Brand is one of the key factors that helps consumers to distinguish goods of one undertaker from those of another. As a means of individualization it enables consumer to focus attention on the product that he or she trusts and select the appropriate one according to the individual preferences among the vast variety of goods available on the market.

Below is some basic information as to how the brand is protected and what can be protected in Russia using the brand.

Under the Russian law a brand (also called a trademark) is a perceptible sign which is capable of distinguishing goods and services of one undertaking from those of another. The Russian law says any designations including but not limited to verbal, device, combined, three dimensional signs can enjoy protection as trademarks. Not only words, but also logos, product and packaging shapes, their combinations and other signs can be subject of legal protection as a trademark.  

So what options are available for the trademark owners to get their marks protected in Russia?

Firstly, this can be done through the national trademark filing system.  In particular, a trademark owner is entitled to apply for registration of its trademark by way of filing a national TM application with the Russian Patent and Trademarks Office (Russian PTO).

The second option takes note of the fact that Russia is a signatory to a number of International Treaties, especially is a member state to the Madrid System dedicated to the international registration of trademarks whereby the trademark owners can seek protection of their trademarks simultaneously in a number of designated countries, including Russia within the framework of one application.

Thirdly, a brand new regional trademark protection system has recently been introduced and this system is based on the Eurasian (EAEU) trademark which represents itself a regional trademark being effective on the whole territory of EAEU currently composed of the five member states, namely Russia, Belarus, Armenia, Kazakhstan and Kyrgyzstan. Although the basic governing laws such as the EAEU trademark treaty as well as Instructions thereto have already come into force the Eurasian trademark system has not yet started operating as for the time being there still remain some technical issues that have yet to be resolved (for instance, the member states have to approve the list and amount of legal fees for examination and registration of the Eurasian trademark applications and develop a unitary platform to enable members to exchange and share information pertaining to applications at all stages of prosecution). Once launched, the system will make it possible for brand owners to file Eurasian applications with any of the IP offices of the member states.

Finally, in Russia a trademark can enjoy protection as a well-known mark which may not necessarily be a registered designation.

Russia is a first to file country. That implies that those who first apply for registration of a trademark gain priority right to get the mark registered. For this reason it is vitally important to file trademark applications without delay even though the trademark owner does not intend to use its trademark on the Russian market right now. This is especially very important due to the fact that the Russian trademark legislation does not recognize prior use rights (as a general rule, the exclusive right to use a trademark  arises as a result of registration). It is worth noting that unlike some other jurisdictions there is no need in Russia to file a declaration of use or intention to use declaration along with filing an application.

In Russia a trademark is protected the same way it is registered. It means that the trademark protection for the mark in Latin does not automatically extend to all other scripts. The same applies to the color of the mark. Each time when a potential infringer uses the same mark in a different color or in a different script the brand owner will have to prove that the respective marks are confusingly similar to be able to enforce TM rights against infringer and sometimes this is a matter of dispute.

Russia has Cyrillic script which is essentially different from the Latin characters.

Average consumer in Russia can easily recognize Latin characters. However, in some cases Russian equivalent is a must. These cases include in particular pharma names which according to the Russian law are to be reproduced in Cyrillic script for the sake of consumer rights protection.

Above all, having protection both in Latin and Cyrillic should strengthen and widen scope of legal protection of a trademark.

Translation and transliteration are two different versions of a mark and those versions are not to be confused. Basically, transliteration is a phonetic equivalent of an original trademark in the local language whereas translation describes semantic meaning of the mark. In some cases transliteration may have a completely different meaning as compared with the definition of the original mark. In some cases translation or transliteration may have negative connotations in the local language and all these issues are to be carefully considered when adopting brand protection strategy.

As for the hieroglyph marks these are treated as figurative (device) marks under the Russian practice.

One can easily find a large number of registrations of hieroglyph marks in the Russian Trademark Register, for instance  (Russian registration No.330658 for goods in Class 33),  (Russian registration No.549516 for goods in Class 32) and others.

Since those marks are not perceived easily by the Russian public the business should consider launching and protecting Latin and/or Cyrillic equivalents of those marks in Russia especially if the mark bears semantic meaning.  

Furthermore, in addition to the traditional marks (such as verbal, device, combined and others) the so-called non-traditional marks such as color marks, sound marks, motion and position marks and others can also enjoy protection in Russia.

The most recent Russian practice demonstrates an increase in trade-dress-related cases where rights holders prefer to rely on registration of non-traditional trademarks such as product shapes, color marks, interior design trade dress as well as position marks. In this connection it is worth noting that the registrability requirements for this category of marks are basically the same as for the ordinary marks although there are some particularities that the brand owners should be aware of. In particular, with respect to color marks one should keep in mind these are not considered to be inherently distinctive and  the only way to get them registered is to prove that such a mark has acquired the necessary distinctiveness through wide and extensive use on the Russian market before the priority date.

Successful examples of non-traditional marks that were granted protection in Russia include color red of the shoe sole , airplane design and many others.

The basic common principles highlighted in the present article simply give a general idea as to what kind of signs can be protected in Russia as trademarks. The brand protection strategy is a complex issue that should be considered in each particular case depending on the nature of business, its preferences and actual interests taking note of the local law requirements and this task obviously requires professional consultancy on part of the well-experienced IP practitioners.