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TRADEMARKS IN RUSSIA
Requirements for national filing
A trademark application may be filed IMMEDIATELY upon receipt of the following
information VIA FAX or e-mail:
- name and address of the applicant
- mark (word or image)
- list of goods and services
Other documents:
- power of attorney (simply signed) may be presented within two months from
the filing date .
- priority document, if any, can be submitted in three months from the
filing date
Time period
An estimate time for the completion of a registration is about two years.
The term of registration is 10 years, renewal - for 10 years.
In case of a Provisional Refuse issued in Belarus in respect of an International
Trademark Registration under the
Madrid Agreement and/or Protocol we can file an objection in presence of
the following documents
- Power of attorney (simply signed) (may be send by fax then by mail)
- Provisional refuse as issued by a national office
As we have our own databases of the trademarks registered in Belarus, and
also of the international trademarks extended to our country, so we can conduct
identity and similarity searches prior to filing new trademark applications and
provide our opinion together with an advice of guidance on registerability of
marks. We can also watch trademarks for non-infringement, renewal dates, etc.
Registrations of well-known marks and geographical indications are
now available in Belarus under special rules. |
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LAW OF THE RUSSIAN FEDERATION
On Trademarks, Service Marks and Appellations of Origin of Goods
No. 3520-1
of September 23, 1992
with changes and amendments introduced by the Federal Law # 166-FL on December 11, 2002, and entering into force on December 27, 2002
Article 1. Trademark and Service Mark
Article 2. Legal Protection of Trademark
Article 3. Trademark Certificate
Article 4. Exclusive Right to Trademark
Article 5. Kinds of Trademarks
Article 6. Statutory Grounds for Rejection of Registration
Article 7. Other Grounds for Rejection of Registration
Article 8. Application for Registration of Trademark
Article 9. Priority of Trademark
Article 10. Examination of Application for Trademark
Article 11. Formal Examination
Article 12. Examination of Sign
Article 13. Appeal against Decision on Application and Extension of Time Limits
Article 14. Registration of Trademark
Article 15. Issuance of Trademark Certificate
Article 16. Registration Period
Article 17. Entering Changes in Registration
Article 18. Publication of Information about Registration
Article 19. Registration of Trademark Abroad
Article 191. Well-known Trademark
Article 192. Granting Legal Protection to Well-known Trademark
Article 20. Right to Collective Mark
Article 21. Registration of Collective Mark
Article 22. Use of Trademark and Consequences of Its Nonuse
Article 23. Exhaustion of Rights Based on Trademark Registration
Article 24. Precautionary Marking
Article 25. Transfer of Exclusive Right to Trademark (assignment of trademark)
Article 26. License for Use of Trademark
Article 27. Registration of Contract of Assignment of Trademark and of License
Contract
Article 28. Contesting and Holding Registration of Trademark Invalid
Article 29. Termination of Legal Protection for Trademark
Article 30. Appellation of Origin of Goods
Article 31. Origin of Legal Protection
Article 32. Application for Registration and Grant of the Right to Use an
Appellation of Origin
Article 33. Examination of Application
Article 34. Appeal against Decision on Application and Extension of Time Limits
Article 35. Registration of Appellation of Origin and Issuance of Certificate
Attesting the Right to Use Appellation of Origin
Article 36. Validity Period of Certificate
Article 37. Changes in the Register and Certificate
Article 38. Publication of Information About Registration and Grant of the Right
to Use Appellation of Origin
Article 39. Registration of Appellation of Origin Abroad
Article 40. Use of Appellation of Origin
Article 41. Precautionary Marking
Article 42. Contestation of Grant of Legal Protection for Appellation of Origin,
Issuance of Certificate and Holding them Invalid
Article 421. Termination of Legal Protection for Appellation of Origin and
Validity of Certificate
Article 43. Federal Executive Authority on Intellectual Property
Article 431. Actions of Board on Patent Disputes
Article 44. Fees
Article 45. Hearing Disputes Related to Implementation of this Law
Article 46. Responsibility for Illegal Use of Trademark and Appellation of
Origin
Article 47. Rights of Foreign Legal Entities and Natural Persons
Article 48. International Treaties
Final and transition provisions set
forth by Articles 2 and 3 of The Federal law on December 11, 2002 # 166-FL "On
introducing changes and amendments into the law of The Russian Federation "On
trademarks, service marks and appellations of origin of the goods"
This Law shall govern the relations arising in connection with legal protection
and use of trademarks, service marks, and appellations of origin of goods.
A trademark and a service mark (hereinafter "trademark") are signs capable of
individualizing goods, active jobs or services (hereinafter "goods") of natural
persons or legal entities.
1. A trademark shall be legally protected in the Russian Federation on the basis
of its State registration (hereinafter "registration") effected through the
procedure set forth by this Law or by virtue of international treaties to which
the Russian Federation is a party.
2. The right to a trademark shall be protected by the Law.
3. A legal entity and a natural person engaged in business activities shall hold
an exclusive right to a trademark (right holder).
1. A Trademark Certificate shall be issued for a registered trademark.
2. The Certificate shall attest to the priority of the trademark, the exclusive
right to a trademark in respect of the goods listed in the certificate.
1. A right holder shall have the exclusive right to use and to prevent others
from using the trademark.
Nobody shall be allowed to use a trademark protected in the Russian Federation
without authorization by its holder.
2. The commercial use of a trademark or a confusingly similar sign on the
territory of the Russian Federation in respect of goods for which this trademark
has been registered, or similar goods shall be regarded as an infringement of
rights of the right holder (illegal use of a trademark), including the use of
the trademark or a confusingly similar sign:
on the goods, labels, packages, which are manufactured, offered for sale, sold,
displayed at exhibitions and fairs or used commercially on the territory of the
Russian Federation, or stored and (or) transported with this purpose, or
imported into the territory of the Russian Federation;
while performing jobs, providing services;
on documents introducing goods commercially;
while offering goods for sale;
in the Internet, particularly in the domain names and in other forms of
addressing.
The goods, labels, packages of these goods on which the trademark or a
confusingly similar sign are used shall be regarded as counterfeits.
1. Word, figurative, three-dimensional, or other signs or their combinations may
be registered as trademarks.
