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- Trademarks
  1. The representative of the Russian Federation noted that protection of trademarks and service marks was regulated by the provisions of Chapters 69 and 76 of the Civil Code. Chapter 76 "Rights to means of individualization of legal entities, goods, works, services, enterprises and information resources" included provisions concerning rights to a firm name, to a trademark and service mark, to a designation of the place of origin of goods, and to a commercial designation. In contrast to results of intellectual activity, means of individualization were assigned only for use in commercial circulation and were protected only in order to defend rights of entrepreneurs.
  2. He further noted that the rules of this Chapter stipulated that the grounds for exclusive rights for the firm name appeared with State Registration of the legal entity which owned that firm name. Direct prohibition on disposal of the exclusive right to a firm name including by means of its alienation or the granting of the right on disposal to another person on a basis of licence contract (Article 1474) represented an important change in the legal treatment of firm names. Chapter 76 also contained provisions concerning commercial designations, which in contrast to a firm name, individualizing a legal entity, individualized a manufacturing enterprise (shop, restaurant, factory etc.). In accordance with the Civil Code norms, a commercial designation might be used not only by commercial organizations, but also by non-commercial organizations, carrying out commercial activity as well as by individual entrepreneurs. Commercial designations were not required to be registered and were not subject to mandatory inclusion into the uniform State register of legal entities. Chapter 76 set-out general provisions on the scope of the exclusive right to a commercial designation and limitations for disposal of that right. The right to use a commercial designation could be granted to another person only with the enterprise which used it as an individualization (Article 1539). In his view, the provisions of Chapters 69 and 76 of the Civil Code conformed to the provisions of the Paris Convention and the relevant provisions of the WTO Agreement on TRIPS, including those which governed protection of well-known marks with respect to non-homogeneous goods.
  3. The representative of the Russian Federation explained that according to Article 1477.1 of the Civil Code, trademarks were intended to distinguish the goods of one producer from the goods of another producer by the following words: "indication serving the individualization of goods of legal persons or individual entrepreneurs". The concept of "likelihood of confusion" was reflected in Article 1483.6 of the Civil Code by means of prohibition of registration of trademarks" that were the same as, or similar to the point of confusion" with trademarks and other indications owned by other persons. The rights granted to the holder of exclusive rights to trademarks, were listed in detail in Article 1484.2 of the Civil Code. Article 1484.3 of the Civil Code prohibited use, without the permission of the right-holder, of indications that were similar to the trademark of the right-holder with respect to the goods for which the trademark was registered or goods of the same type, if as the result of such use a likelihood of confusion would arise. According to Article 1248.1 of the Civil Code, disputes connected with the protection of infringed or contested intellectual rights, including rights to trademarks (see also Article 1226 of the Civil Code), were to be considered and decided by a court. Dispute settlement procedures including provisions on the right of interested parties to provide their evidence on the issues in dispute were set-out in the procedural legislation of the legal system of the Russian Federation. The period for termination of protection based on non-use of the trademark (Article 1486.1 of the Civil Code) was in line with Article 19.1 of the WTO TRIPS Agreement.
  4. The representative of the Russian Federation also stated that the system of means of individualization prescribed by the Civil Code was to permit the individualization of different subjects and objects of economic turnover. The principle of "seniority" was stipulated by Article 1252.6 of the Civil Code and sufficiently secured interests of right-holder in respect of an earlier registered trademark. Moreover, Articles 1476 and 1541 of the Civil Code stipulated parity of rights to different means of individualization (commercial designation, firm name, trademark). It also provided precise provisions on the competences and interests of the respective right-holders.
  5. Some Members expressed concern regarding the provisions of the Civil Code granting parity of rights as between trademarks and domain names. They noted that these names were not recognised as intellectual property in the WTO TRIPS Agreement, or under other intellectual property Agreements. In these Members' view, the existence of a domain name that>
  6. In response to these concerns, the representative of the Russian Federation confirmed that Article 1483.9 (3) of the Civil Code had been amended to exclude domain names. Thus a domain name, the rights to which arose before the priority date of a trademark or service mark application would not serve as a ground for refusal to register the trademark or service mark. The Working Party took note of this commitment.
  7. In response to some Members' concerns regarding firm names and commercial designations the rights to which arose in the Russian Federation before the priority date of the trade mark application, the representative of the Russian Federation explained that such firm names or commercial designations could be the ground for refusal to register a trade mark only with respect to goods of the same type and if the indication was the same as or similar to the point of confusion with the firm name or commercial designation. Thus, simple registration of a firm name or commercial designation would not be sufficient; likelihood of confusion would be necessary.
  8. In respect of well-known trademarks, the representative of the Russian Federation explained that Chapter 76 of the Civil Code included a definition of a well-known trademark, and provided for protection of well-known trademarks. The Civil Code did not require the registration of well-known trademarks. Any trademark claiming to be well-known would be recognised as such by a competent authority, i.e., Rospatent. In his view, this procedure for granting protection was fully consistent with Article 6bis of the Paris Convention. The provisions of criminal and civil legislation applicable to "ordinary" trademarks were also applicable to well-known trademarks. Among the remedies available against infringers were recognition of the right, prevention of infringement, compensation of losses, statutory compensation, and criminal and administrative liability.
