NEW RULES FOR TRADEMARK REGISTRATION

  • 23 Jun 2023
  • EURASIA
  • share

On 29 May 2023, a number of amendments to the Civil Code entered into force with regard to the registration of trademarks. In accordance with the new version of paragraph 3 of Article 1483 of the Civil Code, apart from the prohibition of registration of trademarks that mislead consumers with regard to the goods and their manufacturer, it will no longer be possible to register designations that may be misleading with regard to the place of production of the goods. This means that a trademark cannot be registered using a geographical indication if the company or its production is not actually located in that place.

Rospatent will not cancel earlier registered trademarks, and the changes will only affect applications filed after the law comes into force. However, it may have questions if you decide to transfer the rights to such a trademark to someone else. According to the amendments to paragraph 2 of Article 1488 of the Civil Code, the Russian Patent and Trademark Office may now refuse to register the agreement on the transfer of the exclusive right to a trademark or franchise if it misleads the consumer about the place of manufacture of the goods.

Innovations are required to harmonize the rules of national legislation with Article 11 of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, to which Russia acceded on 11 May 2023.

Experts' opinions regarding all innovations are divided: some believe that the changes in the law protect consumers, because often unfair producers deliberately use the names of foreign places to give the impression that the products are "imported". Other experts believe that the changes are detrimental to bona fide entrepreneurs who use the names of geographical locations (e.g. foreign cities) as fancy names. For example, no one would think that cafes called 'Chicago' or 'Tokyo' had anything to do with those cities. But even in such cases, there is no legal protection.