Trademark Survival Guide: Protecting Your Assets in a New Reality

It has been three years since many foreign right holders left the Russian market.  For the professional community this is a sign that many objects of intellectual property, especially clients’ trademarks, are at high risk: according to Article 1486 of the Civil Code of the Russian Federation, legal protection of a trademark may be terminated early due to non-use for three consecutive years.

For those who left the market in 2022–2023 and put their brands on hold, the “hour of reckoning” has come or will come in the next few months. If a product is not on the shelf or advertised in the Russian Federation, the mark used to label it is considered “dormant,” and any interested party — from competitors looking to fill the void to “patent trolls”— can file a lawsuit to cancel the “dormant” mark.

The main illusion that many rights holders cling to, the hope that they have reasonable excuses for non-use due to such factors as political pressure, economic sanctions, and the inability to conduct monetary and commodity transactions with certain countries is unfounded.

Notice should be given that even if obligations cannot be fulfilled due to force majeure, they are not automatically terminated, as confirmed by the practice of the Intellectual Property Court (IPC):

• Sanctions and logistical disruptions are interpreted by the court as part of normal business risk.
• The absence of currency transactions or a disruption in supply chains are not recognized as circumstances beyond the control of the rights holder (in the context of Article 1486(4) of the Civil Code of the Russian Federation).
• A voluntary decision to suspend business (even under pressure from head offices) is de jure considered to be the choice of the entity itself, which opens the way for claims for early termination of trademark protection by any interested parties.

Why would a rights owner need such a “reset”?

In circumstances where such “clearing up” of the Trademark Register becomes a tool for competition and not always fair competition, the most reliable solution is to re-file trademarks vulnerable to cancellation for non-use.

Filing a new application for an identical or nearly identical trademark for the purpose of its re-registration allows the three-year period of non-use to be legally “reset.” For the right holder, this is a tactical maneuver that allows them to create a new three-year period of “immunity.”

It is very important to note that from 2026, this process will no longer be an automatic cloning of old data from the Trademark Register into a new application.

Conceptual changes in legislation regarding the approach to determining the scope of legal protection of a trademark and, consequently, the calculation of state fees, will initiate a significant revision of the approach to preparing and filing applications.

What are we talking about?

The trademark laws of most countries establish rules for paying fees when registering a trademark, mainly based on the number of classes in the International Classification of Goods and Services (ICGS).

While this approach offers certain advantages in terms of calculating the amount of the fee, it also leads to significant “cluttering” of the State Trademark Register with a huge number of irrelevant goods, which hinders, in particular, the legal protection of trademarks belonging to other bona fide manufacturers.

To a large extent, to solve this problem, the new version of the Regulations on Fees introduces an additional increase coefficient. Now, the amount of the fee depends not only on the number of classes, but also on the number of terms claimed in each class. That is, if the number of terms in one class exceeds 10, an additional fee is charged for each subsequent term.

For the portfolios, where hundreds of product items were traditionally included in the lists just as a precaution, the cost of repeating them when filing a new application may increase exponentially. In this regard, the functions of a trademark attorney are supplemented by new specializations— risk manager and analyst as it is now necessary to conduct more in-depth research, adjustments, and careful selection of appropriate terms.

Particular attention should be paid to marks that are about to expire as the  fee dependence on the number of terms now also applies to the renewal of registered trademarks.

Whereas previously renewal of a registered mark covering a broad list of goods/services cost a fixed amount per class, now the rights holder must choose between paying a large fee to keep the “inflated” list or reducing it to what is strictly necessary for renewal.  With the new fees in place, reducing the list to 10 main terms per class will save up to 60-70% of the trademark registration budget without losing the real commercial value of the mark.

What requires special attention when filing an application:

• Grouping by generic concepts: Instead of listing 50 types of clothing, use broad terms to keep the listing under the 10-item limit.
• Prioritization: Choose “core” products that generate (or have potential to generate) the main revenue.
• Commercial focus: Delete items that were not used even during the period of active market presence.
• Trademark renewal: restriction of lists of goods/services as a necessity.

Conclusion.

New realities are forcing rights holders to move from passive ownership to active management. The combination of the risk of trademark cancellation for  non-use and a progressive scale of fees is pushing applicants and rights holders towards a strategy of optimizing the list of goods and services, which will subsequently lead to a real clean-up of the Trademark Register and the release of new areas for different business sectors.

Therefore, it is in the interests of rights holders and their representatives not to wait for lawsuits from opponents. Investing today in filing a new application for an identical or nearly identical trademark with the aim of re-registering it with a carefully verified and concise list of goods/services is a safe way to maintain control over trademarks and optimize your legal budget in the new economic realities.

To do list:

• Portfolio due diligence (which marks are at risk due to non-use)
• Search for applications similar to yours (foreign searching and watching systems do not provide data on Russian applications)
• Determine and, if necessary, edit the list for a new application if it includes more than 10 terms in each class
• Check the correctness of the rights holder’s details
• File an application to the PTO to obtain a new three-year “immunity”
• When renewing a trademark, take into account that the amount of fees depends on the number of product items.