Over the past few years, the Russian market has undergone significant changes. A number of foreign brands have left the Russian market, freeing up entire niches that are now being actively filled by Asian manufacturers. Entering a new market requires not only a quality product and a well‑thought‑out marketing strategy, but also reliable legal protection for means of individualization. One of the challenges faced by Asian applicants is how to properly register a trademark containing hieroglyphs and ensure its effective protection in Russia. This article addresses the practical aspects of this task.

Legal status of hieroglyphic designations

Russian legislation does not classify designations using hieroglyphic script as a separate type of trademark. Article 1482 of the Civil Code of the Russian Federation provides that word marks, figurative marks, three‑dimensional marks and other designations, or combinations thereof, may be registered as trademarks. As a rule, Rospatent treats hieroglyphic designations as figurative (pictorial) marks rather than word marks, because for the Russian consumer they have no obvious semantic meaning – languages using hieroglyphic writing are not widespread in Russia.

Features of examination and key risks

The examination procedure is conducted by Rospatent and includes assessment of absolute and relative grounds for refusal. For hieroglyphic marks, the following aspects are of key importance.

Similarity with earlier marks. During examination it is verified whether applied for registration designation is identical or confusing similarity with third‑party trademarks having an earlier priority date in respect of similar goods or services (Paragraph 6 of Article 1483 of the Civil Code). This is a standard procedure, and hieroglyphic marks enjoy no particular advantage or disadvantage – they are examined on the same grounds as other designations, according to the criteria applicable to figurative marks: external form, type and nature of the image, presence or absence of symmetry, colour and graphic design, compositional layout, conceptual content and so on.

Semantic meaning and phonetic perception. When filing an application, it is not necessary to provide a translation of the hieroglyphs into Russian or to indicate their pronunciation, since hieroglyphs are treated as figurative elements. In practice, however, the examiner may request such a translation if the hieroglyph carries a semantic meaning. That meaning is examined for compliance with legal requirements: if it is descriptive (Paragraph 1 of Article 1483), refusal is possible when the hieroglyph is the sole or dominant element of the applied designation; if the meaning is capable of misleading consumers (Subparagraph 1 of Paragraph 3 of Article 1483), refusal is possible regardless of whether the hieroglyph dominates (for example, if the hieroglyph means “alcohol” while the applied goods are actually non‑alcoholic beverages). In addition, Subparagraph 2 of Paragraph 3 of Article 1483 prohibits the registration of designations that contradict public interests, humanitarian principles and morality. This is particularly relevant for Asian applicants, because the transliteration of some hieroglyphs may sound similar to obscene words (for instance, the Chinese character 会 (huì) is pronounced similarly to a Russian swear word). In such a case, the applicant is likely to face refusal; even if registered, use of the mark may cause public discomfort and/or its legal protection could be challenged based on violation of public order or other applicable grounds.

Practice of Rospatent: Three illustrative decisions

Example 1: Logistic Agency Flexitank / LAF — hieroglyphs as figurative elements. Rospatent concluded that there was no confusing similarity between trademark No. 817433 (LAF) and international registration No. 1512514 (Logistic Agency Flexitank, the transliteration of the hieroglyphs as “LANGFU” in Latin letters was indicated in the publication of this trademark). The office stated that the similarity analysis is based on the perception of the designations in commercial circulation by the Russian consumer, for whom hieroglyphs are a figurative element; information on transliteration published in official bulletins does not affect that perception as average consumer in Russia does not study such publications when perceiving the marks. This position confirms that the legal protection conferred by registration of a hieroglyph character mark does not automatically extend to its transliteration versions and therefore it makes sense to have a trademark consisting of hieroglyphs registered in various transliteration versions (in Latin and/or Cyrillic) along with the mark in the original script in order to seek broader scope of protection and ensure enforceability of trademark rights against third parties’ potential infringers.

Example 2: MET TEA – the dominant verbal element may be deemed more important than hieroglyphs in a combined trademark. When examining combined trademarks, the presence of dominant and strong elements has a significant impact. As a rule, the strong element is the verbal one, because it is easier to remember than a figurative one. Confusing similarity of strong and dominant elements with earlier registered marks may lead to refusal. An example is Rospatent’s decision in respect of application No. 2023740087 (MET TEA): registration was refused on the basis of cited marks with the dominant element “MET” (Nos. 752073, Team MET) and 1011281 (MET). Rospatent noted that verbal elements are easier to remember, consumers focus their attention on them, and verbal elements can be reproduced orally. In this case, the strong and dominant elements of the compared designations are the elements “MET”, which perform the main function of a trademark, i.e., to individualize the goods, whereas the additional dissimilar element in the form of hieroglyphs performs a secondary function (given the certain complexity of perception of this element by the average Russian consumer).

Example 3: Dé Wù – hieroglyphs as an indicator of Asian origin of goods and services. In some cases, the presence of hieroglyphs in the applied designation may lead to refusal if the registration is capable of misleading consumers as to the geographic origin of goods and services. An interesting example is the refusal to register a trademark under application No. 2023741347 (Dé Wù) filed by a Russian company. Rospatent established that Dé Wù is a brand of the Chinese company Shanghai Shizhuang Information Technology Co., Ltd., which owns the POIZON marketplace. The platform was known to Russian consumers, used an original logo with hieroglyphs, and its audience exceeded 90 million active users per month. Rospatent pointed out that the hieroglyphs direct the consumer towards China, and the applicant did not establish any connection with the Chinese right holder nor prove that the goods were manufactured or purchased in China. The decision was also influenced by the proactive position of Shanghai Shizhuang Information Technology Co., Ltd., which filed an opposition against the possible registration of the trademark.

