In which cases can the corporate name be an obstacle for a trademark registration in Russia? This question was clarified by the Russian IP authorities (Rospatent) in their recent information report on this topic.
Rospatent reminded that Russian law recognises an exclusive right to a corporate name entered in the Russian company registry. But what is important for foreign businesses and often overlooked is that the corporate name of a legal entity registered in another state which is a party to the Paris Convention for the Protection of Industrial Property of 1883 is also subject to legal protection in Russia! This fact may have consequences also for a trademark registration.
In particular, under Russian law a corporate name identifies a commercial organization. It is to be determined in the incorporation documents and is included in the official registry upon registration of the entity. A corporate name shall contain an indication of its legal form and an actual name of the legal entity which may not consist only of words indicating the type of activity. The exclusive right to a corporate name arises on the day of registration and is terminated at the moment of excluding the name from the registry due to the dissolution of the company or a change of its corporate name.
When examining a designation for trademark registration it is required to clarify the following circumstances:
- the date when the exclusive right to a corporate name protected in Russia arises and the priority date of the trademark application
- if the exclusive right to the corporate name is still valid at the moment of the examination of the trademark application
- if the corporate name and the claimed designation are identical or similar and if it may lead to the likelihood of confusion (the designation being compared only with a distinctive part of the corporate name)
- if there is a similarity of goods and services in respect of which the legal protection of a designation is sought and the actual activities of the legal entity.
The registration of a trademark may be refused, if all the circumstances indicated below are present:
- the exclusive right to the corporate name arose earlier than the priority date of the claimed designation and it is in force at the time of the examination of the claimed designation;
- the actual use of the corporate name began before the priority date of the claimed designation;
- the designation is identical or confusingly similar to the distinguishing part of the corporate name;
- the goods/services in respect of which the registration of the designation is claimed (or their part) are similar to the types of activities in respect of which the corporate name is actually used.
See Information Report by Rospatent “On verification of compliance of designations claimed for registration as trademarks with the requirements of paragraph 8 (in respect of brand names and commercial designations) of Article 1483 of the Civil Code of the Russian Federation”.