The expiration of the three-year non-use period following international brand owners' exit from the Russian market has emboldened certain bad-faith actors. These entities are increasingly filing cancellation actions based on non-use while simultaneously attempting to register confusingly similar marks.

This pattern has impacted numerous international brands, with Starbucks, Xiaomi, Canon, Victoria's Secret, 3M Company, and Procter & Gamble currently involved in such non-use cancellation proceedings.

This report for the Class 46 blog is written by Yulia Yarnykh and the trade mark team at Semenov & Pevzner in Moscow. Yulia is a member of the MARQUES Brands and Marketing Team.

Non-use in Russia

Under Russian law, trade marks become vulnerable to non-use cancellation three years after registration.

Market exit or supply discontinuation do not, however, automatically terminate trade mark protection. Instead, third parties must initiate formal litigation and demonstrate legitimate interest in seeking trade mark cancellation for non-use.

A successful defence against these actions hinges on brand owners' ability to prove bona fide use of their trade mark during the three-year period. The burden of proof is high for both sides: the challenger must show a vested interest, and the owner must demonstrate substantive commercial use.

Token gestures or a mere online presence are typically insufficient. The Russian Intellectual Property Court (SIP) requires robust evidence of goods entering the Russian market. Compelling proof includes contracts with local distributors, invoices, payment confirmations, and customs shipment declarations.

SIP recently adjudicated a significant non-use cancellation claim brought by R-KLIMAT LLC, a domestic climate control equipment manufacturer, against Telefonaktiebolaget LM Ericsson. To establish legitimate interest, the plaintiff cited its market leadership in Russia’s climate control sector, further substantiated by a pending Ericsson word mark application, an existing class 11 trade mark portfolio and active supply agreements.

In its defence, Ericsson presented evidence of continued telecommunications equipment shipments to Russia, emphasised the widespread recognition of its business both in Russia and globally, and asserted the plaintiff's bad faith.

The Court, nonetheless, ruled to cancel Ericsson's trade marks in Class 11, determining that the defendant had failed to establish sufficient recognition of the marks or demonstrate actual use specifically covering class 11 products.

In response to these escalating risks from non-use cancellation actions and bad-faith applications, international brand owners are increasingly deploying defensive trade mark filings as a preventive safeguard.

Defensive filings: a proactive strategy

In this climate, proactively re-filing key trade marks is a prudent defensive measure.

Significantly, we have observed no discriminatory bias in Rospatent’s handling of these defensive filings to date. This strategy has been widely adopted, with prominent brands such as McDonald’s, Chanel, Prada, Miu Miu, Samsonite, L’Oréal, Procter & Gamble, Jaguar Land Rover, Rolex, IKEA, LEGO, MAC and Coca-Cola already securing new registrations in Russia.

A critical consideration is that an existing, identical registration by the same owner will likely block a new application for the same goods and services. To avoid refusal on this basis, brand owners should consider the following tactical approaches:

Amending the list of goods/services

Strategy 1: amend descriptions

One proven strategy involves making minor, descriptive amendments to the list of goods and services in the new application. For example, standard specifications can be modified by adding phrases such as "sold separately and in kits", "for women and men” or "flavored and unflavored" to distinguish the new filing from the prior registration.

While this approach saw consistent success throughout 2024 and into early 2025, its application has become inconsistent as some Rospatent examiners now argue that consumers would perceive the amended and original goods as identical. This, however, appears to stem from the personal opinions of specific examiners, not a formal shift in agency policy; the prevailing view within Rospatent remains that this strategy is legally compliant.

Strategy 2: targeting gaps in existing specifications

A second approach involves a close review of the proposed specification to identify descriptions that were omitted from earlier registrations. New applications can then be filed specifically for these missing descriptions.

Strategy 3: partial termination and re-filing

A third tactic is to voluntarily terminate protection for specific goods or services in the existing registration. Once these specifications are removed, an identical new application can be filed to regain protection for those specifications.

Altering the trade mark itself

A final category of strategies involves modifying the visual presentation of the mark in the new application to distinguish it from the previous registration. This can be achieved by:

• Filing an updated version of the logo;
• Adding a house mark to a proposed word or figurative mark;
• Registering a combined word-and-device mark instead of a plain word mark.

