Three years after their exit from or suspension of operations in the Russian market, many foreign firms continue to maintain the legal protection of their trademarks in the country. However, failure to use a mark for more than three years allows third parties to seek the termination of that protection. This vulnerability has opened the door for opportunistic Russian businesses to exploit foreign brands’ recognition by filing for confusingly similar marks. Against this backdrop, Russia is witnessing a rising tide of lawsuits seeking the early termination of foreign companies’ trademarks.
With the three-year non-use period now expired for many departed brands, unscrupulous market players have mobilized. Their strategy is two-pronged: filing lawsuits to cancel existing trademarks while applying to register confusingly similar ones.
The targets include major names such as Starbucks, Xiaomi, Canon, Victoria’s Secret, 3M, and Procter & Gamble, among others. Crucially, courts are requiring rightsholders to prove their marks are in genuine use within Russia: a mere online presence is deemed insufficient. Required proof includes supply contracts, customs declarations, and other documentary evidence that goods were physically imported into the country.
The Ericsson case proved emblematic. Acting on a claim filed by R-Klimat LLC, the court ordered the early termination of Ericsson’s trademarks for Class 11 goods, which includes climate control equipment. The claimant asserted a legitimate interest in the disputed mark, arguing that cooling devices were a key part of its own product line. While Ericsson provided evidence of shipping telecommunications equipment to Russia and cited its brand’s wide recognition, the court deemed this insufficient. The ruling noted a lack of proof that the mark had been used specifically for Class 11 goods, adding that cooling components related to telecommunications equipment do not constitute standalone products.
Faced with this growing risk, international companies have shifted to a strategy of portfolio defense, pre-emptively filing a wave of protective applications. These are, in essence, re-registrations of their core marks with updated specifications of goods or refreshed logos. This approach is being actively used, with McDonald’s, Chanel, Prada, Lego and Coca-Cola among those adopting it.
The Semenov & Pevzner trademark practice team emphasizes that timely portfolio updates of this kind can significantly reduce the risk of non-use cancellation claims and preserve a brand’s legal protection.