General conclusion from the practice

The decisions demonstrate that hieroglyphs in trademarks:

• Do not automatically provide protection for a Latin (and/or Cyrillic) transliteration if the corresponding version of the mark has not been registered;
• May not be sufficient to avoid confusion with earlier marks if the designation contains a strong verbal element that is confusingly similar to an earlier trademark;
• May serve as an indicator of Asian origin, which increases the risk of refusal on the ground of misleading if the applicant has no connection with the Asian manufacturer.

Registration strategy: Four options

Using only hieroglyphic marks for individualization without additional elements may entail risks. The complexity of writing and remembering hieroglyphs, especially their combinations, reduces distinctiveness of the trademark and makes it harder for consumers to firmly imprint it in their minds. Therefore, companies using hieroglyphs as trademarks need a well‑developed approach when choosing a mark for the Russian market.

Companies using hieroglyphs should decide which exact version of the designation they intend to use. First and foremost, it is recommended to file an application for the specific designation that is planned to be used. However, if the mark consists only of hieroglyphs, it makes sense to adopt a comprehensive approach and file applications for several variants:

1. A mark consisting solely of hieroglyphs. The main purpose is to prevent third parties from registering an identical or similar hieroglyphic designation. Even if the applicant plans to use the Latin or Cyrillic script, the existence of a registration for the hieroglyphic mark creates a certain barrier against unfair competitors.
2. A combined mark: hieroglyphs + Latin‑script transliteration. This is the most balanced option. The hieroglyphs retain authenticity, while the Latin transliteration facilitates memorisation. Registration of such a variant is also convenient for unifying the mark across different markets.
3. A combined mark: hieroglyphs + Cyrillic transliteration or translation. This option is aimed at adaptation to the Russian market. Cyrillic writing is the most natural for Russian-speaking consumers.
4. A separate word mark in Latin script (transliteration of the hieroglyphs). Many brands use Latin as their main international version.

Registration of all four versions is not mandatory, but registering at least several of them provides a broader scope of protection. The more variants are registered, the harder it is for third parties to circumvent protection.

What to do if the mark is not used?

Legal protection of a trademark may be prematurely terminated if it has not been used continuously for three years from the date of state registration (Paragraph 1 of Article 1486 of the Civil Code). For international registrations designating the Russian Federation, this period runs from the date of grant of protection in Russia.

The possibility of early termination creates serious risks for companies that have suspended their sales activities in Russia or that have registered trademarks but have not commenced using them in Russia. In the absence of use, the only effective tool to reduce the risk of losing protection is re‑filing. Under Russian law, it is not permitted to have two registrations of identical trademarks for the same goods and services. Therefore, to avoid refusal of the new application based on the “old” registration owned by the same company, one may either (1) file a different version of the previously registered mark – with a different font, a changed colour combination, addition or removal of elements; or (2) file an identical trademark covering modified specification of goods/services to ensure that the wordings of goods and services in both marks (the current and the old one) are not exactly the same. The decision in each case is made on an individual basis, taking into account the entire portfolio of the company’s trademarks. Once the new mark is registered, the three‑year period for this particular mark starts to run anew, giving the right holder additional time to resume its presence or to enter the market. This strategy is actively used by Asian and European companies.

Conclusion and practical recommendations

Registering hieroglyphs as trademarks requires an understanding of the difficulties they face in distinguishing goods and services, given complexity of consumer memorization and perception.

It is advisable to seek support from a local trademark attorney: assessing the risks yourself, especially regarding possible negative connotations in the local language, is difficult without involvement of a native speaking trademark specialist.

Conducting a preliminary search before filing the trademark application can help assess the chances of registration. In Russia, the first-to-file principle applies: the application should be filed before the goods are introduced to the market so as to avoid unfair registration of identical or similar trademarks by the third parties. In terms of possible infringement risks it is safer to commence use of the trademark only after its registration. That being said, the earlier the application is filed the sooner the registration process is completed enabling the brand owner to start trading on the Russian market. The registration process, in the absence of objections, takes on average 8-10 months (including examination, which takes about 6-8 months). Accelerated examination (up to two months) is available for an additional fee.

Delaying the filing creates the risk that an unfair competitor, a bad-faith distributor, or even an unrelated third party will file an application for a similar or identical designation earlier, which will create an obstacle to the registration of your mark and to the introduction of your goods onto the market.

Timely filing, registration of all significant versions of the trademark, and qualified support from a local trademark attorney – these are the three components that ensure reliable brand protection. When considering trademark filing strategy it is quite important to ensure that the respective applications be filed in the name of a genuine owner or manufacturer and not in the name of local distributors or other representatives to avoid future possible disputes regarding the brand ownership.

In order to be in position to prove the use of trademark in case of necessity, it is recommended to use the mark strictly as registered: any changes may become a matter of dispute regarding the proper use if a non‑use cancellation action is launched. If the mark is not used the brand owner should consider filing a new application no later than 8‑10 months before the expiry of the three‑year period from the date of registration of the “old” mark to be on a safe side.

Foreign companies already present in Russia or just planning to enter this market should consider intellectual property protection not as a mere formality, but as a strategic task on which the long‑term success of their business depends.