According to feedback from various Russian law firms, the practice of brand “hijacking” has become prevalent in Russia this year.

Not only do Western brand owners faced an increased risk of losing their established Russian trade mark rights, but they also face the prospect of never being able to re-enter the Russian market in the future, if, or when, the Russia-Ukraine conflict resolves and some kind of normality returns to that part of the world.

Background

The conflict involving Russia and Ukraine broke out in February 2022. In response to this, many well-known Western brand owners decided to cease all business operations in Russia and pull out entirely. Almost all of these brands would have held trade mark rights in the territory at that time.

In Russia, if a trade mark registration is not used for a continuous period of 3 years then it becomes vulnerable to cancellation for non-use by any interested party. This is a common mechanism under trade mark law in most territories and regions of the world, but elsewhere the non-use period is set at 5 years, such as in the UK and European Union, for example.

With the passage of time since the war in Ukraine commenced, this now means (in 2025) we are three years on and that all businesses who chose to stop selling/commercialising in Russia in response to the war will now have trade mark registrations that are vulnerable to non-use. Of course, some brands may have not been in use in Russia regardless of the conflict, but they remain equally as vulnerable.

Recent developments

It has been reported that a pattern has been emerging in Russia whereby local individuals and companies (“hijackers”) have been seizing on the “non-use” vulnerability of Western trade mark rights.

In essence, hijackers are applying to register the same marks for themselves and simultaneously threatening to cancel the earlier rights (that they know or strongly suspect) have been out of use for at least the last 3 years.

To follow protocol and as a precursor to the non-use cancellation of a trade mark right, a hijacker must serve official “notice” to an earlier right brand owner. This notice period is for 2 months and its purpose is to warn the brand owner that they will be faced with a cancellation action(s) should the brand owner not agree to consent to registration of the hijacker’s later application(s), or otherwise licence or assign the registration(s) to the hijacker.

Of course, none of these options are at all palatable and they are not intended to be, but it leaves a brand owner on very shaky ground when it realises a non-use action (which is brought before the Russian IP Court) cannot be defended.

Above all, there is nothing illegitimate about this practice. Trade mark law provides that a registration can be cancelled if it has not been used for the required length of time.

Is there any defence?

If the brand owner realises it has made no use of its mark in Russia and could not defend a cancellation action, is there anything else it could do?

There is, in theory, a defence to “non-use” in Russia.

To raise a non-use defence, the brand owner must argue that the mark has not been used in Russia due to circumstances outside of its control. In other words, it would have to argue that it would have used the mark if it had been able to, but extraneous circumstances meant that it could not do so.

To begin with, it is highly unlikely that a court in Russia would deem the outbreak of the Russia-Ukraine conflict (and the moral stance taken by the brand owner to pull out of Russia in protest) to be sufficient reason in this case.

It is possible that the sanctions levied against Russia since 2022 have made it far more difficult to do business there (for example, the difficulty of delivering goods and services and transferring money in and out of the territory) but how a Russian court would view this is completely unknown because there is no precedent.

We believe the best view to adopt is a pessimistic one and that a Russian court is unlikely to be sympathetic to a Western brand owner when assessing a pleading of defendable “non-use”, instead favouring local enterprise.

What can a brand owner do?

Most brand owners have dedicated trade mark watches in places for their key marks of interest. These watches would notify the owner if a hijacker has targeted one of their marks by filing its own application to register the same mark for the same goods or services.

The problem is that, by then, it may already be too late to stop the hijacker if the brand’s earlier right is out of use and vulnerable to cancellation.

Although we cannot say when and where this might happen, we would advise all brand owners that have important established Russian trade mark rights to take a proactive approach NOW in order to deter any attacks from trade mark hijackers.

They should take the following steps:

• The first step is for the brand owner to check its Russian trade mark portfolio and identify all rights that are three years old and over.

• Next, identify all registrations that are out of use (i.e. any mark that has not been put to use in Russia over the last 3 years).

• Thirdly, from the vulnerable registrations identified at the step above, highlight all registrations that are critical to the business (i.e. those registrations that the owner would want to avoid as “hijack” targets).

• Lastly, consider re-filing new applications to re-register the marks identified (these being the critical marks which are out of use and vulnerable to attack).

The above assumes that, in the short term at least, the relevant mark or marks will not be put to commercial use in the near future. Therefore, the next best “cure” would be to establish a new right in Russia by re-filing.

It is important to note two things here:

• A re-filing would not save the older established right from cancellation were it to be attacked, but the purpose of re-filing would be to establish a new right before a potential brand hijacker has the chance to file their own application. In that scenario, we think it would make little sense for the hijacker to try and cancel the older registration(s) or even file their own application.

• It is not possible to file a duplicate of the same mark and goods in Russia. If the same goods/services are to be covered, the mark must have a small visual difference to the mark under an existing registration – assuming common ownership of the junior and senior rights.

What if the brand takes no action?

In the worst-case scenario, if a legitimate brand owner’s registration is wrestled away from the Russian register by a hijacker, it may be very difficult to re-enter the Russian market in the future. This does assume the hijacker puts its own registration to use during the relevant 3-year period to ensure that it cannot be attacked.

What to do now

Take action, or at least consider it.

Need help?

If you are a brand owner with Russian trade mark rights and have any concerns on this subject, then please feel free to contact SH&P trade mark attorney Robin Webster for a consultation and advice.