2. A trademark may be registered in any color or combination of colors.
1. Signs shall not be registered as trademarks if they do not have a
distinguishing capacity or consist only of the elements:
that are commonplace to designate of a certain kind;
that are generally adopted symbols and terms;
that point to the kind, quality, quantity, properties, application, value of
goods and the place and time of their manufacture or sale ;
that represent the configuration of goods which is determined exclusively or
mainly by the property of function of the goods.
The signs set forth in Subparagraphs 2, 3, 4 and 5 of this Paragraph may be
incorporated as non-protected elements in a trademark, provided they do not
prevail.
The provisions of this Paragraph shall not be applied to the signs that have
acquired a distinctive character as a result of their use.
2. Signs shall not be registered as trademarks by virtue of international
treaties to which the Russian Federation is a party, that consist only of the
elements representing State armorial bearings, flags or other State emblems,
abbreviated or full names of international intergovernmental organizations,
their armorial bearings, flags and other emblems, official signs and hall-marks
of control and warranty, seals, awards and other distinguishing signs or signs
confusingly similar to them. Such signs may be incorporated as non-protected
elements, in a trademark, provided the consent of an appropriate authority is
available.
3. The following signs will not be registered as trademarks or their elements:
that are misleading or capable of confusing consumers in respect of a good or
its manufacturer;
that are contrary to public interests, principles of humanity or morals.
4. The signs identical or confusingly similar to official names and images of
particularly valuable objects of cultural heritage of the peoples of the Russian
Federation or of the world cultural or natural heritage, or also to the images
of cultural values stored in collections and funds shall not be registered as
trademarks provided such registration is requested for persons who are not their
proprietors (owners), and who do not have the consent of the proprietors or
persons, authorized by them, to register such signs as trademarks.
5. By virtue of international treaties to which the Russian Federation is a
party, signs shall not be registered as trademarks on the territory of the
Russian Federation that represent or incorporate the elements that are protected
in one of the States-parties to that treaty in the capacity of the signs,
identifying wines or alcoholic beverages, originating from its territory (produced
within the geographic boundaries of that State), and possessing individual
quality, name and other properties that are mainly determined by their origin,
provided the trademark shall be used for identifying wines or alcoholic
beverages that are not produced on the given geographic territory.
1. The following signs shall not be registered as trademarks if they are
identical or confusingly similar to:
trademarks of other persons, applied for registration (provided applications for
them have not been recalled) or protected in the Russian Federation by virtue of
international treaties to which the Russian Federation is a party, in respect of
similar goods with an earlier priority;
trademarks of other persons, recognized as famous by the Law of the Russian
Federation in respect to similar goods.
Registration of the sign as a trademark in respect to similar goods, confusingly
similar to the trademark, mentioned in Subparagraph 2 and 3 of this Paragraph
shall be allowed only with the consent of the right holder.
2. The signs, identical or confusingly similar to appellations of origin of
goods, protected under the Law, except for the cases where these signs are
incorporated as non-protected elements into trademarks, registered in the name
of persons having the right to use such appellations, shall not be registered as
trademarks in respect of any goods.
3. The following signs shall not be registered as trademarks if they reproduce:
trade names (or its part) protected in the Russian Federation in respect of
similar goods, industrial design, compliance mark, the rights to which belonged
to other persons in the Russian Federation, prior to the priority date of the
registered trademark;
titles of works of scienceerature and art, characters or quotations from
them, works of art or their fragments known in the Russian Federation by the
filing date of the application, without the consent of a copyright owner or his
successor in title, provided the rights to these works were used prior to the
priority date of the registered trademark;
last names, first names, pseudonyms and their derivatives, portraits and
facsimile of the person known at the filing date of application, without the
consent of that person or his successor.
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1. An application for registration of a trademark (hereinafter "application")
shall be filed with the Federal executive authority on intellectual property by
a legal entity or a natural person in business (hereinafter "applicant").
2. An applicant, a right holder or any other interested person may practice
before the Federal executive authority on intellectual property either
independently or through a patent attorney registered for the practice before
the Federal executive authority on intellectual property.
Foreign legal entities or natural persons having their permanent domicile
outside the Russian Federation or their patent attorneys shall perform the
formalities before the Federal executive authority on intellectual property
through patent attorneys registered for the practice before the Federal
executive authority on intellectual property. The competence of a patent
attorney shall be attested by a power of attorney issued to him by the applicant,
the right holder or any other interested person.
A citizen of the Russian Federation, permanently residing on its territory, may
be registered as a patent attorney. The Government of the Russian Federation
shall set other requirements to a patent attorney, procedures for his
certification and registration, and also his warrants for practice, related to
the legal protection of trademarks.
3. An application shall relate to one trademark only.
4. An application shall contain:
a request for the registration of the sign as a trademark with the indication of
the applicant as well as his seat or residence;
the claimed sign;
the list of goods for which the trademark registration is applied for, grouped
under headings of the International Classification of Goods and Services for the
Purposes of the Registration of Marks;
description of the claimed sign.
An application shall be filed in the Russian language.
5. An application shall be accompanied by:
a document certifying payment of the fee for filing an application in the
prescribed amount;
the by-law of a collective mark, if the application is filed for registration of
a collective mark.
The documents accompanying an application shall be filed in Russian or another
language. Where such documents are filed in another language, the application
shall be accompanied by their translation into Russian. The translation into
Russian may be submitted by the applicant within two months after the date of
notification by the Federal executive authority on intellectual property of the
need to meet this requirement.
6. The date of filing an application with the Federal executive authority on
intellectual property shall be the date of filing documents set forth in
Paragraphs 2,3, and 4 of this Article, or when these documents were filed at
different dates - the last filing date.
7. After filing the application with the Federal executive authority on
intellectual property, any person shall have the right to familiarize himself
with the documents of the application that were incorporated in it at the filing
date. The Federal executive authority on intellectual property shall set the
familiarization procedure with the documents of the application.
8. The Federal executive authority on intellectual property shall determine the
requirements for the documents of application.
1. Priority of a trademark shall be fixed as of the filing date of the
application with the Federal executive authority on intellectual property.
2. Priority of a trademark may be fixed as of the date of filing of the first
application in a member country of the Paris Convention for the Protection of
Industrial Property (convention priority), provided the application is filed
with the Federal executive authority on intellectual property within six months
from the above-mentioned date.
