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International Trademark Registration

Today, all states apply the territorial principle of exclusive trademark rights protection. It means that you trademark rights registered in Russia are only valid in Russia.

So, if you are doing business not only in the Russian Federation, but also in foreign markets, you shall consider the international registration of your trademark.

There are two options for filing trademark registration applications in foreign countries.

1. The international trademark registration under the Madrid system for the international registration of marks*.

Main steps of the international mark registration:

a) The international application** to the Russian Patent Office (Rospatent). Examination as to form of application. The application is submitted to the International Bureau of the World Intellectual Property Organization.

b)  International trademark (application) registration. The applicant receives the Certificate confirming the international registration of the trademarks and its registration in the International Register.

The fact that the certificate was issued and the trademark was registered in the International Register does not automatically secure the legal protection of your trademark in the specified countries.

c) Transfer of the international application to national patent offices of the countries listed in the application, where the applicant wishes to protect the trademark.

d) Examination of the trademark by national patent offices.

Experts of national offices assess the registrability of the trademark in corresponding countries in accordance with their national laws. Based on examination results the national office decides on registration of a trademark or issues a preliminary refusal to protect it.

e) The International Bureau shall notify the trademark owner of the progress of its application, including the notice of trademark registration in specified countries or of refusal to register it.

Benefits of international trademark registration

● Low application fees and cost of the patent attorney services;

● Less paperwork – the applicant files one application specifying the desirable countries for trademark registration;

● In general, there is no need to engage patent representatives in foreign countries and pay their fees;

● Summary judgement in cases related to disposal of exclusive trademark rights, amendment of the data relating to such marks.

Restrictions of the international trademark registration

● The international application may be filed only after the national (Russian) trademark application is filed or after its registration;

● If the application process in Russia results in refusal to register the trademark or a registered Russian trademark prematurely ceases to be effective until expiration of the 5-year period, the legal protection in all countries, where it is registered, will be automatically early terminated.

  1. National trademark registration process

In contrast to the international application system, the national trademark registration process provide for direct application to national patent offices of the countries, where the applicant wishes to protect the trademark. Trademarks are registered under the applicable laws of the specific country using local patent attorneys.

Benefits of national trademark registration

● Registration in Russia or a Russian application is not a prerequisite for international applications.

● Russian application or registration does not affect the international registration process in case its rejection of termination of legal protection.

Experts of Petukhov & Partners PLF LLC h will be happy to use their vast experience and knowledge in the field of international trademark registration to secure the protection of your brand in any country of the world.

We established partnerships with international patent firms in more than 40 CIS and other countries. If necessary, we will engage experts of these companies in your trademark registration process to obtain a successful judgement and further protect your rights in foreign countries.

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* The Madrid system operates under the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement) 1891 and Protocol to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) 1989. It applies to member states of the Agreement and/or Protocol.

** The international application is based on the registered Russian trademark (basic registration) or application filed to Rospatent.

 

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