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"New decree benefits trademark registration in Russia" by Tatiana Petrova

15 November 2017

New article: New decree benefits trademark registration in Russia.

•     Russian government has issued the Decree of the Government of the Russian Federation 1151

•      Decree amends official fees related to patents, trademarks and other objects of industrial property

•      Decree has slightly increased nominal rate of official fees relating to trademarks but offers a 30% discount for applications filed electronically

On September 23 2017 the Russian government issued the Decree of the Government of the Russian Federation 1151, amending official fees related to patents, trademarks and other objects of industrial property. The decree came into force on October 6 2017. It is published in the Russian language and can be found on Rospatent, the Russian Patent and Trademark Office website.

The decree has slightly increased the nominal rate of the official fees relating to trademarks but offers a 30% discount for applications filed electronically.

New fees have been introduced for the filing, registration and renewal of a trademark for any more than five classes of goods and services. For example, an applicant must pay an extra Rb1,000 (approximately $18) to file a trademark application for each additional class over five. The trademark registration fee will be Rb1,000 for each additional class over five. There will also be an additional fee of Rb1,000 for each additional class over five when renewing a trademark. Previously, the official fees for filing, registration and renewal did not depend on the number of classes. Rospatent is trying to reduce the number of trademarks which cover unnecessary goods and services and in the process clog the trademark register. However, these additional fees are nominal and it is unlikely that they will have much effect.

The official fees for trademark examination have also been slightly increased. The basic fee for the first class of goods remains at Rb11,500, but each additional class will be increased from Rb2,050 to Rb2,500.

As Rospatent is trying to reduce its volume of paperwork, the decree has divided the official registration fee into two separate fees - one is a registration fee (Rb16,000) and the other is a fee for issuing a trademark certificate (Rb2,000). According to the decree, it is possible to register a trademark without having to obtain a trademark certificate. However, the relevant provisions of the Russian Civil Code remain unchanged which means that Rospatent is unable to register a trademark without issuing a trademark certificate.

Another change brought in by the decree is that the applicant must pay the official fees within two months from the date of issuance of the relevant decision, instead of four months as stipulated in the previous law. Potentially, an applicant may pay the fees over a six-month time period, but would incur a 50% surcharge. Apparently this was done to reduce the terms of the trademark registration process in Russia.

There is strong support among trademark applicants and brand owners for Rospatent's efforts to speed up the trademark registration process. A 30% discount on governmental fees applies to all applications filed through Rospatent's special portal, which is good news for trademark applicants. Therefore, despite the increase in official fees, electronic submissions will receive a 20-25% discount. The only exception to this rule is trademarks which cover more than five classes of goods and services, but this does not involve a high number of applications.

Generally, these are positive changes for the trademark registration process in Russia and will help Rospatent and trademark applicants to simplify the application process and greatly reduce the amount of paperwork. It is also hoped that the changes will result in a decrease in the number of trademarks that are registered for an overly broad list of goods and services. These changes are definitely a step in the right direction.

Tatiana Petrova, Sojuzpatent, Moscow

Source: World Trademark Review