3. Priority of a trademark affixed to exhibits of official or officially
recognized international exhibitions organized in the territory of a member
country of the Paris Convention for the Protection of Industrial Property may be
fixed as of the date at which the display of the exhibit began at the exhibition
(exhibition priority), provided the trademark application is filed with the
Federal executive authority on intellectual property within six months from the
above-mentioned date.
4. An applicant wishing to enjoy the right of convention or exhibition priority
shall be liable to make the statement to the effect at filing trademark
application or within two months from the filing date of the application with
the Federal executive authority on intellectual property, and shall submit the
necessary documents in support of such request, or submit such documents within
three months from the filing date of the application with the Federal executive
authority on intellectual property.
5. Priority of a trademark filed by an applicant under Paragraph 6 of Article 10
of the Law (hereinafter "divisional application") on the basis of another
application of that applicant for the same sign (hereinafter " original
application") shall be fixed as of the filing date of the original application
with the Federal executive authority on intellectual property, when there is the
right to an earlier priority for the original application - by the priority date,
provided the original application has not been recalled as of the date of filing
the divisional application, and is not considered to be recalled, and when the
divisional application was filed prior to taking an action on the original
application.
6. When different applicants filed
applications for identical trademarks with the same priority date in respect of
fully or partially concurrent lists of goods, registration of the trademark with
respect to the goods for which the above-mentioned lists coincide, shall be made
in the name of one of them on the basis of the agreement reached between the
applicants. Whereas the same applicant filed applications for identical trademarks with the
same priority date in respect of fully or partially concurrent lists of goods,
the trademark in respect of such goods may be registered with one of the
applications, selected by an applicant.
Within six months after receiving the corresponding notification, the applicants
(applicant) should inform of the agreement reached by them (his choice) in
respect of the application for which the registration of the trademark is
requested.
Whereas within the fixed time the Federal executive authority on intellectual
property fails to receive the above-mentioned information or request on the
extension of time, the applications shall be recalled.
7. Priority of a trademark may be fixed as of the date of its international
registration by virtue of international treaties to which the Russian Federation
is a party.
1. The examination of an application shall be carried out by the Federal
executive authority on intellectual property and shall include a formal
examination and an examination of the sign.
2. The applicant shall have the right, on his own initiative, to supplement or
correct the application materials during the examination before an action is
issued.
If the supplementary materials incorporate the list of goods that was not
mentioned in the application as of its filing date or materially change the
application, they shall not be accepted and may be filed by the applicant in an
independent application.
3. A change of the applicant as a result of conceding the right to the
application or of changing the name of the applicant, as well as the correction
of obvious or technical errors in the documents of the application shall be made
before the registration date of a trademark.
4. During the examination the Federal executive authority on intellectual
property shall be entitled to request from the applicant the supplementary
materials, the lack of which makes the examination impossible.
The supplementary materials incorporating the list of goods, which is not
mentioned in the application as of its filing date, or materially change the
sign, follow the procedure set forth in Paragraph 2 of this Article.
The supplementary materials or copies of these materials, requested by the
Examiners, shall be submitted within two months from the date of receipt of such
request, provided that these copies were requested by an applicant within one
month after receiving the request of the Examiners. If the applicant does not
comply with the time limit or fails to file a reply to the Examiner's request,
the application shall be deemed abandoned. At the request of the applicant, the
Federal executive authority on intellectual property may extend this period by
not more than six months. When a reasonable excuse for failing to confine to the
time limit is confirmed, the Federal executive authority on intellectual
property can extend it by more than six months.
5. An application may be withdrawn at the request of the applicant at any stage
of examination, but not later than the date of registration of the trademark.
6. During examination of the application, before an action is taken, the
applicant has the right to file a divisional application for the same sign,
which incorporates the list of goods, mentioned in the original application as
of its filing date with the Federal executive authority on intellectual property,
and which differs from the goods listed in the original application.
1. The formal examination of an application shall be carried out within one
month from the date of its filing with the Federal executive authority on
intellectual property.
2. During the formal examination an application and the accompanying documents
shall be checked for their compliance with the statutory requirements. Based on
the results of the formal examination, the applicant shall be informed either of
acceptance of the application or of its rejection.
3. Parallel with notifying the applicant of the positive result of the formal
examination, he shall be informed of the filing date set forth in conformity
with Paragraph 6 of Article 8 of this Law.
1. The examination of a sign shall be carried out when the formal examination is
over.
During the examination a sign shall be checked for its compliance with the
requirements set forth in Articles 1, 6 and Paragraph 1 and 2 of Article 7 of
this Law, and the priority of the trademark shall be fixed.
2. Based on the results of the examination, an action either to register the
trademark or to reject its registration shall be issued.
3. Before taking an action on the results of examination of a sign, a
notification shall be sent to the applicant in a written form on the results of
checking the compliance of the sign with the requirements of Subparagraph 2 of
Paragraph 1 of this Article with a proposal to advance reasons for the motives
adduced in the notification .The applicant's reasons shall be accounted for in
taking an action on the results of examination of a sign, provided that such
reasons have been submitted within six months from the date of sending the
above-mentioned notification to the applicant.
4. An action to register a trademark can be revised by the Federal executive
authority on intellectual property prior to the registration of a trademark in
connection with:
the receipt of an application with an earlier priority in compliance with
Article 9 of this Law for an identical or confusingly similar sign in respect of
similar goods;
the registration of a sign, as an appellation of origin of a good, identical or
confusingly similar to that trademark;
the discovery of an application containing an identical trademark, or of a
protected identical trademark in respect of a full or in part coincidence of the
lists of goods with the same or earlier priority of a trademark;
satisfying the application to change the applicant, which could result in
misleading a consumer with regard to the good or its manufacturer, provided that
such a sign shall be registered as a trademark.
1. If an applicant disagrees with an action taken on the results of the formal
examination of an application, or refusal to examine it, or with an action taken
on the results of examination of a sign, or with an action on recognizing the
application abandoned, the applicant shall be entitled to lodge, within three
months from the date of receipt of an appropriate action, an appeal with the
Board on Patent Disputes or request copies of the materials opposed to the
application from the Federal executive authority on intellectual property,
provided they shall be requested by an applicant within a month from the date of
his receipt of a corresponding action.
