Protection of intellectual property in Russia and CIS

Mainstream

The protection of intellectual property in Russia and CIS countries is not just about filing applications. It is the creation of a legal asset that works for the business and withstands market pressure.

The question is not whether a patent or a certificate can be obtained. The main question is whether the chosen security system will provide real protection and the ability to commercialize the product or brand in all relevant business jurisdictions.

Therefore, an effective IP protection strategy in the region begins with three checks:

1. What facilities should be protected and where they will be used.
2. Which route of registration will give the maximum coverage, legal stability and economic feasibility.
3. How license agreements will be concluded and registered so that rights are truly transferred and transactions are protected.

If these three issues are not worked out in advance, businesses risk obtaining paper patents and marks that do not block competitors, or even losing rights due to unregistered contracts.

When it is necessary to protect IP in Russia and CIS

Intellectual property protection is required if a business:

• Brings a new product, technology or brand to the markets of the Russian Federation and CIS countries;
• Planning production, distribution or franchising in the region;
• concludes license agreements, commercial concession agreements or alienates rights;
• participates in M&A transactions where the value of the company is directly dependent on the IP portfolio;
• detected copying of brand, packaging, technology by local players;
• Is facing problems with parallel imports and wants to build legal control over distribution
• needs customs protection (TROP) on the border of the Russian Federation and the EAEU countries;
• Negotiates with investors or banks who need confidence in the purity and strength of rights;
• develops IT solutions, industrial design, selection achievements or production secrets (know-how), requiring a special regime of protection;
• assesses risks before entering highly competitive markets (pharma, FMCG, mechanical engineering, oil and gas equipment).

The mistake most companies make

Many companies start with the question:

How fast and cheap is it to register a trademark?

That's the wrong first question.

The right question is:

How can we build a security system that creates a real competitive advantage and is resistant to challenge in all targeted jurisdictions?

Sometimes the best result is a Eurasian patent instead of a few national ones. Sometimes, on the contrary, national registration in a particular country, taking into account local judicial practice. Sometimes it is a strategy of deliberate division of rights and a complex system of licensing contracts registered strictly by law to block competitors from accessing the market.

IP registration in Russia and the CIS requires not an administrative “apply” response, but a commercial strategy for managing an intangible asset.

Step 1. To carry out inventory and determine objects of protection

The first thing to do is not to look for a patent attorney, but to clearly describe what exactly constitutes the intellectual value of the business.

Key questions for inventory:

• Names, logos, slogans, packaging (trademarks).
• Technical solutions, devices, methods, substances (inventions, utility models).
• Appearance of products (industrial designs).
• Software, databases, multimedia (copyright and possible patent protection of elements).
• Commercial information, recipes, techniques (know-how).
• Domain names and equated to means of individualization designations.

For each asset, the following are determined: where it is already in use or will be used, how easy it is to copy and what form of protection is optimal.

Step 2. Conduct a preliminary search and assess security

Before filing an application, a search for identity and similarity to the degree of confusion (for trademarks), as well as a patent search by prior art (for inventions and utility models) is required.

Not only the registers of Rospatent and the Eurasian Patent Office, but also the national registers of the CIS countries, as well as the actual use of designations on the market, should be checked - unregistered designations can also create risks if they have become known.

At this stage, it is critical to get an objective picture: which classes of the ICGS are really free, how broad the claims can be obtained and whether the registration will infringe the rights of third parties. A search error can result in a denial, a protracted challenge, or even a violation claim.

Step 3. Selecting a Registration Route

This is a central strategic decision. For each asset and market, it can be the optimal route.

Basic options:

• National registration in Russia through Rospatent is the basic protection for the Russian market.
• National registrations in certain CIS countries (Kazakhstan, Belarus, Uzbekistan, Azerbaijan, Armenia, Kyrgyzstan, Tajikistan) – each country has its own patent office, legislative nuances and judicial practice.
• Eurasian patent (according to the procedure of the Eurasian Patent Organization, EAPO) is a single patent for an invention, valid in several states-participants of the Eurasian Patent Convention. For utility models, the Eurasian system is not yet working. for industrial designs is introduced. This is often more profitable than parallel national patents, but requires a correct formula and consideration of limitations.
• The Madrid System for Trademarks allows you to submit one international application indicating the Russian Federation and a number of CIS countries that are parties to the Madrid Protocol. This simplifies administration, but does not eliminate the need to understand the national characteristics of the examination and the procedure for recognition of rights.

The choice of route depends on: The geography of the market, budget, the speed required, tolerance of the risks of centralized challenge and enforcement practices in each country.

Step 4. Properly prepare the application: lists, formula, priority

The force of the future protection document is laid at the stage of drawing up the application.

