Directions for Challenging

Grounds for challenge may arise even before the actual registration of the trademark. The initiator of objections, complaints or statements of claim may be the owner of the designation or another interested party. The law allows challenging unlawful actions of Rospatent in the following directions:

• filing a complaint against the refusal to accept documents;
• challenging the refusal to grant national or conventional priority;
• filing of objections against the negative decisions of formal examination and examination of the designation - if such claims are satisfied the right is recognized and the designation is registered in the register;
• appeal against the act of Rospatent on the results of consideration of the objections.

As long as the application has not resulted in the registration of a trademark, all objections and complaints will be considered in an administrative procedure. For that purpose, the concerned person or the applicant should apply directly to Rospatent. If the results of the consideration of the opposition are negative, it is necessary to apply to the Chamber of Patent Disputes and to the courts.

Disputes may also arise after the registration of the subject matter and the issuance of a certificate of protection. Let us highlight the most common categories of cases related to challenging trademark rights:

• filing claims for invalidation of trademark registration - such a claim may be filed by a commercial entity whose rights have been violated by the unlawful registration;
• appeal to the court for cancellation of legal protection, which has not been used by the right holder for more than 3 years (this requires a prior claim for sale of rights or voluntary termination of protection);
• disputes for cancellation of legal protection of a collective mark if the products protected by it have lost their similar characteristics.

If the case ends with the cancellation of registration or cancellation of the protection regime, it entails the termination of the exclusive rights. License agreements will also automatically terminate if they have been executed by the right holder. If the infringing acts were challenged by the applicant, following the outcome of the opposition or claim, information on the trademark will be entered in the register with the issuance of a certificate.