2. The time limits set forth in Paragraph 4 of Article 10 of this Law and in
Paragraph 1 of this Article which have expired, may be reinstated by the Federal
executive authority on intellectual property at the request of an applicant,
filed within two months from its expiration, provided there is a reasonable
excuse and an appropriate fee is paid.
Such request shall be submitted to the Federal executive authority on
intellectual property parallel with the supplementary materials, requested by
the Examiners, or a request to extend the time limits for their submission, or
parallel with lodging an appeal to the Board on Patent Disputes.
Based on the decision to register the trademark the Federal executive authority
on intellectual property shall, within one month from the date of receipt of a
document certifying payment of the statutory fee, enter the trademark in the
State Register of Trademarks and Service Marks of the Russian Federation (hereinafter
"Register"). Entered in the Register shall be the trademark, its right holder
data, the priority date of the trademark, and the date of its registration, the
list of goods for which the trademark is registered, other data having to do
with the registration of the trademark and any subsequent changes in this data.
A trademark shall not be registered and the application shall be recalled when
there is no document confirming the payment of the registration fee and the
issuance of a trademark certificate.
1. A trademark certificate shall be issued by the Federal executive authority on
intellectual property within three months from the date of registration of the
trademark in the Register.
2. The form of the certificate and its contents shall be determined by the
Federal executive authority on intellectual property.
1. Registration of a trademark shall be valid for ten years from the filing date
of the application with the Federal executive authority on intellectual property.
2. The trademark registration period may be extended at the request of its right
holder, which should be filed during the last year of the expiring term, each
time for the next ten years.
At the request of a trademark owner wishing to prolong the term of the trademark
registration, the owner may be given a six-month grace period after expiration
of the registration period, provided the owner has paid the additional fee.
3. Prolongation of the trademark registration shall be entered by the Federal
executive authority on intellectual property in the Register and the Trademark
Certificate.
1. A trademark owner shall inform the Federal executive authority on
intellectual property of any changes in its name, last name, first name or
patronymic, reduction of the list of goods for which the trademark has been
registered, alterations of individual elements of the trademark which do not
materially alter it, and of any other changes having to do with the registration
of the trademark.
When the grant of legal protection for a trademark is contested on the grounds
and the order set forth by Article 28 of this Law, a single registration of such
trademark for a good or part of goods, which are not similar to the goods whose
list remains in the primary registration can be separated, at the request of the
right holder, from the registration of a trademark valid for several goods. This
request may be submitted by the right holder before the action shall be taken on
the results of dispute settlement on the registration of a trademark.
The changes shall be entered in the Register and the Trademark Certificate,
provided an appropriate fee has been paid.
2. The Federal executive authority on intellectual property may enter changes
into the Register and Trademark Certificate to remedy evident and technical
errors.
Information having to do with registration of a trademark and entered in the
Register as set in Article 14 of this Law shall be published by the Federal
executive authority on intellectual property in the Official Gazette immediately
after registration of a trademark in the Register or after the changes in the
registration of the trademark have been entered in the Register.
Legal entities and natural persons of the Russian Federation shall be entitled
to have their trademarks registered abroad or to register them according to an
international procedure.
An application for the international registration of a trademark shall be filed
through the Federal executive authority on intellectual property.
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1. At the request of a legal entity or a natural person, a trademark, protected
on the territory of the Russian Federation on the basis of its registration; a
trademark, protected on the territory of the Russian Federation without
registration by virtue of an international treaty of the Russian Federation, and
also a sign, used as a trademark which is not protected on the territory of the
Russian Federation can be recognized as well-known trademarks on the territory
of the Russian Federation if such trademarks or signs, as a result of their
intensive use at the date, indicated in the application, became widely known in
the Russian Federation among consumers in respect of the goods of that person.
A trademark or a sign cannot be considered as a well-known trademark if they
became widely known after the priority date of an identical or confusingly
similar trademark of another person, intended to be used in respect of similar
goods.
2. A well-known trademark is granted legal protection set by this Law for a
trademark.
When the already registered trademark is recognized as a well-known trademark,
the legal protection for such trademark shall be applied also to the goods non-
similar to those covered by the well-known trademark, provided the use of that
trademark by another person in respect of the above-mentioned goods will be
associated by consumers with the right holder and may infringe upon his lawful
interests.
1. The legal protection for a well-known trademark shall be granted on the basis
of an action of the Board on Patent Disputes, taken by an application submitted
in conformity with Subparagraph 1, Paragraph 1, Article 191 of this Law.
2. A trademark, recognized as well-known, shall be entered by the Federal
executive authority on intellectual property in the List of well-known
trademarks in the Russian Federation (hereinafter "List").
3. A Certificate for a well-known trademark shall be issued by the Federal
executive authority on intellectual property within a month after the date of
entering the trademark in the List. The form of the Certificate and the data to
be included into it shall be set by the Federal executive authority on
intellectual property.
4. The data related to a well-known trademark shall be published by Federal
executive authority on intellectual property in the official Gazette immediately
after they are entered in the List.
5. The legal protection of a well-known trademark shall have an indefinite
period.
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1. In conformity with an international treaty of the Russian Federation an
association of persons, whose foundation and business activities do not run
counter to the legislation of the country where it has been founded, shall have
the right to register a collective mark in the Russian Federation, which shall
be a trade mark of a business association, intended to be affixed to their
manufactured or marketed goods possessing common qualitative or other general
properties.
2. A collective mark and the right to use it may not be transferred to other
persons.
1. An application for registration of a collective mark shall be accompanied by
a By-law of the collective mark which shall contain the name of the business
association authorized to register the mark in its name, the list of enterprises
having the right to use this mark, the objective of its registration, the list
of goods and common qualitative or other general properties of goods which are
to bear the collective mark, the conditions for its use, the procedure of
control over its use, the responsibility for violation of the By-law of the
collective mark.
2. Information about the enterprises having the right to use the collective mark
in addition to the information set forth in Article 14 of this Law shall be
entered in the Register and the Certificate for the collective mark. This
information as well as an excerpt from the By-law of the collective mark
concerning common qualitative or other general properties of the goods for which
the mark has been registered shall be published by the Federal executive
authority on intellectual property in the Official Gazette. The owner of the
collective mark shall inform the Federal executive authority on intellectual
property of any changes in the By-law of the collective mark.
