If you want to get legal protection for your brand in the territory of CIS countries and, in general, foreign countries, you have two options: to register a trademark with a foreign patent office under the national procedure, avoiding Russian government structures, or submit a single international application through the Russian authority (Rospatent, Federal Service for Intellectual Property), specifying the countries you are interested in. The opportunity to register a trademark abroad is provided for by the Civil Code of the Russian Federation (Article 1507, "Trademark Registration in Foreign States and International Trademark Registration»)
We recommend our clients to use the international (so-called "Madrid") registration system, because, as a rule, it is more budget-friendly and much more convenient, although it has its deficiencies.
International application for trademark registration in CIS countries
The international trademark registration system was established in 1891 and is called "Madrid system" because it is based on two international treaties - the Agreement for the International Registration of Trademarks (concluded in Madrid on April 14, 1891) and the Protocol to the Madrid Agreement for the International Registration of Trademarks (Madrid, June 27, 1989). More than 90 countries are participating members of the system, including Russia (the full list of participating States is available on the portal of the World Intellectual Property Organization, http://www.wipo.int/madrid/en/members/). The system is managed by the International Bureau of the World Intellectual Property Organization (WIPO) maintaining the International register and publishing a Bulletin of the international trademarks. Despite of this fact, an international application from Russian applicants is submitted through Rospatent greatly facilitating the procedure. However, there is an additional Rospatent fee for checking and forwarding an international application to WIPO: 4900 rub. + 400 rub. for each ICGS class above 3.
International fees in foreign currency (CHF, Swiss francs) are additionally charged for filing an international application and an expert examination. The basic fee for filing an international application for a black-and-white trademark for one class of ICGS is 653 CHF, for each country 100 CHF or more - for some countries there are individual fees. For a colored trademark the basic fee is 903 CHF. As a rule, in CIS countries the standard fees are applied.
The application shall be considered by the patent office of each of the countries specified in the application separately and within different time periods (in accordance with the internal deadlines for reviewing the application in each country, approximately from 6 to 18-24 months).
Advantages of the international application
In general, the Madrid procedure is more convenient and profitable than the national one. These advantages are especially obvious when you plan to register a trademark on the territory of a great number of countries.
You'll have to submit only one application in one language to one office and pay one fee amount (instead of submission of separate applications in different languages to the offices of different countries, as well as the payment of fees in national currencies in the offices of each state). This will also let you to save on the services of local patent attorneys.
You will not have to follow complicated requirements and go through administrative formalities regarding the preparation of registration applications in each of the countries.
Besides, in the future you will have the opportunity to expand your registration to other countries by submitting a separate international form, and specify additional countries you are interested in.
Disadvantages of the international application
The main requirement to filing an international application is that you shall first of all either have a registration in your country of origin (i.e. a Russian trademark certificate), or at least apply for registration in the Russian Federation. The trademark specified in the international application shall be in complete accordance with a basic registration or a basic application; the applicant under the international application shall be the same person as the holder of the basic registration or the basic application; the list of goods and services for the international application shall correspond to the list of the goods and services specified in the basic application or the basic registration (or contain fewer items).
If an application is only submitted in Russia and it is rejected, this will directly affect the international registration, since there is a direct relationship for five years between national trademark protection and international protection. The international registration will be canceled, if the Russian application "dies off".
National registration in the CIS
If for some reason you do not wish to submit an international application, you can submit separate national applications in Armenia, Azerbaijan, Belarus, Kazakhstan, Moldova, Tajikistan, Turkmenistan, Uzbekistan, Ukraine, Georgia, Mongolia (countries directly included in the CIS and associated with the Commonwealth of independent States, but are not formally registered there).
Usually, the procedures for national registrations are equal. The key to succeed is to find reliable patent attorneys in every country you need. The international practice is so that foreign applicants may conduct business in foreign countries under the national procedure only through local patent attorneys, this is relevant for both Russia and the CIS.
Further, before submitting your application, you may use the services of the experts for a preliminary search in order to assess the chances for registration of your designation and its compliance with the national legislation. Then the application for registration is directly submitted in the national language (in the CIS, as a rule, you may also apply in Russian). The application is subject to an expert examination followed by either a decision on registration or a provisional refusal (you can prepare a reasonable response hereto). If the arguments stated in the response do not convince the expert commission, the final refusal of registration is made, which, usually, may also be challenged. If the registration decision is made, you shall pay the state duty for issuing the certificate.
You may apply a word, phrase, logo, or, for example, a three-dimensional designation for registration. The requirements to a trademark, absolute and relative grounds for refusal of registration in CIS countries, generally coincide with the provisions of the Russian legislation (due to the similarity of national legal systems).
Trademark registration in Belarus
The national authority of Belarus is a National Center for Intellectual Property. The procedure for trademark registration is regulated by the Law of the Republic of Belarus "On Trademarks and Service Marks" dated February 5, 1993, as well as the Regulation on the procedure for registration of a trademark dated December 28, 2009.
Requirements to the application and the documents attached hereto are posted on the Authority's website. The application shall be filed in Russian or in Belarusian. Verification of correctness of the documents and payment of the state duty for the formal expert examination takes 2 months from the date of submission. The term of substantive examination is 12-14 months.
The Center shall be provided with: an application, mandatory including an applicant, his/her location or place of residence, the claimed designation and the list of goods/services specifying the class (-es) of ICGS; the document confirming payment of the patent fee in the prescribed amount; additional copies of the trademark image; power of attorney when filing an application through a patent attorney. The price of the national registration in Belarus, including the service fee of a patent attorney, is approximately 500 USD.
Trademark registration in Kazakhstan
The Authority in Kazakhstan is the National Institute for Intellectual Property, a subordinate agency of the Ministry of Justice.
The trademark right is certified by an entry on registration in the State Register of Trademarks of the Republic of Kazakhstan and confirmed by an extract from the State Register. An application is submitted in a standard form in 3 copies or in a form of an electronic document certified by EDS. The application shall contain a request for an expert examination of the designation specifying the applicant, his/her residence or location; the claimed designation in 15 copies with a size of 8x8; a list in accordance with ICGS. The application may be submitted both in Kazakh and in Russian.
Standard terms: about a month or two for a formal examination, about a year for a substantive examination. Cost – approximately from 600 USD.
Trademark registration in Ukraine
The Authority in Ukraine is the Ukrainian Institute for Intellectual Property (Ukrpatent). The website of Ukrpatent is available in Ukrainian and in English. The application may be submitted to Ukrpatent in person or sent by mail. You can download a sample of an application and other documents and forms from the website of the Ministry of Economic Development and Trade of Ukraine.
On average, the trademark registration period is 15-18 months from the date of submission.
In general, the registration procedure is similar to that one in Russia. The cost of the national registration in Ukraine, including the service fee of a patent attorney, is approximately 500 USD.
Since it is quite difficult to register your brand in CIS countries independently (both under the international application and with the assistance of local patent attorneys), we will be happy to offer you our services. We have hundreds of successful trademark registrations for our clients in foreign countries.
