Ekaterina Karlova-Ignatyeva
Lawyer
Beiten Burkhardt
Succeeding in business means not only having good partners and a solid business plan. It is just as important to arrange for the effective protection of a company’s intellectual property. If the company owns trademarks or inventions, utility models and designs protected by patents, or any other intellectual properties, it is advisable when entering the Russian market or planning to collaborate with partners to ensure that the said intangible assets of the company are duly protected.
First and foremost, it is necessary to ensure that the company’s means of identification (in particular, its trademarks) are protected against misuse by third parties and potential infringement. In this regard, it should be noted that, in the Russian Federation, protection is only afforded to trademarks that have been registered with the Federal Service for Intellectual Property, Patents and Trademarks (Rospatent) or registered in accordance with Russian international agreements. If a trademark is not registered in Russia and is also not entered in the international register of the International Bureau of the World Intellectual Property Organization (WIPO) with trademark protection extended to Russia, the trademark will not be protected. In this case, the risk arises that any third party may register an identical trademark in Russia. For this reason, prior to entering the Russian market, it is necessary to register the trademark with Rospatent or to submit an application to expand the geographical scope of protection of a trademark entered in the international register. It is also advisable to check whether the trademark is duly registered with respect to all of the goods and services that are manufactured and/or rendered by the company. Furthermore, given that the Cyrillic alphabet is used in the Russian Federation, for the effective protection of a company’s means of identification, it is also recommended to additionally register a Cyrillic version of the trademark. Such registration reduces the risk of bad faith competitors possibly emerging and also makes it possible to avoid the future necessity of proving that the company’s trademark and a Cyrillic trademark used by a third party are confusingly similar and that such use infringes the company’s rights.
Inventions, utility models and designs are also recognized and protected within the Russian Federation if they have been registered with Rospatent or are valid based on international agreements of the Russian Federation. The registration of an invention, utility model or design is confirmed by a patent issued by Rospatent. Therefore, before using the invention, utility model or design of the company within the Russian Federation, it is necessary to ensure that the relevant patents have been received and that previously received patents have not expired.
Finally, the company must not forget about the information comprising its trade secrets. This information should be covered by a trade secret regime as contemplated in the law on trade secrets, with all necessary steps being taken in order to ensure the confidentiality of the information. Otherwise, such trade secrets will not be protected in Russia.
When entering a new market, there are so many steps to be taken and so many financial and legal issues to be weighed that intellectual property is very often an afterthought. At the same time, mistakes made in intellectual property management and protection can be very costly, and it is advisable to arrange for intellectual property protection in advance.