The process for these defensive filings generally follows a standard timeline:

• Formalities examination: one month from the application filing date.
• Substantive non-expedited examination: six to eleven months, provided no office action is issued.

Examples of famous brands

McDonald’s: a series of re-filed marks including  AN 2024847234,  AN 2024847241, both in classes 09, 16, 18, 21, 25, 28, 29, 30, 32, 43. There are also other pending marks by this applicant. Status: pending.

Dior: Dior A Nos. 2024785139 , 2024785180 , 2024785185 , 2024785182  in classes 9, 12, 14, 18, 25 and other applications.

Google: GOOGLE No. 2024834673,  2024834886,  No. 2024785040,  No. 2023796605, No. 2023792590 (pending). RN 1037556  (registered).

Starbucks:  No. 2024756503, Starbucks No. 2024756502,  No. 2024759411,  No. 2024759412,  No. 2024758826,  No. 2024757045,  No. 2024757044 and others.

Energy Beverages LLC (Burn):  AN 2023767774 (pending), RN 1104523 , RN 1061158  (registered)

Mars (Pedigree): RN 1071239  (registered)

Lyft: RN 1109354  (registered), while there is a prior identical RN 764251 for .

Panda Restaurants: PANDA EXPRESS RN 1127172 (registered) in class 43 while there is a prior identical registration RN 544762 for similar services.

In 2024 we managed the defensive re-filing of over 150 trade marks for a European client. While the marks themselves were identical to their prior registrations, we successfully tailored the goods and services specifications with descriptive amendments to secure registration.

Similarly, in the summer of 2025, another European client successfully re-filed over 50 applications for their house and product brands, leveraging various re-filing strategies to secure protection.

Crucially, Rospatent granted these applications without incident. The resulting registrations were secured without a single objection based on abuse of rights.

Potential complications

A 2023 ruling from the Russian Supreme Court introduced a potential complication, establishing that when the same owner seeks to obtain a new trade mark similar to one previously cancelled for non-use, the action could be deemed an abuse of rights.

The Court viewed such filings as an attempt to circumvent the cancellation and prevent third parties from registering and using the same trademark. This ruling, however, was a direct response to the tactics of local “trademark squatters”.

Our analysis of the emerging case law indicates that this approach has not yet been widely adopted and primarily applies after a non-use cancellation proceeding has been initiated. Therefore, to pre-empt any risk of defensive filings being qualified as an abuse of rights, we strongly recommend filing them proactively and well in advance of any potential non-use claim.

Subject to Parliamentary approval, the UKIPO has confirmed that it will implement significant fee increases across its range of services, effective from 1 April 2026.

The UKIPO has cited several key reasons for this increase, including inflationary pressures, sustainability and service quality.

The fee increases are in the region of 25% on average and apply to patents, trade marks and registered designs. Details of the new fees can be found at: https://www.gov.uk/government/news/intellectual-property-office-fees-to-increase-from-april-2026.

In light of these likely (and substantial) fee increases, rights holders are encouraged to actively consider their short-term filing, maintenance, recordal and opposition/cancellation strategies, in order to take full advantage of current UKIPO fee levels.

By Gavin Stenton, Partner, Penningtons Manches Cooper LLP, and Chair, MARQUES International Trade Mark Law and Practice Team

Argentina and the United States announced a framework on 13 November 2025 to deepen bilateral trade and investment ties, signalling a potential reset of Argentina’s IP regime after more than a decade of restrictive pharmaceutical patent practice. Dámaso Pardo, a member of the MARQUES International Trade Mark Law and Practice Team, explains more.

The joint statement, issued under the countries’ Trade and Investment Framework Agreement, commits both sides to foster a “transparent and rules-based environment for commerce and innovation” and singles out IP as a priority area for reform.

In the statement, the United States noted Argentina’s recent enforcement actions against a major regional market for counterfeit goods and highlighted commitments by Argentina to tackle structural concerns cited in the 2025 Special 301 report.

Those include patentability criteria, patent backlog and geographical indications, alongside broader alignment of Argentina’s IP framework with international standards.

