July 15, 2007
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Trademark Protection in the Russian Federation: Cyrillic-Script and Russian-Language Considerations
Trademark rights in the Russian Federation can be acquired only through registration. Given the significant differences not only between Russian and English (and other Roman-alphabet languages), but also between the characters of their alphabets, it is important to consider the manner in which trademarks are registered in Russia in order to ensure an adequate level of trademark protection.
Although Russian trademark law does not require registration of the Russian-language version of a mark, it is generally advisable to secure registered trademark protection in both Roman and Cyrillic characters.
In terms of brand promotion in the Russian Federation, registration in the Russian language using Cyrillic characters can be very beneficial from a marketing perspective, since most advertising in Russia must appear in the Russian language. Even though foreign-language trademarks registered and used in Russia are not subject to this requirement, consumer expectations should be taken into account. Whereas a decade or so ago, a product labeled with a brand in the English language using Roman characters would have enjoyed popularity in Russia simply by virtue of its foreign origin, now Russian consumers tend to expect a foreign product to be marketed and sold in their native language.
The issue of registering in both Roman and Cyrillic characters is also relevant when assessing the likelihood of confusion between marks for purposes of enforcement. It is not always safe to assume that registration of a mark in Roman characters will prevent its use and registration in the Cyrillic script, or vice versa. Marks are considered confusingly similar in Russia by virtue of their phonetic, visual and/or semantic similarities and the overall impression they convey. In many cases, an English-language trademark depicted in Roman characters will convey quite a different overall impression than the Cyrillic version of the mark.
Multiple approaches should be considered when adapting a mark into Cyrillic. The mark can be either transliterated on a letter-by-letter basis or transcribed based on the way it is pronounced as a whole. For example, the English-language GREEN GIANT mark can be transliterated as ГРИН ГИАНТ or transcribed as ГРИН ДЖАЙЭНТ.
Alternatively, the mark can be translated into a corresponding word in the Russian language. (For example, GREEN GIANT can be translated as ЗЕЛЕНЫЙ ВЕЛИКАН.) It is also important to determine whether the adopted Cyrillic version of the mark has any negative meaning in the Russian language and/or is appealing to the Russian consumer when spoken.
None of these methods, taken individually, will ensure complete protection in Russia. For example, a mark that is simply translated into Russian from its English equivalent may not bear any phonetic resemblance to the English-language version, and consequently a phonetically similar Russian-language mark may be permitted to coexist with the English-language version.
Accordingly, the most effective strategy for the protection of trademarks in Russia is to register and use the trademark in various formats, including:
1. the original English- or other home-language version of the trademark;
2. a phonetically similar Cyrillic adaptation of the trademark;
3. the Russian-language translation of the mark in Cyrillic characters, if such a translation exists; and
4. the brand logo (if applicable).
The obvious downside in securing multiple registrations for a single mark is the cost involved, particularly in the case of large trademark portfolios. Russian trademark law does not provide for the filing of a series of applications; accordingly, each version of the mark must be the subject of a separate application.
In order to reduce costs, some trademark owners have taken to filing a single application for both the Roman and the Cyrillic versions of the mark. However, there are considerable risks associated with this strategy. If the mark is used only in the Cyrillic version or only in the Roman-character version, but not in the combination Cyrillic-Russian version as registered, the registration could be at risk of cancellation for non-use. Moreover, a combination Cyrillic-Roman registration may have little value in an infringement action. So, unless the mark will be used in the combination Cyrillic-Roman format, it is not advisable to register it in this format.
It is also important to bear in mind that the approach taken to the protection of marks in the Russian Federation will not be equally applicable to all of the states within the Commonwealth of Independent States (CIS), most of which have official languages other than Russian. Many also have legislative restrictions on the use of foreign-language trademarks in their jurisdiction. Companies doing business in the CIS should consider legal protection of their brands in the local language.
Although every effort has been made to verify the accuracy of items carried in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.