Special features of using trademarks and their protection in Russia
The general rule of Russian law is that any use of a trademark is prohibited without the permission of the rightholder, which is in line with international IP standards.
At the same time, there is one important exception to this rule, which is based on the principle of national exhaustion of a rightholder’s exclusive right to a trademark.
Under this principle, use of such trademark by other entities in respect to goods that were introduced into civil circulation on Russian territory directly by the rightholder or with his consent, is not deemed to be a violation of the exclusive right to the trademark.
In other words, if the rightholder manufactures goods outside Russia and imports these goods into Russia independently or through an official dealer, such goods are deemed to be introduced into civil circulation on Russian territory directly by the rightholder or with his consent.
Therefore, any market participant in Russia can buy these goods from an official dealer and resell them, including offering them for sale with indication of the righholder’s trademark on the reseller’s web site. Such use of a trademark is lawful and does not require consent from the rightholder. However, when reselling such goods it is not allowed to use the trademark for purposes of advertising and promoting the reseller as such.
For example, a phrase using the righholder’s trademark and indicating that the seller only sells quality goods marked by the oldest and recommended trademark in the field, can be assessed by a court as use of a trademark without the righholder’s permission for purposes of advertising and promoting the seller as such.
Furthermore, exclusive rights are breached if goods sold in Russia were purchased outside Russia. In this case, the righholder’s consent is required.
Therefore, the rightholder’s exclusive right to a trademark will not be breached if the trademark is used without his consent in respect to goods that were introduced into civil circulation on Russian territory by the rightholder or with his consent. This provision is an exception to the rule, to be used in particular cases, and is intended, on one hand, to protect the rightholder’s exclusive rights, and on the other, to help develop the market and competitive relations.
Should any questions arise in connection with the above or if you need any additional materials, please contact Irina Onikienko or Elena Berger, Saint-Peterburg Office of Capital Legal Services.
This Information letter keeps the clients of Capital Legal Services and other interested parties abreast of information that may, to any extent, affect their activity or cater to their particular interests. The opinions and commentaries expressed in this information letter shall not be deemed as legal opinions and do not cancel the need to obtain legal advice or legal opinion on separate issues.