3. In case where a collective mark is used on goods not possessing common
qualitative or other general properties, its legal protection may be suspended
fully or in part on following the ruling of the Court issued at the request of
any person.
4. A collective mark and an application for its registration may be transformed
respectively into a trademark and an application for the registration of a
trademark and contrariwise.
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1. A trademark shall be considered as used if it is affixed to the goods for
which it has been registered and/or to their packages by the trademark holder or
a person who has been granted such right on the basis of a license contract as
set forth in Article 26 of this Law.
A trademark shall be also considered as used if it is utilized in advertising,
in printed publications, official forms, signboards, while displaying exhibits
at exhibitions or fairs held in the Russian Federation, provided there is a
reasonable excuse for nonuse of the trademark on goods and/or their packages.
2. Legal entities and natural persons engaged in intermediary activities may,
according to a contract, use their trademark in addition to the trademark of the
manufacturer of the goods or instead of the trademark of the latter.
3. Legal protection of a trademark may be terminated ahead of time in respect of
all or a part of goods in connection with a nonuse of a trademark for any three
years in a row after its registration. An application on the termination ahead
of time of legal protection of a trademark due to its nonuse may be submitted to
the Board on Patent Disputes on the expiry of the above-mentioned three years
provided that trademark had not been used before such an application was
submitted.
A right holder shall submit a proof of using the trademark.
For the purposes of this Paragraph the use of a trademark with changes in some
of its elements that do not alter it materially shall be considered as the use
of a trademark.
In settling an issue on the termination ahead of time of the legal protection
for a trademark due to its nonuse, a proof submitted by a right holder to the
effect that it has not been used for reasons beyond the right holder's control
shall be taken into consideration.
Registration of a trademark shall not give its holder the right to prevent other
persons from using this mark for goods, which have been commercially introduced
on the territory of the Russian Federation directly by the right holder or with
his consent.
A right holder may affix, at its trademark, a precautionary marking in the form
of a letter "R" or a circled letter "R" (®) or a word sign "trademark" or "registered
trademark" indicating that the sign used is a trademark registered in the
Russian Federation.
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An exclusive right to a trademark in respect of all or some goods for which it
has been registered may be assigned by the right holder to a legal entity or a
natural person under a contract on the transfer of an exclusive right to a
trademark (contract on the assignment of a trademark).
Assignment of a trademark shall not be allowed if it may lead to confusion of
consumers with regard to goods or their manufacturer.
The right to use a trademark may be granted by a right holder (licensor) to
another legal entity or a natural person (licensee) under a license contract in
respect of all or a part of goods for which it has been registered.
A license contract shall set forth a provision to the effect that quality of
licensee's goods shall not be inferior to those of the licensor and that the
licensor should exercise control over compliance with this provision.
Any contract on the transfer of an exclusive right to a trademark (contract on
assignment of a trademark ) or a license contract shall be registered with the
Federal executive authority on intellectual property. Without such registration
they shall be deemed invalid.
The Federal executive authority on intellectual property shall set procedures
for the registration of the above-mentioned contracts.
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1. Granting of legal protection to a trademark may be contested and held invalid:
1) fully or in part for its whole period of validity if it has been effected in
contravention of the requirements set forth in Article 6 and Paragraph 3 of
Article 7of this Law or within five years from the date of publication of
information about registration of the trademark in the Official Gazette on the
grounds set forth in Paragraph 1 and 2 of Article 7 of this Law;
2) fully during the whole period of its validity if it has been granted
infringing the requirements set in Paragraph 3 of Article 2 of this Law;
3) fully during the whole period of its validity, if it has been granted in the
name of an agent or representative of a right holder of an exclusive right to
this trademark in one of the countries - members of the Paris Convention on the
Protection of Industrial Property, infringing the requirements set by that
Convention;
4) fully or in part during the whole period of validity, if actions of a right
holder relating to the registration of a trademark have been treated, in the
order set by the law, as an action of unfair competition.
2. The grant of legal protection for a well-known trademark in the Russian
Federation may be contested and held invalid fully or in part during the whole
period of legal protection, if it has been granted with infringements of the
requirements set by Paragraph 1 of Article 191 of this Law.
3. Any person may file, within the time limits and on the grounds set forth in
Subparagraph 1 and 2 and Paragraph 1 of this Article with the Board on Patent
Disputes, an opposition against granting legal protection to a trademark.
Opposition to the grant of legal protection for a trademark on the grounds set
forth in Subparagraph 3, Paragraph 1 of this Article shall be filed by an
interested holder of an exclusive right against a trademark in one of the
countries - members of the Paris Convention on the Protection of Industrial
Property with the Board on Patent Disputes.
Opposition to granting legal protection for a well-known trademark in the
Russian Federation on the grounds, set forth by Paragraph 2 of this Article may
be filed by any person with the Board on Patent Disputes
An application on declaring invalid the granting of legal protection for a
trademark on the grounds of an action taken in the order set by Subparagraph 4
of Paragraph 1 of this Article shall be filed by any person with the Federal
executive authority on intellectual property.
4. The granting of legal protection for a trademark shall be declared invalid
fully or in part by an action taken as a result of the opposition or application
submitted under Paragraph 3 of this Article.
1. Legal protection for a trademark is terminated:
in connection with the expiration of the period of validity of trademark
registration;
on the grounds of the ruling of the Court, coming into force on terminating
legal protection of a collective mark ahead of time due to the use of that
trademark on the goods that do not possess common qualitative or other general
properties as set forth in Paragraph 3 of Article 21 of this Law;
following the decision on its earlier termination on the grounds of nonuse of
the trademark as set forth in Paragraph 3 of Article 22 of this Law;
following the decision of the Federal executive authority on intellectual
property on earlier termination of legal protection for a trademark in case of
liquidation of a legal entity- the right holder or termination of business
activity by a natural person - the right holder;
when the right holder abandons it;
on the basis of the decision taken on the application of any person filed with
the Board on Patent Disputes on earlier termination of legal protection for a
trademark where the registered trademark has become a commonplace sign used to
designate a certain kind of goods.
2. Legal protection of a famous trademark shall be terminated on the grounds set
forth by Subparagraphs 4-7 of Paragraph 1 of this Article, and also on the basis
of the decision of the Board on Patent Disputes when a well-known trademark
looses the features set forth in Subparagraph 1 of Paragraph 1 of Article 191 of
this Law.