The Milei administration in Buenos Aires would be forced to modify certain regulations and ratify IP treaties, putting IP at the centre of ongoing talks, focusing on two headline measures: repealing a 2012 Joint Resolution that tightened the examination of pharmaceutical patents and advancing ratification of key international IP treaties including the Patent Cooperation Treaty (PCT), the Madrid Protocol, and the Hague Agreement.

2012 Joint Resolution

At the heart of the policy debate is the 2012 Joint Resolution (MI 118/12, MS 546/12, INPI 107/12), adopted during the administration of Cristina Fernández de Kirchner.

That measure introduced restrictive examination guidelines for chemical-pharmaceutical inventions at the National Institute of Industrial Property (INPI), curbing what innovators describe as routine avenues of protection for follow-on improvements. The guidelines have sharply limited patentability for new forms of known substances, dosing regimens, combinations lacking demonstrated synergy, and second medical use claims, among others, driving lower allowance rates, lengthier prosecution, and narrower claim scopes.

Research-based pharmaceutical companies have long argued that the framework deters investment in high-risk R&D and places Argentina at a disadvantage relative to jurisdictions applying standards closer to the European Patent Convention or the United States.

Domestic generic manufacturers, represented by industry groups such as CILFA, have historically supported the tighter criteria, framing them as necessary to prevent “evergreening” and protect public health. Litigation brought by the Argentine Chamber of Medical Specialties (CAEME) and the Biotechnology Chamber (CAB) to overturn the 2012 regime has thus far failed to dislodge it.

In a first-instance ruling on 9 October 2025, Federal Civil and Commercial Court No 1 upheld the validity of the 2012 guidelines and related administrative measures, finding them consistent with Argentina’s Patent Law and flexibilities under the TRIPS Agreement. The court emphasised the guidelines’ status as internal instructions to examiners rather than new legal requirements, while noting that the executive retains authority to repeal the resolution. Appeals remain possible to higher courts.

Multilateral IP systems

Parallel to domestic policy shifts, Argentina is moving to integrate with multilateral IP systems long favoured by its trading partners. While the Senate approved the PCT in 1998, final ratification still requires approval by the Chamber of Deputies.

The Argentine government will have to complete PCT ratification before the end of 2025 and then adopt the Madrid Protocol for trade marks and the Hague Agreement for industrial designs as well as other international treaties before the end of the Milei mandate in 2027. If enacted, these steps would streamline cross-border protection for patents, brands, and designs and bring Argentina into closer alignment with the practices of major markets.

Industry observers say the combined effect of repealing the 2012 pharmaceutical guidelines and adopting international registration systems could materially alter Argentina’s innovation landscape.

Although details of any revised patentability criteria have not been released, practitioners expect either a full repeal of the 2012 resolution or a negotiated replacement that eases current restrictions while addressing domestic stakeholders’ concerns.

Procedurally, faster pathways may also gain traction. INPI’s existing accelerated examination mechanism under Resolution P-56/2016 allows applicants to leverage a granted foreign patent – subject to constraints on claim scope, prior art, and patentable subject matter – with a 60-day decision window once conditions are met. In a reformed environment, companies could see patent grant timelines fall from the current eight to ten years to as few as four years in straightforward cases.

Any shift is likely to reverberate across Argentina’s pharmaceutical sector. Strengthened protection for incremental innovations could extend exclusivities around core compounds, alter lifecycle management strategies, and influence the timing of generic entry. Generic manufacturers may face a tighter window to launch variants and follow-on formulations, even as data requirements and evidentiary standards continue to frame examination outcomes.

For global rights holders, alignment with the PCT, Madrid, and Hague systems would reduce administrative friction and facilitate coordinated filing strategies across markets.

The path ahead remains tied to political and legislative calendars. With a new composition in Congress after 10 December 2025, government officials and industry stakeholders are preparing for consequential debates over the contours of Argentina’s IP policy.

While further court proceedings may continue in parallel, the executive branch retains latitude to unwind or replace the 2012 guidelines.

For now, the joint US-Argentina framework marks the clearest signal yet that Buenos Aires intends to recalibrate its IP rules toward international norms, setting the stage for a new chapter in trade, investment, and innovation policy.

