Termination of trademark protection in Russia

with one application submitted
with a guarantee of results under the contract


We register a trademark with a free check in Rospatent

By clicking, you are giving your consent to processing of personal data and agree to the terms and privacy policy

Know more about our company

Our advantages

8 out of 10 of our clients work remotely.
pic
We will hold an online meeting, conclude an agreement and do the work remotely.ПWe will hold an online meeting, conclude an agreement and do the work remotely. It doesn't matter what town you're from.
We guarantee results, not just returns
pic
We get to the contractually guaranteed result one way or another at any pay rate.
Fixing the price at the start
pic
You will pay exactly the amount we discussed at the beginning. No surprise payments.
What we have achieved in 15 years?
More than 6,000 objects were registered
pic
In all likelihood, your case is similar to the cases we have seen in our practice.
We represent interests in 65 countries of the world
pic
For international registration, we resort to the help of reliable patent attorneys from abroad.
Certified Patent Attorneys
pic
We are responsible to Rospatent. Attorney status does not require you to have a notarized power of attorney or an EDS.

Our team

Alexander Dubok
Alexander Dubok
Head.
Show
Anatoly Dubok
Anatoly Dubok
Technical Director.
Daniel Fadeev
Daniel Fadeev
Patentee.
Show
Dmitry Naplekov
Dmitry Naplekov
Patent Attorney No. 2086.
Show

Since a trademark is an object of intellectual property, Rospatent as a state body protects it immediately after registration. However, one can legally begin the process of canceling a trademark (trademark, brand, logo) and below we will tell you about the peculiarities of the procedure.

What is invalidation of a trademark?

This is the termination of protection of a registered designation and occurs in 2 cases.

  1. Termination of legal protection of a trademark when the official decision of Rospatent is not questioned.
  2. If this decision contradicts the law, it can be appealed. In this case, the granting of trademark protection is challenged.

Reasons for termination of a trademark

1) Expiration date

If the right holder has not applied for an extension of the trademark term, protection after 10 years is automatically terminated.

2) The presence of a registered trademark that is confusingly similar to the disputed mark

If another right holder, who has a trademark with an earlier priority date, has found a confusingly similar or identical trademark, he has grounds to apply to the Chamber of Patent Disputes (CCP) for termination of its registration.

3) Termination of entrepreneurial activity by the right holder

In this case, the trademark loses its legal protection and, without the possibility of succession, is subject to cancellation at the request of any person.

4) Refusal of a trademark

Legal protection of a trademark may be terminated at the initiative of the right holder in connection with the renunciation of the exclusive right to it.

5) Early termination of trademark due to non-use

According to the law, if a trademark has not been used for three years, it is allowed to terminate legal protection by judicial procedure. In such a situation, any person who has an interest in obtaining rights to the trademark in question may sue for early termination of legal protection.

6) The transformation of a trademark into a sign that has fallen into general use

A commonly used and therefore well-known brand name cannot be used as an industrial design. In such a case, Rospatent decides on the claim from the person who has expressed interest after the Federal Institute of Industrial Property (FIPS) has conducted an information search.

7) Early termination of legal protection of a trademark in terms of registered goods or services

Rights holders make registrations in the ICS for several classes of goods and services at once, but carry out production only for one of them. At times, this can mislead consumers. Each year, the Intellectual Rights Court (IPC) inspects and considers several hundred disputes in connection with the non-use of the designation.

In what case is the early termination of protection of the mark?

Article 1486 of the Civil Code states that this is the case if it has not been used within three years from the date of registration. A person who has an interest files an application with the arbitration court and the Chamber of Patent Disputes. Before going to court, it is necessary to write a letter to the right holder with an offer to voluntarily relinquish the trademark or to conclude a contract of alienation.

If the right holder has no evidence of the use of the registered designation or there are no justified reasons why it could not be used (for example, bankruptcy proceedings), the legal protection of the trademark is terminated and with it the exclusive rights are terminated.

Protection against early termination of legal protection of a trademark

Attempts to deprive an individual entrepreneur or a legal entity of exclusive rights are as common as disputes that involve allegations of unfair use of a trademark. It is necessary to soberly assess the position of the competition and understand whether it is illegal.

Early termination of a trademark can be prevented if the right holder decides to protect it. To this end, he will need documents that will help prove the use of the trademark for its intended purpose or impossibility to use it for objective reasons.

What can the trademark owner do?

To defend your rights in court, you can contact the patent office. Our lawyers and patent attorneys will support you, assess your position and strengthen it to preserve your rights.

Who can be considered an interested party?

An entrepreneur or an organization whose purpose is the early cancellation of a trademark can act as an interested party. Thus, the initiators of the procedure may be:

  • The owner of an identical trademark.
  • An organization that wishes to individualize its goods and services with a confusingly similar designation.
  • Holder of a similar trade name, which deals with similar goods and services of the same class.
How to prove the non-use of a trademark?

The proof is the absence of a designation:

  • on packages of goods that are manufactured and sold;
  • in the accounting records;
  • in the domain name;
  • in advertising.