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1. An appellation of origin of goods is the name of a country, settlement,
locality or other geographic place (hereinafter "geographic place") or a
derivative of such name, and which became known as a result of its use to
designate the special properties of goods which are defined, exclusively or
prevailingly, by natural conditions and/or human factors specific for this area.
2. A designation, which represents or includes the name of a geographic place
and which is a commonplace name in the Russian Federation as designating a
certain kind of goods without association with the place of its manufacture,
shall not be regarded as an appellation of origin.
1. Legal protection of an appellation of origin of good in the Russian
Federation shall start following its registration by the procedure set forth in
this Law or by virtue of international treaties to which the Russian Federation
is a party.
2. Any appellation of origin shall be protected by the law.
3. The appellation of origin of good may be registered by one or several legal
entities or natural persons. A person having the appellation of origin
registered shall be granted the right to use it, provided that the goods
manufactured by this person comply with the requirements set forth in paragraph
1 of Article 30 of this Law.
The right to use the same appellation of origin registered by the statutory
procedure may be granted to any legal entity or natural person residing at the
same geographic place and manufacturing goods having the same properties.
4. An appellation of origin shall be registered for an indefinite period.
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1. An application for registration, and grant of the right to use an appellation
of origin or an application for grant of the right to use a registered
appellation of origin (hereinafter "application") shall be filed with the
Federal executive authority on intellectual property by an applicant ("applicants")
either in its own name or through a patent attorney as set forth in paragraph 2
of Article 8 of this Law.
2. An application shall relate to one appellation of origin only.
3. An application shall contain:
a request for registration, and grant of the right to use the appellation of
origin of good or for the grant of the right to use the registered appellation
of origin on goods indicating the applicant (applicants) and his/her (their)
seat or residence;
the claimed name;
the kind of goods for which the registration, and grant of the right to use the
appellation of origin or the grant of the right to use the registered
appellation of origin is requested;
indication of the place where such goods are manufactured (borders of the
geographic place);
a description of specific properties of the goods.
The application shall be drafted in Russian.
The application is signed by an applicant and when submitted through a patent
attorney - by an applicant or patent attorney.
4. In the case where the geographic place, whose name is claimed as an
appellation of origin of the goods, is on the territory of the Russian
Federation, an application shall be accompanied by a determination of a
competent authority by the government of the Russian Federation (hereinafter "competent
authority") to the effect that the applicant resides in the designated
geographical place and produces goods the specific properties of which are due
to natural conditions and/or human factors specific for this geographic place;
In the case where the geographic place whose name is claimed as an appellation
of origin of the goods is outside the territory of the Russian Federation, an
application shall be accompanied by a document which certifies the right of an
applicant to the claimed appellation of origin of goods in the country of origin.
An application shall also be accompanied by a document certifying payment of the
statutory fee.
The documents accompanying the application shall be filed in Russian or another
language. In the case where the documents are filed in another language, the
application shall be accompanied by their translation into Russian. Translation
into Russian may be submitted by the applicant within two months from the date
of notification by the Federal executive authority on intellectual property.
5. The filing date of an application with the Federal executive authority on
intellectual property shall be the date set forth by Paragraph 3 of this Article
or, if such documents shall not be submitted concurrently - the entry date of
the last document.
6. The requirements to the application documents shall be set forth by the
Federal executive authority on intellectual property.
1. The examination of an application shall be carried out by the Patent Office
and shall include a formal examination and an examination of the appellation.
2. During the examination of an application, prior to issuance of an action, the
applicant shall be entitled, at his own motion, to supplement, correct or amend
the application materials.
Where the supplementary materials materially change the application, such
materials shall not be accepted and may be filed by the applicant in an
independent application.
3. During the examination the Federal executive authority on intellectual
property shall have the right to request from the applicant any additional
materials without which the examination is impossible.
The additional materials requested by the Examiner shall be submitted within two
months from the date of receipt of the request by an applicant. At the request
of the applicant this period may be extended, provided that the request has been
received prior to its expiration. If the applicant failed to comply with the
above-mentioned time limit or to reply to the Examiner's request, the
application shall be considered abandoned.
4. The formal examination of an application shall be carried out within two
months from the date of filing with the Federal executive authority on
intellectual property.
During the formal examination the availability of the necessary documents and
their compliance with the statutory requirements shall be checked. Based on the
results of the formal examination the applicant shall be informed either of
acceptance of the application or of its rejection.
Parallel with the notification on the acceptance of the application the
applicant shall be informed of the filing date of the application set forth by
Paragraph 5 of Article 32 of this Law.
5. The appellation of origin of the goods in an accepted application shall be
examined for its compliance with the requirements set forth in Article 30 of
this Law.
The validity of the appellation of origin of goods (manufacture) on the
territory of the Russian Federation shall be checked during examination.
Before taking an action on the results of examination of the appellation, a
notification may be sent to an applicant with the results of checking the
compliance of the appellation with the requirements set forth by Article 30 of
this Law with a proposal to adduce his arguments for the motives given in the
notification. His arguments shall be taken into account in taking an action on
the results of the appellation, provided that they shall be submitted within six
months from the date of forwarding the notification.
6. According to results of the examination the Federal executive authority on
intellectual property shall decide either to register the appellation of origin
or refuse its registration and grant the right to use it, or grant the right to
use the already registered appellation of origin, or to refuse the right to use
it.
7. The applicant may withdraw the application at any stage of the examination
before information on registration of the appellation of origin of the goods and
(or) grant the right to use it shall be entered in the State Register of the
Appellation of Origin of the Goods of the Russian Federation (hereinafter in
this Chapter "Register").
1. Where an applicant disagrees with an action based on the results of the
formal examination, on refusal of acceptance or with the decision taken as a
result of the examination of appellation or the decision to abandon it, the
applicant shall be entitled, within three months from the date of receipt of
such action, to lodge an appeal with the Board on Patent Disputes.
2. Time limits set forth in Paragraph 3 of Article 33 of this Law and Paragraph
1 of this Article and disobeyed by an applicant may be extended by the Federal
executive authority on intellectual property at the request of an applicant
filed within two months after their expiration, provided there is a reasonable
excuse and an appropriate fee is paid.
