Criteria for the recognition of a well-known trademark or designation in the Russian Federation

• Goryan E.V.

  Ella V. Goryan. Vladivostok State University of Economics and Service. Vladivostok. Russia

• Ilyas R. Rakhmankulov

  Ilyas R. Rakhmankulov Vladivostok State University of Economics and Service Vladivostok. Russia

he object of the study is public relations arising from the submission of an application by the copyright holder or applicant to the Federal Service for Intellectual Property for the recognition of a trademark or designation as well-known on the territory of the Russian Federation. The subject of the study are the norms of the current Russian civil legislation, by-laws regulating the specifics of the recognition of a trademark or designation as well-known, scientific works of Russian scientists, materials of law enforcement practice. In order to obtain a scientific result, sociological, comparative legal and formal legal methods were used. Through law enforcement practice, new criteria have been identified that have not been established by the legislator: the
prescription of activity on the market; the absence of identical or confusingly similar trademarks or designations in relation to similar competitors' products; the promotion of a trademark or designation through the most popular and accessible communication channels; a common source of origin of goods; geographical distribution; a certain market share; the presentation of certain awards. These criteria for the applicant are of a concretizing nature. If the new criteria are met in the application and its submission to Rospatent for recognition of a trademark or designation as well–known in the Russian Federation, the copyright holder (applicant) anticipates and prevents temporary (the process of recognition of a trademark as well-known takes place within a year) and monetary (the process is very expensive) costs, as well as legal costs – in case of revision of a non-normative legal act of Rospatent several times, as in the case of the trademark "О’КЕЙ", in which the court reviewed the "refusal" decisions of Rospatent four times.
Keywords: well-known trademark, criteria, trademark, designation, administrative practice, judicial practice, Rospatent, Intellectual Property Court, Federal Service for Intellectual Property.