Trademark Protection

Formalising the use of another's brand. Trademark protection. In business several terms with different shades of meaning are used — logo, brand, trade mark. Russian law recognises only one: the trademark, which may take the most varied forms — verbal, figurative, three-dimensional, combined, and so on. By registering it, the owner gains legal protection for the brand, name, and mark, together with a means of individualising goods and an object of intellectual property that can generate income.

Ways to formalise use of another's brand

Under the Civil Code (part four of which governs intellectual property), a holder who has registered a trademark with Rospatent has a bundle of rights to use it. In particular, the holder may:

• Assign the exclusive right to the trademark to a third party under an assignment contract;

• Licence limited rights of use under a licence contract;

• Franchise — grant rights to the trademark within a ready business model under a commercial concession (franchise) contract;

• Consent letter — for short-term cooperation or a joint advertising project, a written consent to use the trademark is permissible; the law does not expressly provide for it but does not prohibit it. For longer cooperation, a licence contract is recommended to avoid third-party claims.

Key points in formalising use

• Licence and assignment contracts are concluded under general and special rules.

• Failure to observe written form makes the contract invalid — the law states this expressly.

• Assignment contracts and the grant of an exclusive right require registration with Rospatent. The licence contract itself is not registered, but for third parties the grant of the right of use becomes lawful from the moment of state registration. Conveniently, only part of the licence contract need be filed, preserving the confidentiality of certain terms.

• The exclusive right under an assignment passes from the moment of registration.

• Both contracts must be for consideration (mere consent to use may be free), so a price must be stated.

• Under a licence, the counterparty does not become the owner of the mark; the contract must state the subject (the trademark), all methods of use, the territory, and the term. A licence granted to more than one person is called non-exclusive.

• Remuneration may take various forms: a fixed fee or a percentage of revenue.

Consequences of unauthorised use

Unlawful use of a trademark entails civil, administrative (article 14.10 of the Administrative Code), and even criminal liability (article 180 of the Criminal Code). Most often the injured party seeks material compensation, which under article 1515 of the Civil Code may be up to 5 million roubles. The claimant may also demand the withdrawal of all goods bearing the unlawful mark from circulation. In addition, the injured party may apply to the competition authority (FAS) or the Intellectual Property Court to have the conduct recognised as unfair competition, with a turnover-based fine.

What this means for international brand owners

For foreign brands entering or operating in Russia, two things matter most: registering the trademark with Rospatent to secure the exclusive right, and formalising any use by partners through proper licence or franchise contracts rather than informal arrangements. Registration unlocks powerful remedies — statutory compensation up to 5 million roubles without proving loss, seizure of infringing goods, and unfair-competition claims. Informal use, by contrast, exposes both sides to third-party claims and invalidity.

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