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Trademarks

1. Trademark Search

The firm’s proprietary database includes both registered trademarks and pending applications, and is used exclusively for our clients’ needs.

1.1. Express Searches

Results follow the same or next day after receiving instructions, without attorney’s report or opinion. Classes are in accordance with the ICGS.

Attorney’s Fee (USD)Official Fee (RUB*)
1.1.1. Identity word mark search only among registered marks, in 1 class + each next classFREE
1.1.2. Identity word mark search including pending applications, in 1 class + each next classFREE
1.1.3. Search by right holders’ and applicants’ names, other searchable fields150

1.2. Complete Searches

Results follow in three to five days after receiving instructions, with attorney’s report and opinion. Company names are not included to search.

Attorney’s Fee (USD)Official Fee (RUB*)
1.2.1. Similarity word mark search including applications, in 1 class + each next class+ 50
for 5 working days
for 1 working day
400
650
1.2.2. Similarity device mark search including applications, in 1 class + each next class+ 50
for 8 working days
for 3 working day
500
750
1.2.3. Similarity combined mark search including applications, in 1 class + each next class+ 50
for 8 working days
for 3 working day
650
800

2. Straightforward Prosecution

Around 900 trademark applications are filed by the firm’s attorneys per year. This number is among the largest on the Russian market.

2.1. Regular Filing

Non-convention applications are filed within three days after instructions. Instructions should indicate the applied designation, applicant’s name and address, list of goods/services. A copy of Power of Attorney should be served amid or after filing. No notarization/legalization.

Attorney’s Fee (USD)Official Fee (RUB*)
2.1.1. Filing a trademark application in 1 class + each next class350 + 9015,000
+ 2,500 up to 5
+ 3,500 more then 5
2.1.2. Filing an appellation of origin of goods40013,500

2.2. Filing Options

Urgent applications may be filed the same or next day after receiving instructions, subject to extra fee. Convention applications are filed within six-month deadline, unless instructed to advance. A certified copy of the basic application should be served amid or after filing.

Attorney’s Fee (USD)Official Fee (RUB*)
2.2.1. Filing a short-notice** application in 1 class (extra fee) + each next class280 + 50
2.2.2. Claiming convention priority90
2.2.3. Translating larger-than-normal** lists of goods/services (per 100 words)20

2.3. Registration

The RUPTO’s examination of the application for a trademark registration on average lasts about a year. Prosecution without complications may be faster. Trademark certificate is either securely stored in our office, or forwarded where instructed. The forwarding cost depends on delivery expenses.

Attorney’s Fee (USD)Official Fee (RUB*)
2.3.1. Registration, payment of the official fees and obtaining of the registration certificate25018,000
+1,000 for more than 5
2.3.2. Forwarding trademark certificate70–100

3. Complicated Prosecution

Each of the firm’s lead trademark counsels have dozens of years of experience as the RUPTO’s examiner: we really understand prosecution.

3.1. Amendments

Changing the applicant is possible. Taking over representation is recording attorney’s details and adding the mark to our database.

Attorney’s Fee (USD)Official Fee (RUB*)
3.1.1. Requesting a voluntary amendment to a pending application175According to statute of patent fees
3.1.2. Transferring a pending application to another applicant1752,800
3.1.3. Taking over representation of a pending applicationFREE

3.2. Office Actions

Trademarks are subject to substantive examination. The deadline for addressing office actions is three months and may be extended by up to six months or reinstated. The deadline for provisional refusals is six months for both national and Madrid applications.

Attorney’s Fee (USD)Official Fee (RUB*)
3.2.1. Sending a formal response to an office action or provisional refusal250
3.2.2. Serving a letter of consent, without translation into Russian350
3.2.3. Extending deadline for replying to an office action (per month)1002,000 per month, no more than 6 months
3.2.4. Reinstating a missed deadline for replying to an office action35010,000
3.2.5. Sending a motivated response to a provisional refusal500–2,000

3.3. Oppositions

Official oppositions exist since 2014 and are optional due to the RUPTO’s substantive examination. An opposition may be filed at any time before the statement of grant of protection is made. This uncertain deadline is often within nine months from the application filing date.

Attorney’s Fee (USD)Official Fee (RUB*)
3.3.1. Filing an opposition based on prior trademark rights500–2,000
3.3.2. Filing an opposition based on misleading consumers or other arguments500–2,000

3.4. Post-Examination

Refusals of grant of protection may be challenged in the Chamber for Patent (and Trademark) Disputes. The deadline is four months, plus six months for reinstatement. Decision of the Chamber may be appealed in the IP Court within three months. Then, cassation is available.

Attorney’s Fee (USD)Official Fee (RUB*)
3.4.1. Appealing a final decision in the Chamber for Patent (and Trademark) Disputes2,500–7,0009,000
3.4.2. Reinstating a missed deadline for challenging rejection35010,000
3.4.3. Appealing against a Chamber’s refusal in the IP Court up to the decision5,000–10,0006,000
3.4.4. Representing in the court of cassation against the decision of the IP Court5,000–10,0003,000

4. Renewal & Recordal

The firm has developed its own software solution for managing trademark deadlines, thus the renewals are always smooth and effective.

4.1. Renewals

Renewal is allowable during the last year of the ten-year term of protection. Any number of consecutive renewals is available. Reinstatement of a missed deadline for renewal is possible within six months. Taking over is recording attorney’s details and adding the mark to our database.

Attorney’s Fee (USD)Official Fee (RUB*)
4.1.1. Applying for renewal of a trademark registration25020,000
+ 1,000 for each of the classes more than 5
4.1.2. Reinstating a missed deadline for renewal1002,500
4.1.3. Taking over representation of a trademark registrationFREE

4.2. Recordals

It is mandatory to record any changes to trademark details as well as transfers of rights including non-contractual devolutions. A license may be exclusive or non-exclusive. The standard term is 5 years. It is possible to limit methods of use, goods/services, and territory.

Attorney’s Fee (USD)Official Fee (RUB*)
4.2.1. Requesting a voluntary amendment to a trademark registration2754,800
4.2.2. Recording a transfer of rights in relation to 1 trademark + each next mark400 + 8013,500 + 11,500
4.2.3. Recording an amendment to an agreement in relation to 1 trademark + each next mark370 + 853,300


* Any costs nominated in rubles are billed in US dollars (or euros if preferred) at firm’s internally generated exchange rate as of the service date.

** Fee may or may not be applied in each particular case at the attorney‘s discretion.


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Anastasia Danilevskaya

Junior expert

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