Asian trademarks on the move 
Registration in Russia of trademarks from Asian companies is on the rise. Among Asian countries, China is in the lead with its 6,226 trademark applications in 2023 followed by the Republic of Korea (789 applications) and Japan (490 applications). Other countries file too but on a lesser scale. 

The growing number of trademark applications and registrations inevitably leads to more conflicts. In a recent case, Chi Forest Food Co., Ltd. (China) had an international registration No. 1737902 for and decided to extend it to Russia. Chi is a life force and the most important energy that a person may have according to Chinese beliefs. The patent office refused extension on March 29, 2024, because the designation was confusingly similar to . The trademark was assigned several times and the last owner was a Russian company for the same Classes 29, 30, 32. The trademark expired on January 5, 2004, after which the trademark owner had six months to renew the trademark for an additional surcharge. It is possible that the Chinese applicant patiently waited in ambush until expiration of that term and appealed against the official action of refusal on September 30, 2024. 

Since there were no obstacles against the registration, the patent office cancelled its decision of March 29, 2024, and approved the extension of the trademark to Russia. This is a seemingly simple case but it shows that even in such cases the applicant should not surrender and should use every opportunity to achieve his goal. The game IS worth the candle! 

There was another story covered in Asia IP magazine regarding the adventures of the Chinese company  Lianyungang Forward Heavy Industrial Machinery Co. The important part of the story almost ended in November 2024 when the Chamber of Patent Disputes cancelled the trademark No. 907180 registered by the Chinese company’s former Russian agent. Lianyungang Forward Heavy Industrial Machinery Co. had filed a trademark application No. 2023713179 in Russia for in Class 07. That trademark had been also earlier registered by the Chinese company in its own country. The Russian patent office examined the application and refused registration on February 7, 2024, because there were identical trademarks registered by Russian companies.  

Now, after cancellation of the Russian agent’s trademarks by the Chamber of Patent Disputes in November 2024, its decision opened the way to registration of the Chinese trademark in Russia. The Chamber of Patent Disputes renewed examination of the initial appeal. It pointed out during examination that there had been troublesome trademarks that were successfully invalidated. Since there were no more obstacles for registration of the Chinese trademark, the Chamber of Patent Disputes ruled to register the disputed trademark of application No. 2023713179.  

Cooperation is growing between Russian and foreign companies. In many cases, in order to pave the way for its products on the Russian market, the foreign company starts collaboration with a Russian company that sells the goods in Russia and, in fact, becomes its agent. This may be the first step to test the market and plan its further strategy. 

However, as has been seen many times, Russian agents play their own game. If the imported product becomes in high demand, the Russian agent may register the trademark under which he sells the goods in his own name. The arrangement may be more complicated.  

Virta-Med, a South Korean company, set up a representative office in Russia to do research and market cosmetic products in Russia. The representative office started collaboration with a Russian distributor who assumed the name Virta Centre. The distributor and the Korean company signed a contract which also included obligation of the Russian company to execute certificates of conformity which demonstrates close relations between the parties.  

The distributor traded in goods imported from South Korea for a short time and then filed and obtained trademark No. 937281 with priority of February 18, 2022.  

Two years later, Virta-Med Korea filed an appeal against the registration. It based its claim on the fact that it had created the designation and was supplying the goods under that trademark to Russia. The owner of the trademark was a distributor and there was much evidence to that effect. This means that the distributor registered the trademark in violation of Article 6 of the Paris Convention which means that the real owner of the trademark may demand cancellation of the trademark registered by his distributor. 

The distributor put forward specious arguments saying that there were no agent relations between him and the appellant; there were no goods marketed by him in his capacity as distributor. In addition, he said that he had been the creator of the brand and that the goods had been manufactured by the Korean company to his order. These arguments did not hold water because there were many documents produced by the appellant that refuted those allegations.  

There were many overtones during examination of the appeal but finally, the Chamber of Patent Disputes cancelled trademark No. 937281 in full. The decision was dated January 25, 2025, so it may be expected that the Korean company will register that trademark in its own name as it did in many other countries. 

When going to Russia every business should register its trademark first. It is much cheaper than fighting against pirated registrations and all the same registering its own trademark.