Non-use of a trademark is generally grounds for the termination of its legal protection. If a trademark fails to perform its function of distinguishing goods and services, the law stipulates that the registers of signs must be ‘cleansed’ of such trademarks.
The termination of trademark rights due to non-use is enshrined in both national and supranational legal frameworks. Article 19 of the TRIPS Agreement explicitly allows for early cancellation of trademarks that remain unused. Similarly, Article 58 of the EU Trademark Regulation establishes a five-year non-use threshold for European trademarks before they become vulnerable to revocation.
Italy plays by the same rules. At the level of national legislation, Italy also has a provision for the cancellation of a trademark if its owner has not used it for 5 consecutive years (Art. 24 of Codice della Proprietà Industriale (D.lgs. 30/2005)).
Under Russian law (Article 1486 of the Civil Code), a trademark may be cancelled if it has not been used for three consecutive years – including for specific goods it covers.
This provision is actively used by Russian companies against trademarks owned by businesses that left the Russian market over 3 years ago. The number of court cases is growing, and this fate now affects not only obscure brands.
For instance, in October 2024 the Intellectual Property Court ruled to terminate the trademark of Swedish company Ericsson (Case No. SIP-334/2024), and then in June 2025 proceeded to revoke trademarks of Nokia (SIP-799/2024) and Amazon (SIP-808/2024) on the same grounds.
Major apparel retailers aren’t immune either. In June 2025, Russia’s Intellectual Property Court partially canceled Bershka trademarks owned by Inditex (Case SIP-805/2024). While the fashion giant retained protection for core categories – clothing, accessories, bags and advertising services – it lost rights for certain products like jewelry and toys.
With the three-year mark now reached, foreign companies that exited the Russian market face grave risks to their trademark registrations in the country.
Procedure for termination of trademark protection: strict sequence of actions
- An interested party sends the rights holder a proposal to either voluntarily abandon the trademark or enter into an assignment agreement. Such proposal may be submitted to the rights holder no earlier than 3 years after the registration date (not the application filing date).
- If the rights holder fails to respond within 2 months, the interested party may file a lawsuit with the Intellectual Property Court (within 30 days after the expiration of the 2-month period).
- A new assignment proposal may only be submitted 3 months after the previous one.
How can foreign rights holders protect their brand?
- Prove use of the trademark in Russia. The rights holder may submit any evidence of use, including:
- Licenses granted to other companies for use in Russia
- Advertising materials
- Exhibition displays
Critical requirement: To maintain full protection, the rights holder must prove use for each product in every Nice Class for which the trademark was registered.
- Demonstrate brand recognition
Emphasize the trademark’s notoriety and prove that Russian consumers still strongly associate the mark with the brand. Market exit doesn’t automatically negate brand recognition.
Example: In 2025, the Intellectual Property Court refused to cancel the Fanta trademarks (Case SIP-493/2024) based on consumer recognition proven through market surveys. This same argument helped Inditex protect the most important Bershka trademark categories.
- Show objective obstacles to use in Russia
The rights holder may claim that non-use resulted from circumstances beyond their control, such as: force majeure events or import restrictions.
- Challenge the plaintiff’s motives
The rights holder can argue that the plaintiff:
- Has no real intention to use the contested mark
- Seeks cancellation solely to free-ride on the brand’s reputation.
- File a new trademark application
Submit a fresh application after making minor modifications to the mark.
- Oppose similar trademark applications
Actively file oppositions with Rospatent against registration of confusingly similar marks.
Sanctions – A Valid Reason for Non-Use of a Trademark in the Russian Federation?
As previously mentioned, import restrictions may be recognized as circumstances that objectively prevent the use of a trademark in Russia. However, the situation is not so clear-cut.
For example, in Case No. SIP-227/2024, the court canceled a trademark despite the rights holder’s argument that supplies were impossible due to sanctions imposed by Lithuania on the transit of alcoholic products to Russia.
Yet it remains unclear whether the court’s decision would differ if the case involved sanctions initiated by the Russian side (e.g., a ban on the import of certain goods).
Trademark Cancellation Is Not the End!
It’s important to note that even if a court cancels a trademark, this does not automatically grant Russian companies the right to use it. Foreign rights holders can still file objections with Rospatent, arguing that a Russian company’s registration of the same or a similar mark misleads consumers.