In addition, the silence of the right holder in response to the claim is also regarded as an admission of non-use of the brand. The exception is situations where there is evidence of reasons beyond the control of the right holder, for which he could not respond to the statement of claim and participate in court.

What you need to pay attention to when filing a lawsuit

The applicant must bear in mind that in court he will have to present evidence of his interest in the annulment of the trademark. In practice, an extract from the Unified State Register of Legal Entities will be required, which will prove overlapping activities, contracts on deliveries or services. Preparation should be done in the pretrial order. The burden of proving the use of the trademark lies on the right holder.

Our procedure for terminating trademark protection

In the case of termination of business activities by the right holder

  1. Checking the sufficiency of the grounds for filing an application, providing the client with a payment order to pay the fee.
  2. Preparation of application for early termination of trademark protection in connection with termination of business activities and handing it over to the client for signing (1-2 business days).
  3. Sending the application package of documents to the registering authority (time - 1 working day, not including the time for signing the documents).
  4. Control of application review, responses to inquiries and notifications of Rospatent (up to 4 months).
  5. Receipt of Rospatent's notice of termination of trademark protection, transfer to the client (period - up to 1 month).

Due to the failure to use all or part of the

  1. Assessment of the prospects of satisfying the requirements for termination of trademark protection, sending the client a list of necessary documents to prepare a proposal for voluntary cancellation of the trademark.
  2. Preparation of the proposal to the right holder for voluntary cancellation of the trademark or the contract of alienation, sending it to the addressee (period - 5-7 working days)
  3. Monitoring the receipt of response from the rights holder within 2 months, in the absence of response - the preparation of a statement of claim in court for intellectual property rights, providing the client with a sample of payment order to pay the fee, sending the application to the rights holder and to the court.
  4. Control over the acceptance of the application by the court and the appointment of the court session.
  5. Participation in court hearings.
  6. Obtaining a decision to terminate protection.
  7. Control of execution of the court decision by Rospatent.

In the case of an application by the owner of the right

  1. Preparation and submission to the client of a list of required documents and payment order for payment of the fee.
  2. Preparation of application for termination of trademark protection, sending it to the client for signing (1-2 working days).
  3. Sending the application for termination of trademark protection to the registering authority (period - 1 working day, not including time for signing documents).
  4. Responses to Rospatent's inquiries during the whole period of application consideration (period - 4-5 months).
  5. Receipt of Rospatent's notice of termination of trademark protection, transfer to the client (period - up to 1 month).

Due to the degree of confusion with a trade name / commercial designation / NTM / trademark / design.

  1. Assessment of the prospects of filing an application for termination of trademark protection, preparation of a list of necessary documents and their submission to the client.
  2. Preparation and sending to the client a payment order for payment of the fee.
  3. Preparation of application to the Chamber of Patent Disputes for early termination of trademark protection in connection with violations of applicable law, providing a package of documents to the client for signing (time - 7-14 working days).
  4. Submission of a set of documents to the Chamber of Patent Disputes (1-2 working days, not including time for signing documents)
  5. Supervising the receipt of PPP documents and the appointment of the meeting, representation in the PPP (from 2 months).
  6. Obtaining a decision on termination of trademark protection, providing it to the client, monitoring the execution of the decision by Rospatent.

FAQ on terminating the protection of a trademark

 

Can I cancel a trademark that is not being used by a competitor, and where should I apply for it?

Yes, you can. To do that, you have to file a claim to the Court for Intellectual Rights and prove that you have an interest and a competitor does not use the trademark more than 3 years from the moment when he decided to register it. In pre-trial procedure you should send a letter to the right holder suggesting voluntary abandonment of the trademark by filing an application to Rospatent or its alienation to an interested person.

 

My sign is being sued and they want to make it unprotected, what should I do?

As a preparatory measure, it is necessary to collect evidence of its lawful use and the absence of signs of unfair competition in your actions.

 

A legal entity went into liquidation, and the trademark was not canceled, what to do?

After the termination of the company's activity, it is necessary to submit a corresponding application to Rospatent.

 

What documents confirming the use of the trademark must be submitted to the Office in order to cancel it??

The following are used as documentary evidence: witness statements, data from the website where the trademark was used, advertising and accounting documents.

 

What articles should be relied upon in trademark disputes?

Articles 1248, 1483, 1486, 1500, 1501,1512, 1513, 1514 of the Civil Code are used for disputes.

 

I want to file a remote objection, how do I do it? Where can I find out the date and time of the hearing? How much time do I have to appeal?

The remote filing of the petition is done by sending a postal correspondence to the relevant authority, which schedules the date and time of the hearing and then notifies the parties by mail and through the publication in the register on its website. Three months are allocated for the appeal of the decision from the moment of its pronouncement (Art. 198 APC RF).

 

Expiring soon, how to avoid its elimination?

It is necessary to extend its protection for the last year, as well as to pay the state duty 14000 rubles (including 30% discount for electronic filing).

 

How long after that can I take the initiative to start the annulment procedure?

Three years after trademark registration.

Our customers
Your application is accepted.
We will get back to you as soon as possible!