A well-known trademark is a special type of trademark that has certain features and a number of advantages for the copyright holder. 

As follows from Article 1508 of the Civil Code of the Russian Federation: “At the request of a person who considers a trademark used by him or a designation used as a trademark to be a well-known trademark in the Russian Federation, a trademark protected in the territory of the Russian Federation on the basis of its state registration or in accordance with an international treaty of the Russian Federation, or a designation used as a trademark, but not having legal protection on the territory of the Russian Federation, by decision of the federal executive body for intellectual property may be recognized as a well-known trademark in the Russian Federation, if this trademark or this designation, as a result of its intensive use on the date specified in the application, is widely known in the Russian Federation among relevant consumers in relation to the applicant’s goods.” 

Let us examine in more detail the procedure for recognizing a trademark as well-known. 

As follows from the provisions of Article 1508 of the Civil Code in order to obtain the status of a well-known mark, it is necessary to submit a corresponding application to Rospatent. To formulate an application, you should collect a package of documents and carry out a number of actions. This includes filling out an application for recognition of a trademark as well-known, which must be drawn up in relation to one trademark in any form. The application is signed by the applicant or his representative and must provide the following information: 

• Name of the applicant; 

• Location (place of residence) of the applicant indicating the country code in accordance with the standard of the World Intellectual Property Organization (WIPO); 

• Contact details; 

• Number of the trademark certificate (international registration number) if the application is filed in relation to the trademark; 

• Registration number of the application for state registration of a trademark (if any), if the application is filed in relation to the designation; 

• A list of goods and/or services in respect of which recognition of a trademark or designation used as a trademark as a well-known trademark is requested, which are grouped into classes of the International Classification of Goods and Services (ICGS); 

• Description of the designation used as a trademark; 

• The date from which the applicant requests recognition of the trademark or designation used as a trademark as a well-known trademark; 

• Arguments that the trademark or designation used as a trademark as a result of intensive use on the date specified in the application is widely known in the Russian Federation among relevant consumers in relation to the goods or services of the applicant; and 

• Other information related to the trademark or designation used as a trademark, in respect of which recognition as a well-known trademark is sought (if any, at the initiative of the applicant). 

• The application must also be accompanied by a power of attorney confirming the authority of the applicant’s representative. 

As noted above, the application must be accompanied by documents confirming the well-known nature of the trademark or designation. These documents and materials must reflect the following:  

• Beginning of the use of the trademark;  

• Description of the mark, to whom it was registered, statutory documents, assignment agreements, licensing agreements (if the use was carried out by the licensee), confirmation of legal succession; 

• Registered trademarks in the name of the applicant: Russian certificates, international registrations, national certificates of registration in foreign countries; 

• Countries in which the mark has become widely known, and information about where, when and by whom the trademark began to be used; 

• Information about the provision of services under the trademark: documents confirming the provision; 

• Information about the sales area, on the assortment (catalogues, programs, projects); methods of use; information about advertising and advertising costs; 

• Data on the average annual number of service consumers (visitors); 

• Data on the value of the trademark; 

• The results of a sociological survey of consumers confirming that the mark has become famous among a certain group of consumers; and 

• Information about participation in Russian and international exhibitions, awards and prizes marked with a well-known trademark, etc. 

It should be noted that all information should not be generalized; it should refer specifically to the trademark or designation that is recognized as generally known in relation to certain goods and/or services. 

It is also necessary to pay a state fee for consideration of an application for granting legal protection to a well-known trademark in the Russian Federation, making a decision based on the results of consideration of the application. The state fee is R40,000 (US$400), in accordance with Paragraph 2.29 of Appendix No. 1 to the Regulations on Duties. The completed application with a package of documents is submitted to Rospatent. 

The application for recognition of a trademark as well-known is considered at a meeting of the board, at which the board considers all materials submitted by the applicant and hears the arguments of the applicant or representative participating in the consideration of the application. 

In case of successful consideration of the application and a decision is made to satisfy the application, information about the well-known trademark is entered into the List of Well-Known Trademarks. This information includes the registration number of a well-known trademark, image (reproduction) of a well-known trademark, information about the copyright holder of a well-known trademark, a list of goods and services, the date from which the trademark is recognized as generally known, the date of the decision of Rospatent to recognize a trademark or designation as a well-known trademark, the date of inclusion of a well-known trademark in the List, the date of publication of information about a well-known trademark in the official bulletin of Rospatent, the address for correspondence and other information related to a well-known trademark. 

A certificate for a well-known trademark is issued to the applicant in the form of an electronic document and, at the applicant’s request, on paper within a month from the date the trademark is included in the List of Well-Known Trademarks. 

The procedure for recognizing a trademark as well-known has several features. It is quite labour-intensive and time-consuming in terms of collecting the necessary materials and documents. However, having received such a special status, a number of advantages appear: 

• Legal protection is valid indefinitely, i.e. there is no need to renew the trademark every 10 years and incur corresponding costs; 

• Legal protection of a well-known trademark also extends to goods that are not similar to those for which it is recognized as well-known, if the use of this trademark by another person in relation to these goods will be associated among consumers with the holder of the exclusive right to the well-known trademark and may infringe on the legitimate interests such owner (Clause 3 of Article 1508 of the Civil Code of the Russian Federation), i.e. broader legal protection is expected; 

• The special elite status of the trademark helps to increase competitive advantages and confirms the status of the owner – public confirmation of the widest popularity of the brand in Russia and its unambiguous association with the copyright holder company. 

As of August 13, 2024, there are 262 marks in the List of Well-Known Trademarks. 

It should be noted that Zuykov and Partners has extensive and successful experience in recognizing trademarks as well-known, and is the only company that has recognized 14 trademarks as well-known, including such marks as VDNHNo. 153, ZARINA No. 210; Vyazanka No. 214, SLOBODA No. 218, Starodvorye No. 228, befree No. 237, BELAZ No. 244, BELAZ No. 245, Sela No. 253, etc.