Chanel and Dior among the brands targeted by Russian trademark filings
The Trademark Office in Russia sees an increase in applications with a distinctly Western twist. In the wake of its deadly attack on Ukraine and the Russian government’s considerations about the possibility of “lifting restrictions on the use of intellectual property [for] certain types of goods and services in Russia”, the Federal Service for Intellectual Property in Russia – commonly known as Rospatent – has received a growing number of trademark applications for famous Western brand names and logos – from McDonald’s, Nespresso and Starbucks to IKEA and Instagram that are filed by unaffiliated entities in Russia.
McDonald’s and Instagram aren’t the only companies targeted by these unauthorized trademark filings in Russia. In the wake of the Russian government’s issuance of a decree allowing local companies to use products and technologies protected by patents from “unfriendly” countries (i.e. Western countries that have imposed sanctions against Russia, including the United States and the European Union), and hinting that other intellectual property rights held by companies in Western countries may soon be free to use for Russian entities without the ramifications traditional counterfeiting, luxury names, such as Chanel, Christian Dior and Givenchy, have been forced to retreat, as applications for their world famous names have been filed with Rospatent for use on some of the same types of goods/services they traditionally offer.
Such applications generally fall squarely within the realm of trademark squatting (i.e. the practice of third parties filing trademark applications for another company’s well-known marks, usually in a market where the trademark owner does not is not (yet) present, for the purpose of either extorting the true owner of the trademark, or otherwise relying on calling that trademark for one’s own benefit) and/or filing a trademark in bad faith, and prohibited from registration by the competent trademark office, including Rospatent. However, that may not be the result here.
According to Maxim Popov, a partner of the Mentors law firm in Ukraine, it would not be surprising if Rospatent chose not to block the registration of the trademarks at the center of these applications due to the Russian government’s efforts to legalize counterfeiting and in view of “the attitude of the Krelim towards international relations”. agreements,” such as the TRIPS Agreement, which Russia is currently violating by allowing the use of others’ patented inventions in lieu of compensation. Popov also notes that it is significant that Russian entities have started filing “similar but not identical” trademarks for well-known Western brands, such as Instarus and Rosgram (replacing Instagram), Uncle Vanya (with the ‘ark of McDonald’s) and McDuck’s (the Russian slang name for McDonald’s); these changes could allow applicants to avoid refoulement by Rospatent if it continued to abide by trademark rules against the most obvious cases of bad faith filings.
At the same time, Popov claims that Russian lawmakers have proposed to “nationalize companies leaving the Russian market by introducing a temporary administration”, or the equivalent of bankruptcy proceedings. In doing so, Popov states that the Russian government would potentially be able to accrue “the right to use [the company’s] trademarks under any previously entered into license agreement (franchise), and since the trademarks have been registered with local (Russian) companies in some cases it is possible [for the Russian government] become the rightful owner of the trademark in Russia.
In the event that trademarks of Western companies are, in fact, registered and/or infringed by Russian entities, or otherwise seized in an involuntary administration proceeding, Western rights holders may not obtain redress from domestic courts, as “Russian courts are unlikely to provide assistance” and “Russia will simply ignore any international legal action”, World Trademark Review reported recently. More broadly, such nascent trademark actions could have a “significant impact on brands’ ability to regain market presence, if they seek to re-enter the Russian market in the future,” says WTR.
Since Western brands are “already losing revenue by suspending business activity in Russia, without strong intellectual property rights”, those same brands “will have a harder time returning to Russia if things change in the future”. (And many brands have not explicitly stated that they will not return to the Russian market if/when it is appropriate to do so. Statements from companies ranging from mass retailers to luxury giants have largely underscored the nature “temporary” store closures and rarely went beyond general statements about the closure in light of the “current situation” to explain their decisions to close in the country. is presumably an attempt to save face if they choose to re-enter the Russian market in the future, and in the meantime an effort to avoid alienating several passport-holding oligarchs who have fled Russia and may shop in other markets where luxury brands remain open for business.)
As for what trademarks can/should do in response to the growing number of bad faith trademark filings filed with Rospatent, Popov encourages Western companies to closely monitor filings and file objections to any trademark applications that infringe. theirs, stating that “the absence of an objection will further convince Rospatent that the rights holder has, in fact, left Russia and has no intention of using its marks in the future.