On March 12, 2014 the Russian President signed Federal Law ¹ 35-FZ amending the Civil Code, including its Part IV, “Rights to the Results of Intellectual Activities and Means of Individualization”.
Part IV of the Civil Code is focused entirely on intellectual property and was brought into force in 2008. It represented the first attempt to fully consolidate all intellectual property laws in Russia. The new amendments are intended to refine Part IV after the first five years of judicial and practical consideration. The revisions will generally come into effect on October 1, 2014.
The amendments introduce several improvements with regards to the recordal of licenses and assignments, the publication of pending applications and the right to file opposition letters regarding pending trademark applications.
Recordal – As has always been the case, the recordal of assignment or license agreements is mandatory in order to give effect to the assignment or license.
The welcome amendments allow for the mere recordal of a Notice (fact) of assignment or license rather than the filing of the agreement itself. This will drastically simplify the process because the agreement will not have to be translated and filed. Nor will such agreements be scrutinized in regards to every detail, as has been the case in the past.
Under the new law, the recordal can be done in 1 of 3 ways:
As was previously the case, should the notice of assignment or license not be filed, then the assignment or license is void in Russia.
Appeals of examination decisions -the time limit to file an appeal of an examiner’s decision, for example the rejection of an application on absolute or relative grounds, has been changed from 3 months from date of receipt of the letter to 4 months from the date of issuance of the decision (clause 1, Article 1500). As before, this term, if it has expired, may be revived within a further period of 6 months (clause 1 article 1501).
Responsible body for appeals and objections - It is also worth mentioning that a request for review will be now be carried out by filing an objection with Rospatent (until now this was heard by the Chamber for patent disputes). The new procedure reflects an administrative reorganization and will not affect the overall prosecution and appeal process from a substantive point of view.
Also, pursuant to clause 1, Article 1513 of new amendments, Rospatent will be the exclusive body empowered to hear trademark cancellation requests premised upon allegations of unfair competition. Such proceedings had been previously considered by the Federal Antimonopoly Service at the first instance. This is seen to be an improvement because Rospatent is regarded as the more appropriate and skilled body to evaluate trademark-related matters
Material Dates: -the time at which evidence is assessed [Article 1512] - The new law will provide that relevant evidence to refute objections regarding an application, such as for instance, a registrability objection based on descriptiveness, is to be assessed as at the date the objection is filed. Until now, evidence was assessed as at the filing date of an application. A broader and more current timeframe for relevant evidence to be assessed will allow parties to collect more up to date evidence to traverse, for example, a descriptiveness objection on absolute grounds or a confusion objection on relative grounds.
Publication – newly filed and pending trademark applications will now be published in Rospatent’s Official Bulletin. This change will promote transparency and will allow brand owners to more easily identify applications for potentially confusing marks. Previously it was not possible to easily monitor new applications.
Objections – not only will it be easier to track newly filed applications, it will also be possible to deliver a letter of protest to the examiner. After publication of a trademark application in the Official Bulletin any party will have the right to file an objection letter in respect of the pending application. Such a letter could, for example, submit that the proposed mark is descriptive, or that it is confusing with a senior mark (paragraph 3, clause 1, Article 1493).
Objection letters that are submitted will be directed to the appropriate examiner who will be required to take the submissions into account in the course of examination (last paragraph clause 1, Article 1499). Although this procedure was permitted informally in the past, the new procedure is officially sanctioned.
Clause 2, Article 1503 of the new law introduces a welcome new provision associated with pending applications when objections have been raised by an examiner such as likelihood of confusion with a senior registered mark. Under the past practice, in the case where a previously registered mark was cited in prosecution of an application for registration the pending application would go abandoned even if the applicant was taking steps to cancel the mark for non-use or on other grounds. Under the new amendments, it will be possible for an applicant to suspend its pending trademark application while it proceeds in another forum to cancel a cited mark. The exact procedure for doing so has not yet been specified.
There are also several administrative improvements under Articles 1492, 1493, 1496, 1497, 1502, 1503:
Divisionals - pursuant to clause 2, Article 1502, a divisional application may be filed not only during examination of a trademark application (as before) but also after filing and consideration of an appeal to a decision of refusal / partial decision of registration, if the rejection was based on the existence of earlier rights to the trademark and pending applications.
Supplemental documents – the current 2 month period to file supplemental documents which runs from the date of receipt of an Office Letter will be extended to 3 months from the date of issuance of the request by Rospatent (clause 4, Article 1497).
Identical marks – According to clause 3, Article 1496, if applications for identical trademarks have been filed by different applicants with the same priority date, those applicants will be permitted to inform Rospatent of their agreement in respect of such applications within seven months (currently – six months) from the date of issue of respective notification by Rospatent (currently – from the date of receipt of respective notification from Rospatent).
Grounds for refusal of registration of trademarks - these amendments are mostly concentrated on refining or confirming past practice.
Status of cited marks: trademarks will not be registrable if they are identical or confusingly similar to pending trademark applications of others having earlier priority in relation to homogeneous goods, unless those earlier trademark applications have been withdrawn or have been deemed withdrawn or rejected. Previously there was no express affirmation that one could overcome a confusion objection if the cited mark had been itself refused (i.e. there was a decision of refusal);
Consents: paragraph 5, clause 6, of Article 1483 codifies the existing practice that allows for “consents” to registration of marks otherwise deemed to be confusingly similar to a registered trademark provided that the registration of the junior mark will not mislead consumers. The consent of the senior right holder, once given, cannot be withdrawn;
Confusingly similar elements: Under the new version of clause 10, Article 1483 of the amendments, a trademark cannot be registered if “it’s elements” are identical or confusingly similar to the trademark or trade name rights (means of individualisation) of other parties, or to similar designations, in addition to other objects specified in clause 9 (such as a famous name, character or a quotation of a copyrighted or a scientific work, copyrighted works, industrial designs and others). Previously there was no express affirmation regarding identity/similarity of the elements of a trademark with the earlier rights to similar means of individualisation.
Renewal date for divisionals – this amendment confirms that, for divisional applications, the renewal period is 10 years from the filing date of the initial application date.