  9. Some Members of the Working Party continued to have concerns regarding the requirement for well-known marks to apply for and be recognised by Rospatent as well known marks. Article 1508 of the Civil Code requires that in order to receive well-known mark protection, application must be made in a separate action before the Chamber of Patent Disputes of Rospatent, with the desired result being that the mark was then recognised and entered upon a list as being well known. They cited instances where marks recognised as well-known in many WTO Members, and which enjoyed a wide reputation in the relevant sector of the public in the Russian Federation, had been denied such recognition in the Russian Federation. In certain instances, an affirmative decision by the Chamber of Patent Disputes had been overturned, sua sponte, by the Director of Rospatent.
  10. The representative of the Russian Federation responded that contesting the registration or termination of a legal protection of trademark before the Chamber of Patent Disputes of Rospatent was a kind of preliminary consideration of disputes. It did not prevent interested parties from appealing the decision of Rospatent on the status of the mark to a court (Article 1248.2 of the Civil Code). In addition, Article 1248.1 provided for judicial consideration of disputes connected with the protection of infringed or contested intellectual property rights and cited paragraph 1 of Article 11 of the Civil Code. Moreover, there was a judicial practice in cases that provided protection to well known trademarks of foreign right-holders against use by Russian infringers (for example, the decision of the Arbitrage Court of Moscow region on the case No. KA-A40/658-99 as of 17 March 1999).
  11. In accordance with the Russian legislation, an indication (sign) that was used as a trademark or registered trademark could be considered a well-known mark on the basis of decision of the Federal body responsible for intellectual property issues that was also a basis for including of the well-known trademark on the List of Well-Known Trademarks in the Russian Federation (hereafter:  the List).
  12. The representative of the Russian Federation explained that, in his view, including a well known trademark on the List>inter alia, advertising budget (proved by annual financial reports), degree of familiarity of the mark to customers, and the information on countries where the mark was well-known.
  13. The representative of the Russian Federation confirmed that the Civil Code did not contain any norms that fixed the links between granting legal protection to a trademark, which was considered well-known, and its inclusion on the List. Thus, if the owner of such a trademark sued for infringement of his mark, the Court would decide if the rights of the owner of the trademark were infringed independently of the fact of inclusion of this trademark on the List. The decision of the Court, however, would be limited in its effect to the specific case. The Working Party took note of this commitment.

- Geographical Indications
  1. The representative of the Russian Federation stated that prior to 1992, designations of the place of origin of goods in the Russian Federation were protected by considering the use of false or misleading designations of the place of origin of goods as a form of unfair competition or a violation of consumer rights (this was enforced by antitrust (antimonopoly) agencies or courts respectively). Since 1992, designations of the place of origin of goods were accorded special protection under Law of the Russian Federation No. 3520-1 of 23 September 1992 "On Trademarks, Service Marks and Appellations of Origin". He further clarified that the term "designations of the place of origin of goods", although translated in different ways, would have the exact same meaning as the term "geographical indications" as defined under the WTO TRIPS Agreement once the Russian Federation amended Article 1516 of the Civil Code. From 1 January 2008 the protection of designations of the place of origin of goods was provided for under Section 3 of the Chapter 76 of the Civil Code, which prohibited registration of trademarks containing indications (signs) of the place of production of goods as well as trademarks containing false indications or indications which might mislead the customer as to the identity of the producer of goods. Protection of designations of the place of origin of goods was provided for all kinds of goods, such as food and manufactured goods, including handicrafts, alike.
  2. He further explained that the rules on legal protection of designations of the place of origin of goods were transmitted substantially to the Civil Code from Law of the Russian Federation No. 3520 1 of 23 September 1992 "On Trademarks, Service marks and Appellations of origins of goods" which thoroughly regulated these objects. The changes affected basically the wording and placement of certain articles in order to make the provisions on trademarks and designations of the place of origin of goods consistent with common provisions on protection of intellectual property rights. At the same time, the application of the reciprocity principle with respect to registration of designations of the place of origin of goods had been removed from the Civil Code and the possibility to appeal the grant of protection for designations of the place of origin of goods when the use of designations of the place of origin of goods could mislead the consumer regarding the good or its producer because of the existence of a trademark which was protected prior to the protection of the designations of the place of origin of goods (in accordance with Article 16 of the WTO TRIPS Agreement) was provided.
  3. Some Members of the Working Party noted that signs containing geographical elements could be distinctive and thus capable of distinguishing the goods and services of one undertaking from those of another undertaking. Such signs must be eligible for registration as a trademark. These Members expressed concern that the Civil Code did not adequately protect rights in trademarks with respect to registration of geographical indications that could be confusingly similar to the registered mark.
