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.