FAQ: Registration of Dynamic Trademark
1. Is it possible to register a dynamic trademark in Russia?
Russian legislation does not establish a separate category of “dynamic” trademarks, nor does it provide for special fees for the registration of such marks. At the same time, the list of designations that may be registered as trademarks is open-ended. Under Article 1482 of the Civil Code of the Russian Federation, trademarks may consist of words, images, three-dimensional forms and other designations, or combinations thereof.
The FIPS Guidelines expressly provide for the possibility of registering changing designations. For example, changing trademarks have previously been registered in the form of a can releasing bubbles (Certificate No. 322035) and a television channel video intro (Certificate No. 249747, registration expired).
2. In what form should an application for a changing designation be filed?
At the same time, specific requirements apply to the filing of applications for changing designations. Pursuant to subparagraph 3 of paragraph 27 of the Requirements approved by Order No. 482 of the Ministry of Economic Development of Russia dated 20 July 2015 [1] (the “Requirements”), where the designation applied for is changing, the applicant must submit:
- a video recording on a digital medium containing a reproduction of the designation and making it possible to present comprehensively and clearly the nature and sequence of its changes;
- a printed frame-by-frame reproduction of the designation.
Accordingly, an application will require the original video file of the designation and a sequence of its key frames. Information on the requirements concerning the size and formats of files that may be submitted to Rospatent is available in the FAQ section of the Rospatent website.
3. What documents are required to file an application?
Under Article 1492 of the Civil Code of the Russian Federation, a trademark application must contain:
- an application for the state registration of the designation as a trademark, specifying the applicant and its place of business;
- the designation applied for (a video recording and a frame-by-frame reproduction must be submitted in accordance with subparagraph 3 of paragraph 27 of the Requirements);
- a list of goods and/or services grouped according to the classes of the Nice Classification;
- a description of the designation applied for.
Where an application is filed through a patent attorney, a document confirming the patent attorney’s authority must also be submitted. The application and accompanying documents must be prepared in accordance with the Requirements.
An application may be filed directly with Rospatent, by mail, by fax followed by submission of the originals, or electronically via the Rospatent website or the Unified Portal of State Services (paragraph 9 of the Rules [2]).
4. If the applicant is a foreign company, is a patent attorney required and how should the power of attorney be executed?
- Pursuant to paragraph 2 of Article 1247 of the Civil Code of the Russian Federation, foreign legal entities must conduct proceedings before Rospatent through patent attorneys registered with Rospatent, unless otherwise provided by an international treaty of the Russian Federation.
- The patent attorney’s authority is confirmed by a power of attorney. For ordinary trademark registration proceedings, a power of attorney may be executed in simple written form and signed by an authorized representative of the applicant. As a rule, notarization of a power of attorney granted to a patent attorney within the scope of their authority is not required under Federal Law No. 316-FZ of 30 December 2008 “On Patent Attorneys.”
- If the power of attorney is executed in a language other than Russian, a Russian translation must be provided. Article 1492 of the Civil Code of the Russian Federation expressly requires documents accompanying an application and executed in a foreign language to be translated into Russian.
- An apostille or consular legalization of the power of attorney is not required. However, where the future trademark owner is a legal entity, the power of attorney must be duly signed by a person authorized to act on behalf of the company under the laws of the country of its incorporation.
- A duly certified copy of the power of attorney may be submitted when documents are filed in paper form [3]. For electronic filing, an electronic copy of the power of attorney is sufficient.
5. What is the procedure and how long does it take?
1. Receipt and registration of the application
The application is registered within 5 business days from the date of filing (paragraph 12 of the Rules).
2. Publication of information about the application
Information about the registered application is forwarded for publication no later than one business day after completion of the receipt and registration process. The maximum period for publication of the information in the official bulletin [4] is 15 business days from the date on which the information about the application is received for publication (paragraph 66 of the Administrative Regulations) [5].
Accordingly, the application is published before substantive examination of the designation is conducted.