Dámaso Pardo is a partner of Bruchou & Funes De Rioja in Argentina and a member of the MARQUES International Trade Mark Law and Practice Team

WIPO has published WIPO Pulse 2025, which is based on a survey of 35,500 respondents aged 18 to 65 in 74 countries.

The survey found that global recognition of IP’s critical role in protecting innovation and creativity and IP understanding across all categories of IP have increased since the inaugural survey of 2023.

The key findings of WIPO Pulse 2025 are:

• IP awareness has increased all categories, with public awareness of trade marks and copyright increasing from 30% to 36% and from 38% to 40% respectively. There has been substantial progress in the Asia-Pacific region: awareness of geographical indications has increased from 26% to 35%, copyright from 32% to 40% and trade marks form 26% to 34%
• Progress among women and youth: In the Asia-Pacific, women’s awareness increased across all five IP rights measured: copyright awareness rose from 31% to 40% and trade mark awareness from 26% to 34%. Youth awareness increased in Asia-Pacific and western Europe, but declined in Latin America, the Caribbean and eastern Europe.
• Strong trust in IP rights: when asked to rate their agreement with key IP attributes, respondents scored on average 4 on a scale of 1 to 5.
• Confidence in IP’s role in the economy: Positive perceptions of the impact of IP on the economy remains stable at 64%

WIPO Director General Daren Tang said in a statement: “The good news from our survey is that IP is increasingly winning hearts and minds all over the world. Public awareness of IP has grown and attitudes towards IP has become more positive. But there is work ahead – there are still disparities in IP awareness among certain age groups towards awareness and certain types of IP remain relatively unknown.”

The report runs to 48 pages and can be viewed and downloaded on WIPO’s website here.

Picture shows the cover of the report

The Google Doodle is an example of a fluid trade mark

The MARQUES Brands and Marketing Team has published a set of guidelines for companies on the use of fluid trade marks.

Fluid trade marks are a creative way to engage audiences by evolving a brand’s visual identity while preserving its core recognizability. Variations may include changes in colour, form or animation.

While fluid trade marks offer flexibility and relevance for modern brands, legal and strategic safeguards are essential to prevent loss of distinctiveness or enforcement challenges.

The 17 guidelines cover: core identity protection, legal risk management, strategic and creative use, enforcement and control, digital and technological considerations, and long-term oversight.

The document can be downloaded from the Team’s page on the MARQUES website (MARQUES log-in required).

The guidelines are written by Farah Molino, Rocio Fernandez-Bujarrabal, Djura Mijatovic and Flavia M Murad-Schaal, who are all members of the Team.

Picture from the Google Doodle library.

Charlotte Duly of the MARQUES Education Team reviews “Exhaustion of Intellectual Property Rights” by Professor Shubha Ghosh (published by Edward Elgar Publishing, priced £95 for the hardback and available here). 

This book reviews the principle of exhaustion of IP rights on a global basis, including the approach in the USA, EU and other territories. The book splits the various IP rights into separate chapters, looking at how exhaustion is applied in the fields of patents, copyright, trade marks and trade secrets. 

Exhaustion is a hot topic in the United Kingdom following the departure from the EU (Brexit).

Generally, the EU principle of exhaustion means that once a product has been placed on the market in an EU member state with the rights holder’s consent, the rights holder cannot use their IP rights to prevent the resale or free movement within the EU. Following Brexit, the UK had to consider their position regarding exhaustion and opted for a unique UK+ regime, which the UK government confirmed would be maintained earlier this year.

The UK’s position essentially ensures that IP rights are exhausted in the UK when a good is placed on the market in either the UK or the European Economic Area (EEA). However, this is not reciprocated and now the UK is outside the of the EU it does not have the benefit of the EU exhaustion principle, meaning the flow of goods from the UK to the EU could be restricted by IP rights. 

Globally, the position is, unsurprisingly, not uniform and this book offers a clear and comprehensive explanation of how exhaustion applies to the various IP rights across a number of territories. 

In recent years, key trends and issues have emerged across sectors, in particular involving the environment and advances in technology. This book contains a chapter dedicated to upcycling and renewal and considers how exhaustion may apply beyond the first-sale doctrine to allow for reuse.