Such request is submitted by an applicant to the Federal executive authority on
intellectual property parallel with the supplementary materials, requested by
the Examiner, or a request to extend the time limits or parallel with filing an
appeal against decision with the Board on Patent Disputes.
1. Following an Examiner's action the Federal executive authority on
intellectual property shall register an appellation of origin in the Register.
The following information shall be entered in the Register: the appellation of
origin, information on the holder of the certificate attesting the right to use
the appellation of origin (hereinafter "certificate"), indication and
description of specific properties of goods for which the appellation of origin
has been registered, other information relating to the registration and the
grant of the right to use the appellation of origin, the renewal of the term of
the certificate, as well as any subsequent changes in the above.
2. The Federal executive authority on intellectual property shall issue a
certificate attesting the right to use the appellation of origin within one
month from the date of receipt of a document certifying payment of an
appropriate fee.
Such certificate shall not be issued if there is no document attesting to the
payment of an appropriate fee for the right to use the appellation of origin.
3. The form of the certificate and its contents shall be set forth by Federal
executive authority on intellectual property.
1. A certificate shall be valid for ten years starting from the date of filing
the application with the Federal executive authority on intellectual property.
2. The term of the certificate may be extended at the request of its holder
provided a determination of a competent authority is submitted to certify that
the holder of the certificate is a resident of a given geographic place and
manufactures goods with properties cited in the Register.
When the geographic place is outside the territory of the Russian Federation,
the holder of the certificate, instead of the above determination, submits a
document attesting his right to use the appellation of origin of the goods
manufactured in the country as of the date of filing an application for the
extension of the validity period.
Such request shall be filed during the last year of the expiring term.
The term of a certificate shall be renewed each time for ten years.
At the request of a certificate holder who wishes to renew the term of the
certificate, an additional grace period of six months may be granted after the
expiration of the term of the certificate, provided that an additional fee is
paid.
3. Renewal of the term of a certificate shall be entered by the Federal
executive authority on intellectual property in the Register and the certificate.
A certificate holder shall inform the Federal executive authority on
intellectual property of any changes in the name, last name, first name or
patronymic and of any other changes relating to the registration and grant of
the right to use the appellation of origin.
A record in the Register and the certificate shall be made subject to payment of
an appropriate fee.
The Federal executive authority on intellectual property shall enter changes in
the Register and certificate to correct obvious and technical errors.
Information relating to registration, and grant of the right to use the
appellation of origin entered in the Register as set forth in Article 35 and
37of this Law with an exception of information incorporating the description of
specific properties of the goods shall be published by the Federal executive
authority on intellectual property in the Official Gazette right after their
entry in the Register.
1. Legal entities and natural persons of the Russian Federation shall be
entitled to have their appellations of origin registered abroad.
2. An application for registration of an appellation of origin abroad shall be
filed after registration and grant of the right to use such appellation of
origin in the Russian Federation.
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1. An appellation of origin shall be considered as used if it is affixed to
goods, labels and their packages, in advertising, in leaflets, invoices, forms,
and other documents having to do with commercial introduction of goods.
2. No registered appellation of origin may be used by persons who do not have an
appropriate certificate even if the genuine place from which the goods originate
is indicated or the appellation of origin is used in translation or in
combination with expressions such as "sort of", "kind of", "imitation", "and the
like, and no similar appellation of origin may be used on any goods which may
confuse consumers in respect of origin and specific properties of goods (illegal
use of an appellation of origin).
The goods, labels and packages on which an appellation of origin or signs
confusingly similar to them are illegally used shall be treated as counterfeits.
3. A certificate holder shall not be entitled to grant licenses for use of the
appellation of origin to other persons.
A certificate holder may affix at the appellation of origin a Precautionary
marking in the form of a word sign " registered appellation of origin of the
good" or "registered AOG" indicating that the used name is an appellation of
origin registered in the Russian Federation.
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1. The grant of legal protection for the appellation of origin of the good may
be contested and attested invalid during the whole period of protection,
provided it has been granted in contravention of the requirements set forth in
this Law
The issuance of the certificate may be contested and may be held invalid during
the whole period of its validity, provided it has been issued in contravention
of the requirements set forth in this Law, or admitting invalidity of the grant
of legal protection for the appellation of origin
2. Any person may file an opposition against the grant of legal protection for
the appellation of origin and issuance of the certificate with the Board on
Patent Disputes on the grounds set forth in Paragraph 1 of this Article.
3. The grant of legal protection for the appellation of origin and the
certificate is admitted invalid following the decision of the Chamber on Patent
Disputes and the ruling of the Court that came into force.
1. Legal protection of the appellation of origin shall be terminated if:
specific conditions for a given geographic place disappear and the goods having
properties indicated in the Register cannot be produced;
a foreign legal entity or a natural person looses the right to a given
appellation of origin in the country of origin;
2. The validity of a certificate shall be terminated:
if goods have lost their specific properties cited in the Register in respect of
a given appellation of origin;
if legal protection for the appellation of origin has been terminated;
if a legal entity - the certificate holder has been liquidated;
if the certificate holder files an application with the Federal executive
authority on intellectual property.
3. Any person may file with the Board on Patent Disputes an application for the
termination of legal protection of the appellation of origin and validity of the
certificate on the grounds set forth in Paragraph 1 and Subparagraphs 2 and 3 of
Paragraph 2 of this Article.
Any person may file an application on terminating the validity of the
certificate with the Federal executive authority on intellectual property on the
grounds set forth in Subparagraph 4 of Paragraph 2 of this Article.
4. Legal protection of the appellation of origin and validity of the certificate
are terminated following an action of the Board on Patent Disputes, the Federal
executive authority on intellectual property and the ruling of the Court that
came into force.
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The Federal executive authority on intellectual property shall be authorized to
implement the State policy and the functions set forth in this Law to provide
legal protection of trademarks and appellations of origin of the goods.
The Federal executive authority on intellectual property in the cases outlined
in this Law publishes, in conformity with its competence, standard and legal
enactments on the use of this Law.
The Federal executive authority on intellectual property sets an order for
filing oppositions and applications with the Board on Patent Disputes and an
order of their consideration.
Decisions of the Board on Patent Disputes taken on oppositions and applications,
filed in the order set forth in Articles 13, 192, 22, 28, 29, 34, 42 and 421 of
this Law shall be approved by the Head of the Federal executive authority on
intellectual property and shall come into force from the date of their approval
and may be appealed in Court in conformity with the applicable legislation of
the Russian Federation.