3. Verification of payment of fees and formal examination
After payment of the required fees has been confirmed, a formal examination is conducted. Verification of the availability of the required documents and compliance with the applicable requirements is carried out within one month from the date of successful completion of the fee payment verification (Article 1498 of the Civil Code of the Russian Federation).
4. Substantive examination of the designation
Pursuant to Article 1499 of the Civil Code of the Russian Federation, Rospatent examines whether the designation complies with the requirements of the law, including assessing its distinctiveness and whether there are grounds for refusal of registration, including similarity to previously filed and registered designations. The maximum period for substantive examination is 12 months (paragraph 100 of the Administrative Regulations).
The maximum overall period for the provision of the state service, as specified in the Guidelines, is 18 months and 2 weeks (paragraphs 13–15 of the Administrative Regulations). In practice, where the application package has been properly prepared, the procedure may be completed in approximately 6–9 months. However, this period is not guaranteed and may be extended if additional materials are required.
An accelerated examination procedure is also available as a paid FIPS service [6]. If the examination is successfully completed and the documents are properly prepared, the indicative registration period is up to 3.5 months.
6. Official fees [7]
For one Nice Classification class and no more than 10 goods/services in the class, the fees are as follows:
| No. | Provision of the Fees Regulation | Legally significant action | Fee |
|---|---|---|---|
| 1 | subparagraph 2.1 | Filing of the application and formal examination | RUB 4,000 + RUB 1,000 for each class above 1 |
| 2 | subparagraph 2.4 | Substantive examination of the designation | RUB 13,000 + RUB 2,500 for each class above 1 + RUB 500 for each good/service in a class above 10 |
| 3 | subparagraph 2.11 | Registration of the trademark and issuance of the certificate in electronic form | RUB 18,000 + RUB 2,000 for each class above 5 |
For one class and up to 10 goods/services, the total amount of official fees is RUB 35,000.
If more than 10 goods/services are specified in one class, RUB 500 is added to the substantive examination fee for each item above 10.
7. Electronic or paper certificate?
As a general rule, the trademark certificate is issued in electronic form. The registration of a trademark and issuance of an electronic certificate are subject to the fee specified in subparagraph 2.11 of the Fees Regulation.
If the trademark owner requires a paper certificate, it is issued upon a separate request subject to payment of an additional fee of RUB 3,000 (subparagraph 2.14 of the Fees Regulation).
Legal references
- Requirements for Documents Contained in an Application for State Registration of a Trademark, Service Mark or Collective Mark and Accompanying Documents, and the Forms Thereof, approved by Order No. 482 of the Ministry of Economic Development of Russia dated 20 July 2015 (as amended).
- Rules for Preparing, Filing and Examining Documents Serving as the Basis for Legally Significant Actions Related to the State Registration of Trademarks, Service Marks and Collective Marks, approved by Order No. 482 of the Ministry of Economic Development of Russia dated 20 July 2015.
- Chapter 2 of the Guidelines for Administrative Procedures and Actions within the Provision of the State Service for the State Registration of a Trademark, approved by Order No. 12 of the Federal Institute of Industrial Property (FIPS) dated 20 January 2020 (as amended on 25 March 2022).
- Official bulletins are available on the FIPS website.
- Order No. 483 of the Ministry of Economic Development of Russia dated 20 July 2015 (as amended on 7 June 2017) On Approval of the Administrative Regulations of the Federal Service for Intellectual Property for the Provision of the State Service for the State Registration of a Trademark, Service Mark or Collective Mark and Issuance of Certificates for a Trademark, Service Mark or Collective Mark, and Duplicates Thereof.
- Services Provided by the Federal State Budgetary Institution “Federal Institute of Industrial Property” on a Paid Basis, approved and put into effect by Order No. 80/36 of the FIPS Director dated 14 March 2012.
- Regulation on Patent and Other Fees, approved by Resolution No. 941 of the Government of the Russian Federation dated 10 December 2008.