  4. The representative of the Russian Federation stated that the provisions ensuring the protection of designations of the place of origin of goods in the Russian Federation, in his view, complied with the Paris Convention and the relevant provisions of the WTO TRIPS Agreement. In Article 1252.6 of the Civil Code, which established the principle of "seniority" for a few identical or similar to the point of confusion means of individualizations, designations of the place of origin of goods were not mentioned. The representative of the Russian Federation further stated that the conditions of registration of designations of the place of origin of goods depended, in general, only on the fact that the goods produced in a particular locality had special characteristics and on the location of the producer of these goods in this locality (Article 1516.1 of the Civil Code). The provisions of the Civil Code would permit the holder of an earlier-in-time mark to object to the registration of a designation of the place of origin of goods, or request its removal from the register. Furthermore, registration would not be granted to a designation of the place of origin of goods, inter alia, where, in light of the reputation and renown of a trademark and the length of time it had been used, registration of the designation of the place of origin of goods was liable to mislead the consumer as to the true identity of the product and therefore to create a likelihood of confusion with an earlier-in-time trademark. He noted that a WTO dispute settlement panel found that a similar approach did not contradict provisions of Part III of the WTO TRIPS Agreement (see WT/DS174/R).
  5. Some Members of the Working Party expressed concerns considering that Article 1516 of the Civil Code limited the definition of designations of the place of origin of goods so that it did not comply with Article 22 of the WTO TRIPS Agreement.
  6. In response, the representative of the Russian Federation informed Members of the Working Party according to Article 1516.1 of the Civil Code that "traditional" designations may be granted protection in cases where they contain "a modern or historical, official or unofficial, full or abbreviated designation" of a country, city or rural settlement, locality, or other geographic locale and also a designation derived from such an indication and having become known as the result of its use with respect to goods the special characteristics of which were exclusively or mainly determined by the natural conditions and/or human factors characteristic for the given geographic locale. At the same time neither the WTO TRIPS Agreement, nor the Lisbon Agreement stipulated directly unconditional protection of any "traditional" designation. The definition of designation of the place of origin of goods to which legal protection was granted (Article 1516.1 of the Civil Code) included the condition that the designation was to be known as the result of its use. Thus if "known" was understood as an abstract characteristic, as the result of its particular characteristics, the respective designation certainly would be granted legal protection. Article 1516.1 of the Civil Code also provided for the protection of "traditional indications" within the institute of "designation of the place of origin of goods" at any rate if "historical designation" of the respective place of origin was understood within the meaning of "traditional indication". He further noted that requiring a Member to protect all "indirect indications" as a "designation of the place of origin of goods" in his view did not follow directly from the substance of Article 22.1 of the WTO TRIPS Agreement.
  7. In spite of the fact that the representative of the Russian Federation had clarified that the Russian Federation defines the term "designation of place of origin" consistently with Article 22 of the WTO TRIPS Agreement, some Members expressed concerns regarding the compatibility of the provisions of Article 1516 of the Civil Code with Article 22.1 of the WTO TRIPS Agreement. According to Article 22.1, an indication did not necessarily have to be a geographical place to be protected as a geographical indication. A geographical indication was any kind of designation which points to a given country, region or locality and which possesses a specific quality, reputation or other characteristics which were essentially due to a particular geographical environment, but not necessarily the name of a geographical place: it may be a geographical name or an indication that>
  8. The representative of the Russian Federation responded that Article 1516.1 stipulated the connection between the goods and the designation of the place of origin of goods through the indication of "special characteristics" of the goods, which were "exclusively or mainly determined by the natural conditions and/or human factors characteristic for the given geographic locale". He explained that this definition not only>
  9. Recognizing the concerns of Members of the Working Party in respect of the scope of protection of geographical indications in the Russian Federation, the representative of the Russian Federation confirmed that Article 1516 of the Civil Code had been amended to include the definition of geographical indications as set-out in Article 22 of the WTO TRIPS Agreement to state that the term "designation of place of origin" would also cover the indications which identify a good as originating in the territory, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good was essentially attributable to its geographical origin without necessarily including the name of a geographical place.
  10. Some Members expressed concern regarding the provisions of the Civil Code on obtaining registration of a foreign indication of place of origin and requested clarification of procedures that would apply in the case of a Member that provided protection for geographical indications through means other than registration, e.g., through forms of trademarks, unfair competition laws, and other means.
  11. In response, the representative of the Russian Federation explained that Article 1517.2 of the Civil Code does not require that protection for a designation of the place of origin of goods be provided through registration in the country of origin of the geographical indication. He noted that some Members had implemented the TRIPS section on geographical indications through legislation on unfair competition, on the protection of certification marks, implementation of norms of common law, and other means. To confirm protection in the country of origin, an applicant for protection in the Russian Federation could submit registration certificates, a court decision or other evidence establishing that the indication was protected in its country of origin. The Ministry of Education and Science had issued Order No. 328 of 29 October 2008 which established procedures for a
    right-holder to submit such documents. The Working Party took note of this commitment.