Fees shall be charged for legally significant acts having to do with
registration of trademarks, registration, and grant of the right to use
appellations of origin.
The list of acts for which fees are charged, their amounts, the order and time
limits for payment and the grounds for refund of fees shall be determined by the
Government of the Russian Federation.
1. Disputes related to the implementation of this Law shall be heard following a
procedure set forth in the legislation of the Russian Federation by a court,
including disputes over:
infringement of the exclusive right to a trademark;
termination of legal protection of a collective mark ahead of time due to its
use on the goods which do not possess common qualitative and other common
properties;
conclusion and implementation of license contracts and contracts of assignment
exclusive rights to trademarks (contract on assignment of a trademark);
illegal use of an appellation of origin.
1. Any use of a trademark or an appellation of origin or a sign or a name
similar to a trademark or appellation of origin for similar goods in
contravention of Paragraph 2 of Article 4 or Paragraph 2 of Article 40 of this
Law shall entail civil, administrative or criminal responsibility under the law
of the Russian Federation.
2. Civil rights may be also protected against illegal use of a trademark, apart
from the request of injunction to stop the infringement or damages through:
publication of a court order with the aim of restoring goodwill of the injured
party;
removal from the goods or their packages of the illegally used trademark or a
sign confusingly similar to it, or destruction at the expense of an infringer of
counterfeited goods, labels, packages, if it is impossible to remove an
illegally used trademark or confusingly similar to it except for the cases when
these counterfeited goods, labels and packages shall be appropriated by the
State or handed over to the right holder on his application to compensate for
the damage or with the purpose of their further destruction.
3. A person illegally using a registered appellation of origin or a sign
confusingly similar to it shall be obliged, at the request of the holder of the
certificate attesting to the right to use this appellation of origin, a state
authority, a public organization, or a public prosecutor:
to stop its use and pay damages in conformity with the Civil Law;
to publish the court order with the aim of restoring goodwill of the injured
party;
to remove from counterfeited goods, labels or their packages the illegally used
appellation of origin or a sign confusingly similar to it, or to destroy
counterfeited goods, labels and packages if it is impossible to remove illegally
used appellations of origin or a sign confusingly similar to it.
4. The right holder and the certificate holder of the right to use the
appellations of origin of the goods, instead of making an infringer illegally
using a trademark or appellation of origin pay for the damage shall be entitled
to the right to require monetary compensation appointed by a Court at the rate
of 1 thousand to 50 thousand minimal wages set forth by the Federal Law.
5. A person using a precautionary marking in respect of a trademark or
appellation of origin unregistered in the Russian Federation shall bear the
responsibility following a procedure set forth in the legislation of the Russian
Federation.
Foreign legal entities and natural persons shall enjoy the rights provided for
in this Law on a par with legal entities and natural persons of the Russian
Federation by virtue of international treaties to which the Russian Federation
is a party or on a reciprocity basis.
The right to register appellations of origin in the Russian Federation shall be
granted to legal entities and natural persons of the countries, which grant the
same right to legal entities and natural persons of the Russian Federation.
If an international treaty to which the Russian Federation is a party set forth
rules other than those set forth in this Law, the rules of such international
treaty shall apply.
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Article 2.
The following transition provisions shall be used in respect to
applications for the registration of a trademark, service mark, applications for
registration and grant of the right to use appellation of origin of the goods,
applications for grant of the right to use the registered appellations of origin
filed before the date of entrance into force of this Federal Law, and also in
respect of the trademarks and service marks registered before the date this
Federal Law entered into force:
1) applications for the registration of a trademark, service mark, applications
for the registration and grant of the right to use appellations of origin of the
goods, applications for granting the right to use the registered appellation of
origin of the goods, consideration of which has not been completed before this
Federal Law entered into force, shall be handled by the Federal executive
authority on intellectual property in the order set forth by this Law;
2) oppositions and complaints and applications whose consideration has not been
completed by the Board of Appeals of the Russian Patents and Trademarks Office (hereinafter
"Board of Appeals") and the Supreme Patent Board of the Russian Patents and
Trademarks Office (hereinafter "Supreme Patent Board") before the date of
entering into force of this Federal Law, shall be adjudicated by them before the
foundation of the Board of Patent Disputes. In the case where consideration of
the above oppositions, complaints and applications has not been completed prior
to the foundation of the Board on Patent Disputes, after the foundation of the
Board on Patent Disputes, shall be adjudicated by the Board on Patent Disputes.
The oppositions that were filed after the Federal Law came into force, shall be
adjudicated by the Board of Appeals prior to the foundation of the Board on
Patent Disputes. In the case where adjudication of the above oppositions has not
been completed before the foundation of the Board on Patent Disputes, after its
foundation shall be tried by the Board on Patent Disputes.
While considering, in conformity with this Article, the oppositions and
complaints mentioned in Subparagraph 1 and 2 of this Paragraph by the Board of
Appeals, Supreme Patent Board and the Board on Patent Disputes, requirements
shall be used, set forth by the legislation valid as of the filing date of an
application.
When the Supreme Patent Board and the Board on Patent Disputes consider the
applications mentioned in Subparagraph 1 of this Paragraph, they shall use
provisions of the legislation valid as of the filing date of the application
with the Supreme Patent Board.
The actions, taken on the results of considering the oppositions, complaints and
applications, mentioned in this Paragraph, shall be approved by the Head of the
Federal executive authority on intellectual property, shall enter into force
from the date of their approval and an appeal may be lodged with the Court under
the legislation of the Russian Federation.
3) The requirements set by the legislation valid as of the date of filing an
application shall be used to the signs, applied for registration before the date
of entering into force of this Federal Law;
4) The terms of opposition and recognition as invalid the grant of legal
protection for trademarks and service marks, set forth in this Federal Law,
shall be used to the registered trademarks and service marks, whose period of
validity, set forth by the previous legislation to recognize, on corresponding
grounds as invalid the registration of trademarks or service marks, has not
expired as of the date of entrance into force of this Federal Law.
Article 3.
The President of the Russian Federation and the Government of the
Russian Federation shall bring their legislative enactments in accord with this
Federal Law.
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