TM by another person who acts as an agent of the right holder.
As for the evidence of trademark non-use due to reasons beyond its control, such acts as bankruptcy, unstable political or economic situation, force majeure, circumstances related to disruptions in the delivery of products etc. may be considered an appropriate piece of evidence to reinforce defendant’s position in the court.
​Summarizing the above, it is worth noting that the early termination of the trademark protection is not only the way to defend business entity's legitimate interests but also:
  • is a way to prevent the establishment of monopoly and unfair competition regarding trademarks and an instrument to combat "trolls";
  • performs the function of filtering the registry from unused trademarks.