Luxury brands are associated with goods and services of extremely high quality, and as such they hold a special place in consumer markets and are easily recognisable by a large audience. At the same time, this position can be a double edged sword as luxury brands are vulnerable to counterfeiting to a much greater extent than ordinary brands. Furthermore, some dishonest market players often attempt to extrapolate the marketing benefits of luxury brands to goods and services which would never be offered by legitimate luxury brand owners. This is why it is especially important to know what legal measures for brand protection exist in addition to ordinary registration of trademarks.

Well-known trademarks

It is noteworthy that the notion of being well-known can play a significant role for brands which rely on registration by default. Vacheron Constantin (the Swiss watch brand), despite not having its trademark registered in Russia at all, recently won a case here against a company which sold clothes under the same name – the court relied just on the fact that this brand is well-known. However, many jurisdictions, including target markets for luxury brands, offer the option of registering a certain trademark as ‘well-known’ (local translation may vary). This trademark category allows a whole new array of benefits which are not otherwise possible to be exploited. 

While dealing here with the Russian jurisdiction, rules governing well-known trademarks are more or less similar worldwide as they are based on the same tenets of international law. In terms of benefits, first of all the scope of protection is wider as it includes the right to restrain third parties’ use of a trademark for goods which are merely alike and not formally congeneric, and the option to deem the registration of a trademark for such kind of goods null and void. In addition, a remarkable trait of well-known trademarks is that they are protected for an indefinite period of time. Business and marketing specialists agree that well-known trademarks improve the commercial value of brands and increase the chances of receiving positive media reviews. Furthermore, a practical advantage of registering and using a well-known trademark is the subsequently improved chances of successfully obtaining injunctions against dishonest third parties and the ability to use apply the trademark to a wider range of goods and services.

According to the Russian legislation, a well-known trademark registration can be obtained not only on the grounds of having previously registered ordinary trademark but also on the grounds of a logo which has not yet been registered at all. A peculiarity exists where one trademark holder can have several similar well-known trademarks registered.

Registration

In order to register a well-known trademark, an applicant must file an application with Rospatent (the Federal Authority for Intellectual Property) enclosing evidence of use and reputation for specific dates. Any documentation, including catalogues, media publications, sociological research data, contracts etc. can be used to support these facts. The application is reviewed by a special expert council which may last from six months to as long as one year.

It is worth mentioning that protection for well-known trademarks may extend to any date, including a date preceding the registration date if the applicant succeeds in presenting additional evidence proving that this trademark was also famous among consumers in the past. A good example in Russia would be Tiffany which was registered in 2006 but extended back to 1997. Registering well-known trademarks is a procedure which is often highly recommended for both local and international market leaders. 142 are currently registered in Russia, including such high profile brands as Cartier and Chanel. 

Vladislav Arkhipov is Of Counsel, Dentons and Elena Bedareva is an Associate Eurasian and Russian Patent attorney, Dentons