Intellectual Property Lost?
3 years away from Russian market: IP law perspective
I Inroduction
In 2025 it will be 3 years since many foreign companies left Russian market.
Some departing businesses are facing various difficulties related to the exit from Russia: interaction with government agencies, corporate relations, asset management, etc.
Among other things, IP risks seem to be underestimated. For example, according to Russian trademark laws, if a trademark has not been used for 3 consecutive years, its protection may be terminated due to non-use. Many international brands have not been carrying any business in Russia since 2022. As a result, they now may be at risk of losing their intellectual property in Russia.
We offer for your attention a short guide in relation to IP-related risks of businesses that left Russian market.
II Problem described
After withdrawing from Russia, many foreign companies stopped monitoring the protection of their Russian intellectual property. This omission can lead to the loss of certain IP rights or even their seizure by third parties (“patent trolls”).
For example, if a patent troll seizes the intellectual property of a foreign rights holder, it may lead to the termination of imports of the foreign company’s goods into Russia.
In several examples below, we will discuss the risks of neglecting intellectual property still registered in Russia and the measures one can take to protect one’s interests.
CASE STUDY No. 1: Loss of a Trademark (and of ability to import original goods)
According to Article 1486 of the Civil Code of the Russian Federation (CC RF), trademark protection may be terminated at the request of an interested party if the trademark has not been used in Russia for more than 3 years.
A foreign company left the Russian market more than 3 years ago, and the use of its trademark in Russia ceased.
A Russian company filed an application with RuPTO (the Russian patent and trademark office) to register the same trademark. After that, it sent the foreign company a pre-litigation demand to relinquish its rights to the trademark on the grounds of non-use.
Having received no response after two months, the Russian company filed a lawsuit under Article 1486 of the Civil Code of the Russian Federation, seeking early termination of trademark protection for the foreign company’s mark in Russia.
The foreign company was unable to present any evidence of importing its goods into Russia during the last three years (as there were none). So the court ruled to terminate the legal protection of its trademark prematurely.
This mechanism allowed the intervening Russian company to register the trademark in its own name.
Subsequently, the Russian company entered this newly registered trademark into the Customs Register for import protection. As a result, the foreign company (original trademark owner), its distributors, and any other interested parties lost the ability to import the original goods of the foreign company into Russia.
RECOMMENDATIONS
Under Article 1486 CC RF, a trademark may be cancelled for non-use no earlier than 3 years from the date of its registration. However, registering identical trademarks is prohibited, which prevents registering an identical mark under one’s own name simply to avoid cancellation.
We recommend, before the 3-year period from the date of withdrawal from the Russian market expires (or as soon as possible if it has already expired), to file a new trademark application with RuPTO for a mark that is not identical but slightly different from the currently registered one. If possible, it is preferable to file such an application on behalf of another company within the rights holder’s group of companies.
Registering this new trademark will start a fresh 3e-year period of possible non-use. Consequently, cancelling the first trademark becomes pointless for a patent troll.
In this way, an unused brand can remain legally protected for future period.
CASE STUDY No. 2: Loss of an Internet Domain and Losing the Russian Segment of the Internet
A foreign company left the Russian market. Its former general distributor in Russia ceased operations. While active this general distributor used to own popular at the time Russian-language websites within .RU domain. The domain name address included the name of that foreign company.
Because payment to renew the domain name registration was not made on time, the relevant domain name became available, and a competitor used an opportunity and registered it.
The competitor then linked this domain name with its own website featuring competing products, therefore unfairly benefitting from the reputation of the foreign company and its former website, which was well-indexed in the Russian segment of the Internet. Meanwhile, the original owner foreign company lost the opportunity to resume its business operations using that domain name.
RECOMMENDATIONS
Registering a domain name in the .RU and .РФ zones may require annual renewals to avoid the risk of losing it permanently.
If the relationship with the former distributor and its management permits, we recommend arranging for the domain name to be transferred to the foreign company itself or its representative in Russia. The representative can then keep making the necessary payments and maintain the domain name registration for potential use.
If there is no remaining connection with the former distributor or its management, other options may be found, based on the specific situation. Possible measures might range from re-registering the domain after it lapses to filing a lawsuit to have it transferred to the foreign company by a court order.
If the trademark used in the domain name of the foreign company was not registered in Russia, it might be good idea to register it—even if the foreign company has left the Russian market.
CASE STUDY No. 3: Loss of a Russian registered Patent and a Trademark Due to Non-Payment of Renewal Fees
Patents for inventions, utility models, and industrial designs must be kept in force by periodic patent fees. If the fees are not paid within the prescribed deadline, the patent lapses (Article 1399 CC RF).
A trademark registration must be renewed every ten years from the date of filing the application and every ten years thereafter (Article 1491 CC RF). If the relevant application for renewal is not submitted before the trademark expires and the fee is not paid, trademark protection ends, and another party may register it in their own name.
A foreign company left the Russian market and did not renew either its Russian invention patent or a trademark.
As a result, this trademark has been re-registered by a Russian company, making it impossible to regain those rights by the initial rights holder.
Obtaining a new patent for the same invention is also impossible, since any new patent application would be found lacking novelty (given that the previous patent had been published).
As a result, if the foreign company or its partners decide to have any business relations with Russian market, it would have above mentioned IP problems.
RECOMMENDATIONS
We strongly recommend to continue tracking the status of previously registered patents for inventions, utility models, industrial designs, and trademarks in Russia and to pay the necessary renewal fees to maintain rights and protection documents (patents, certificates).
A qualified Russian representative can handle this. Fees can only be paid in rubles.
Useful to note: Russian law provides additional grace periods during which rights can be restored and renewed after the initial term has expired. For patents on inventions, utility models, and industrial designs, this period is 3 years; for trademarks, it is 6 months.
Therefore, if the standard renewal deadline has passed but the additional grace period has not, it is still possible to use that option to preserve one’s legal rights.
Our law firm is ready to accept instructions in all of the above scenarios and in any other situations to preserve or restore your intellectual property, as well as to assist with any other legal matters in Russia.
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