For trademarks, it is critically important:

• It is correct to formulate a list of goods and services according to the ICGS – not “for growth” without grounds (the risk of termination of rights for non-use), but also without unjustified narrowing, which leaves competitors with loopholes.
• Choose the right type of sign (verbal, pictorial, combined, voluminous) and the form of its presentation.
• If necessary, submit the mark in several versions in different languages (Cyrillic, Latin) if the brand is used in a bilingual environment.

For inventions and utility models:

• The formula should provide a real amount of protection, covering not only the specific product, but also possible workarounds that competitors can apply.
• The description and drawings must fully disclose the essence so that the patent cannot be invalidated due to insufficient disclosure.

Step 5. Pass the examination and get a security document

After submission, formal examination and substantive examination begin. In Rospatent and CIS agencies, this process has its own specifics: requests for expertise, notifications, the possibility of dialogue with an expert.

Request strategy:

• Not to ignore or respond formally, each answer can narrow the scope of rights.
• If necessary, use the division of the application, the dedicated applications, the conversion of the invention into a utility model to maintain priority and obtain at least some protection.
• Consider that the expertise in different CIS countries may evaluate the same arguments differently; Coordination of actions in parallel registrations is required.

Getting a trademark certificate or patent is an important, but not a final, milestone. Rights must be administered and maintained.

Step 6. Execution of license agreements and alienation of rights strictly by law

This is one of the most underrated stages. In Russia and most CIS countries, the principle of mandatory state registration of administrative transactions with industrial property objects is applied.

The key rule is: License agreement, alienation agreement of exclusive right, commercial concession (franchising) agreement for trademark, patent, utility model or industrial design shall be subject to mandatory registration with Rospatent or the relevant national office. An unregistered contract is considered invalid for third parties and, in fact, does not give rise to legal consequences for the licensee.

This means that:

• The Licensee may not make claims against infringers on his own behalf.
• Payment of royalties may be recognized by the tax authorities as unjustified in the absence of registration.
• In case of conflict between the parties, a contract that has not been registered gives weak protection.

Therefore, the registration of license agreements should include:

• clear definition of the subject and scope of the transferred rights (territory, methods of use, term);
• Sublicense conditions;
• the procedure for payment of remuneration (mutual contribution, royalty, combined);
• Quality control for trademarks;
• Technical documentation for patents;
• conditions of termination and reverse transfer of rights;
• Immediate submission of the application for registration to the office.

In the CIS countries there are features: For example, in Kazakhstan and Belarus registration is also required, but there are nuances on the terms, conditions and consequences. Cross-border licenses require an analysis of the foreign exchange legislation and tax aspects in each country.

Step 7. Monitoring and maintaining rights in force

Registration is not a static asset. To maintain its strength and market value, it requires:

• Payment of annual patent fees in all countries of presence. Missing a term even in one country can lead to irreversible loss of rights.
• Use of the trademark in the form in which it is registered in respect of goods from the list. Non-use for three years (in most jurisdictions) may result in early termination of the rights in the person’s claim.
• Monitoring of registers and the market for filing competing applications, registration of similar designations and violations.
• Timely extension of the term of the exclusive right (for trademarks – every 10 years).

Without a monitoring system, even the strongest patent or mark can be lost or devalued by competitors.

Step 8. Develop a strategy for protection against violations and dispute resolution

The protection of intellectual property in Russia and the CIS is implemented through several channels:

• Administrative procedure – Chamber for Patent Disputes of Rospatent, similar bodies in the CIS countries, where you can challenge or refuse registration.
• Courts – in Russia, it is the Court of Intellectual Property and Arbitration Courts; In other countries, there are specialized collegiums or economic courts. It is important to take into account differences in proof, calculation of losses and recovery of compensation.
• Customs measures – the introduction of objects in the customs register (TRIP) to suspend the release of counterfeit goods on the border of the Russian Federation and the EAEU countries.
• Interim measures – arrest of products, interim determinations before filing a claim, especially in cases of risk of disappearance of counterfeit.
• Criminal protection - in cases of repeated violation, major damage.

A strong defense strategy suggests that a “dispute readiness dossier” is formed at the registration stage: fixation of evidence of use, notarial inspections of sites, control purchases, agreements with distributors on the provision of information.

Comparison of registration routes: pick

The choice of route is always a compromise between budget, the coverage required and tolerance for the risks associated with the centralization of rights.

Typical errors in IP protection in Russia and CIS

1. No search before filing, the Company applies for a mark that is already registered by a local player in the correct class. The result is guaranteed rejection and loss of time.

2. Savings on classes of the ICGU and countries of the list of "three classes for all occasions" or one country instead of the entire CIS market lead to the fact that the brand remains unprotected in a growing segment or a neighboring jurisdiction, where competitors later enter.

3. The Company patents the invention separately in the Russian Federation, Kazakhstan, Belarus, incurring increased costs and losing the advantages of a single Eurasian patent.