Digital exhaustion is also discussed and is likely to be an ever-growing topic of interest across the globe. Whilst technological measures may be used in the digital sphere to make the resale or reuse of rights difficult or impossible, as there are further advances in technology the opportunities to exploit rights will evolve and this chapter provides food for thought. 

This book is thought provoking and will be embraced by students and IP scholars. It is also a fascinating source of information for those working in the IP field, such as lawyers and rights holders, to consider the boundaries and evolution of exhaustion. 

The picture shows the cover of 'Exhaustion of Intellectual Property Rights'

In a guest post for Class 46, Alice Fratti discusses a recent case that illustrates how law and marketing can protect brand value and the customer experience for everyone enjoying the allure of luxury:

A recent decision by the Court of Milan’s illustrates how the control of distribution channels is crucial in preserving the prestige of luxury goods. The ruling reinforces the importance for brand owners of protecting selective distribution, and for retailers it serves as a warning that cutting corners on brand presentation can potentially have serious legal and reputational consequences.

We are reminded by this case that luxury is crucially about experience, not just products. It is about the presentation of a product and the story that unfolds throughout the customer’s retail experience. Selective distribution is therefore much more than a legal safeguard; it is an essential component of luxury brand management.

The case

In an order dated 3 March 2025 which was confirmed on appeal on 9 June 2025, the IP Chamber within the Court of Milan ruled in favour of Chanel against the companies operating Acqua & Sapone, a leading Italian retail chain in the mass-market sector, which is engaged in the sale and distribution of personal care, beauty, hygiene, and household cleaning products.

Acqua & Sapone manages a widespread network of retail outlets throughout Italy, offering branded consumer goods to the general public at competitive prices.

The evidence presented in the case showed that the products were sold in a mass-market environment, within the same premises where a wide variety of goods from different product categories – none possessing any aura of luxury – were also sold, even if displayed in separate areas within the store. In particular, the products were kept in drawers rather than displayed on shelves.

The Court upheld Chanel’s request and prohibited the sale and advertising of Chanel perfumes outside the authorised selective distribution network. The Court found that the specific sales methods adopted by Acqua & Sapone impaired the brand’s aura of luxury, thereby justifying a derogation from the principle of trade mark exhaustion.

General principles of selective distribution

Chanel’s commercial strategy, similar to other luxury brands, is based on an accurate system of selective distribution. Article 1(g) of Regulation (EU) 720/2022 (VBER) defines selective distribution as a system in which the supplier agrees to sell goods or services only to distributors selected on the basis of specified criteria, and such distributors agree not to sell those goods or services to unauthorised resellers.

This system ensures not only quality and professionalism in the sales process but also a shopping experience aligned with consumer expectations. The Court of Justice of the European Union (CJEU) has repeatedly emphasised, most notably in the Coty case (Case C-230/16), that the quality of luxury goods derives not only from their material characteristics but also from the prestige and aura of exclusivity that surround them, from the experience of product selection to the particular packaging at the end of the customer’s sale.

Trade mark exhaustion and its exceptions

The Chanel case directly touches upon the principle of trade mark exhaustion. Article 5(1) of the Italian Industrial Property Code (c.p.i.) provides that the trade mark owner cannot oppose the further commercialisation of a product once it has been placed on the market within the European Economic Area by the owner or with their consent. However, Article 5(2) introduces an exception: the owner may object to further commercialisation if legitimate reasons exist.

Jurisprudence and legal doctrine confirm that selling luxury products outside the authorised network, in conditions detrimental to the brand’s image, represents precisely such a scenario. However, recognition of this exception requires a precise and specific assessment of the sales methods adopted by the unauthorised reseller, with the need to demonstrate that these practices harm the prestige and exclusivity of luxury products.

Final considerations

The Chanel litigation demonstrates how law and marketing intersect in the defence of luxury goods. Selective distribution is not merely a legal instrument; it is an essential component of the brand’s consistency in the market space and one that is worth protecting.

Alice is counsel at Trevisan & Cuonzo in Italy, which represented Chanel in this case and is a member of MARQUES