Ratification of the Singapore Treaty on the Law of Trademarks.
LEGAL UPDATE No. 42.
Goltsblat BLP advises that Federal Law No. 98-FZ of 23 May 2009 has ratified the Singapore Treaty on the Law of Trademarks signed by the Russian Federation in Geneva on 26 March 2007.
The Treaty is designed to harmonise a number of procedural aspects of registration and use of trade marks and exclusive trade mark licence contracts.
The Treaty states that, for the purpose of trade mark licence recordal, a National Office may not demand submission of the licence contract or a translation of it, nor may it insist that financial terms and conditions of the licence contract be disclosed. A National Office may not request details of the contents of a licence contract other than those listed in the Regulations under the Singapore Treaty (trade mark certificate number, type of licence, territory and term of the licence, as well as a list of goods and services covered by it). According to the Regulations, these details should be included in the request for recordal of the licence without the licence contract having to be attached.
Yet account should be taken of the fact that the Treaty entitles National Offices to request additional materials, should there be any doubt about the veracity of the information provided.
The Treaty also contains an essential provision concerning premature termination of legal protection of trade marks on the grounds of their non-use. According to the Treaty, it is prohibited to require a registered licence contract to confirm use of a trade mark by the licensee on behalf of the trade mark owner. In other words, the Treaty provides for evidence of proper trade mark use to be submitted by parties other than the trade mark owner and its licensees on the basis of registered licences.
Where there is a change of ownership under a contract for disposal of an exclusive trade mark right, in order to record such a change, the applicant may choose to submit one of the following documents:
a copy of the contract, which the National Office may require to be notarised;
an extract from the contract showing the change of ownership, which the National Office may require to be notarised;
other forms envisaged by the Regulations under the Singapore Treaty.
Similarly to the situation with licences, National Offices retain the right to request additional materials in the event of any doubt about the veracity of the information provided.
Federal Law No. 98-FZ of 23 May 2009 “On Ratification of the Singapore Treaty on the Law of Trademarks” came into force on 7 June 2009.
Igor Motsnyi, Head of Group,
Tel: +7 (495) 287 44 44,
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