4. Unregistered license agreements the Parties sign “all right”, but do not apply for registration. In a conflict, the licensee finds that he cannot protect the market, and the licensor cannot recover royalties in full.

5. The formula is written off from the description of a specific product, rather than built around the principle of operation, which allows competitors to easily “bypass” the patent, making minor changes.

6. The Company actively uses the logo, but slightly modified, which is the use of an unregistered designation and creates a risk of termination of rights to the registered mark.

7. There is a lack of coordination between the countries of law in Russia, and in Kazakhstan registration is “forgotten”. As a result, a local partner or distributor registers the brand itself, and it costs a huge effort to get it back.

8. Even large companies lose their trademarks due to non-use claims because they have not been able to prove the real use of the mark in a particular country for three years.

Checklist of the company before the start of IP registration in the region

Before starting the process, answer 15 questions:

1. What designs, technologies and designs are the most competitive?
2. In which markets will they be commercially used in the next 3-5 years?
3. Has a full preliminary search been carried out in Rospatent and CIS departments?
4. Are the key classes of the ICGS free and how broad can a formula be obtained?
5. Which registration route (national, Eurasian, Madrid) is the best for each asset and market?
6. Who is the appropriate applicant and will there be any problems with the rights to service works and inventions?
7. Are the lists and formulas correctly compiled, taking into account the workarounds of competitors?
8. Is there a budget for examination, fees and responses in all countries?
9. Is there a mechanism for monitoring applications and the market after registration?
10. How will license and distribution agreements be formalized, and who will be responsible for registration with Rospatent and foreign agencies?
11. Are the license agreements stipulated for quality control, scope of rights, sublicenses and termination?
12. Is the actual use of the mark and the payment of patent fees without permits ensured?
13. Are IP objects included in customs registers to combat counterfeiting?
14. Whether a "dispute readiness dossier" has been collected: evidence of use, monitoring, recording of violations?
15. Have the tax and currency features of cross-border license payments in the CIS countries been taken into account?

FAQ

Can you register a trademark for all CIS countries at once? However, you can use the Madrid system, specifying the participating countries (Russia, Belarus, Kazakhstan, Armenia, etc.), or simultaneously submit national applications. The choice depends on the plans for each specific market.

It gives a single procedure of examination and patent, valid in several countries, which is often cheaper and easier to administer. However, when a centralized challenge is lost, patents are lost in all countries, so the strategy must take into account this risk.

Is it necessary to register a license agreement with Rospatent?Yes, if the contract concerns a trademark, invention, utility model or industrial design. Without registration, the contract does not entail legal consequences for third parties, the licensee does not receive legal rights to protection, and the tax authorities may refuse to account for royalty costs.

What to do if a distributor in Kazakhstan has registered our brand for himself? A challenge strategy should be urgently prepared: filing an objection or claim for invalidation of registration on the basis of unfair competition and violation of the rights of the right holder. In parallel, to negotiate the assignment. Success depends on evidence of an earlier introduction of the brand and a contractual relationship with the distributor.

The right holder may use the national principle of exhaustion of rights, enshrined in the Russian Federation (with some exceptions). Registration of a trademark, its introduction in the TRIP and systematic work with customs allow blocking the import of gray imports if it is carried out without the consent of the right holder.

Is it possible to patent software in Rospatent?Programs as such are protected by copyright. But you can patent a technical solution implemented with the help of a program (method), or a device running under the control of the software. The formulation of the application requires high qualifications, so as not to receive a refusal on the grounds of a “computer program”.

Related services

• Registration of trademarks in the Russian Federation and CIS
• Patenting of inventions, utility models, industrial designs (national and Eurasian)
• License agreements and agreements of alienation of IP (development, registration)
• Due Diligence of Intellectual Property
• Disputes on IP protection (court, Patent Disputes Chamber, customs measures)
• Issues of parallel import and exhaustion of rights in the EAEU
• Cross-border commercial transactions and structuring IP ownership

Related material

• How to draw up a trademark license agreement for Russia and CIS countries
• Eurasian patent vs national patents: What to Choose for Pharmacy and Engineering
• Parallel imports to Russia after 2022: risks and strategies
• How to avoid losing your trademark due to non-use: RF and RB practices
• Protection from brand registration by a distributor in the CIS countries
• Tax aspects of licence payments in cross-border transactions
• Customs protection of IP: TROIS in Russia and analogue in the EAEU

Conclusion

The protection of intellectual property in Russia and the CIS requires not a single registration, but a strategic approach to the management of intangible assets.

A strong security system is based on accurate inventory of assets, preliminary search, thoughtful choice of registration route, flawless registration of licensed and alienated transactions with mandatory state registration, as well as on constant monitoring of the market and readiness for legal protection.

The winner in this market is not the first person to apply. The winner is the one who understands in advance where exactly protection is needed, how to obtain it with the maximum amount of rights and how to turn a registered IP object into a real tool for controlling the market and making profits.