Rights holders ‘quitting too soon’ in face of provisional refusals

Research by Rouse shows ‘unnecessarily low’ success rates in international registrations

New research by Rouse suggests that global businesses are ‘giving up too early’ in their attempts to secure international registrations designating Russia.

Analysis of WIPO registration data has uncovered figures, which show a significant number of applicants are abandoning the Russian arm of international registrations once faced with provisional refusals handed down by Russian Intellectual Property Office, Rospatent.

Despite the relative ease with which provisional refusals in Russia can be overcome, the data suggests global rights holders are forsaking their pursuit of international registrations.

Since 2008, the Russian Federation has continually placed alongside China, the EU and the US between second, third and fourth place in WIPO designation ranking.

Between 2008 and 2014, 113,953 applications designating Russia were submitted to WIPO. The number of provisional refusals handed down by Rospatent on those applications from 2009 to 2015 totalled 47,001 (41%).

Critically, the number of international applications filed between 2008 and 2014 successfully proceeding to registration between 2009 and 2015 totalled 81,000, indicating that 32,953 applications designating Russia failed to reach registration.

Therefore, of 47,001 provisional refusals handed down between 2009 and 2015, a maximum of 14,048 refusals – barely 30% – were overcome.

“A universal success rate of 30% is surprising”, commented Stuart Adams, Russia Country Manager at Rouse.

“We know that overcoming provisional refusals in Russia is not difficult. Rospatent sets the bar relatively low and the criteria for overturning a decision is moderately straightforward providing you adopt the correct approach.

“Rouse has a proven track record of overcoming 80% of provisional refusals our clients receive. To see so many initial refusals failing to reach successful registration suggests that rights holders may not appreciate that it is
often not difficult to persuade Rospatent to change their mind on a provisional refusal. 

“It is important to note there are other influencing factors that affect the number of provisional refusals that fail to reach successful registration. But these figures are sufficiently robust to paint a clear and surprising picture.

“Perhaps because of inadequate guidance, businesses and brands appear to be giving up too soon when faced with provisional refusal. Adopting a more robust approach and greater perseverance, could deliver a significant uptick
in successful Russia designations for rights holders globally. A success rate as low as 30%, 40% or even 50% is entirely unnecessary”.