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Irina Reznikova Patent Attorney No. 1947, senior partner of the Patent and Law Office “Gardium”.
What is a trademark
A trademark, which is sometimes also called a trademark, is a logo and a name that has been registered by the Civil Code of the Russian Federation, § 2 “The right to a trademark and the right to a service mark” in Rospatent and is now legally protected from misuse. That is, after registration, only the rightful owner of the trademark has the right to use it.
You can register as a trademark the name, logo, and their combination. It can be either the name of a company, website, product, or a surname or a name as a personal brand.
Images, i.e. logos, can also be patented: the design is considered an artistic element. However, usually businesses seek to register the name and logo as a trademark and obtain the appropriate certificate from Rospatent in order to achieve maximum legal protection.
Why register a trademark
First of all, to protect the company from competitors and not run into lawsuits. And after registering a trademark, new business opportunities appear.
Protect your business from unscrupulous competitors
This is the main task. If someone illegally used the Civil Code of the Russian Federation, article 1515 “Responsibility for the illegal use of a trademark”, the company’s name or logo on a package or on a sign in a store, the trademark owner can go to court. Violators will be forced to withdraw goods from circulation and destroy them, and remove the sign. Additionally, compensation in the amount of up to five million rubles can be paid.
Similarly, companies will be able to protect their brand on the Internet. For example, advertising platforms Google Ads Complaint about the illegal use of a trademark/Google Ads and Yandex Direct Advertising claims related to infringement of intellectual property rights/Yandex Help remove ads that violate exclusive rights. The main thing is that the owner proves that the logo or name belongs to him. The organization even has the right, through the courts, to select a domain with a name that repeats its trademark or is similar to it.
Finally, the trademark owner can enter the Customs Register of Intellectual Property Objects/Federal Customs Service into a special register to prohibit the passage of counterfeit goods through customs. From now on, only importers who have received permission will be able to pass the control.
Start a franchise
This cannot be done without your own brand: it is impossible to provide the Civil Code of the Russian Federation, Article 1027 “Commercial Concession Agreement” with the right to use that what you don't own. And the logo and name are important elements of the franchise.
Start selling goods on marketplaces
Trading platforms do not want to take risks because they can be fined for trademark infringement and require proof of it.
In the contract for suppliers, there is often a clause on pre-trial reimbursement of costs in case of violation of intellectual rights. This means that if the site receives claims for compensation, it will pay them, but then the seller will be obliged to reimburse the costs on demand, and not after a court decision. But a registered trademark gives the site the opportunity to justify refusal of payments and confirms the seller’s good faith.
Get a new intangible asset
A trademark is not just a unique name or logo, but also a full-fledged asset companies. A cool and recognizable sign is highly valued by ordinary buyers and investors.
It is no coincidence that the dispute between Apple Computer (now called Apple Inc. and manufactures the iPhone) and Apple Corps lasted more than 25 years at the core of the Apple dispute/BBC. Steve Jobs and the company paid fines many times until the parties came to an agreement – all to keep the famous logo. In turn, the successful rebranding of Facebook led Meta Platforms shares rise as Facebook rebrands to focus on metaverse/Reuters to an increase in the value of the company's shares.
A trademark is also considered property, so it can be pledged to get a loan, or even rent it out.
What should a trademark be like in order to be registered
There are the Civil Code of the Russian Federation, article 1483 “Grounds for refusal of state registration of a trademark”, several basic requirements.
Unique
It should not repeat already registered trademarks. This applies to both appearance and sound.
For example, Cristal and Crystal can be a cause for dispute. Although the names are spelled differently, they sound the same. It is also unlikely that it will be possible to register the Pumba logo, which retains the characteristic outlines of the brand of a well-known sportswear manufacturer.
Recognizable
Commonly used concepts or generally accepted terms and meanings that characterize the quality of goods should not be used in a trademark. The logo cannot follow the shape of the product.
This means you won't be able to register “Automobiles” as the name of an automaker company or patent a logo that depicts specific candies in the package.
Not misleading
Usually this requirement concerns geographical names. So, on the logo of the wine, which is produced in the Crimea, Georgia should not be mentioned. However, for the same reason, they may refuse to register the name “Best Pens” for a pencil manufacturer. -znak-i-kak-sdelat-eto-bez-lishnih-problem-56b9be9.jpg” alt=”Why register a trademark and how to do it without unnecessary problems” />
Offending no one
No obscene language, or offensive or inhumane phrases or images.
In practice, however, it is not always clear how decisions are made. Thus, the trademark “Yobidoyobi” was registered, and “Yoshkin Kota” was denied trademark registration three times. From the agency's point of view, the Japanese expression written in Russian transliteration is not abusive, but “Yoshkin's cat” is an offensive phrase.
Consisting not only of abbreviations
Rospatent will not register a random combination of letters. But if the abbreviation is a unique composition, it can be registered as a brand. For example, the logos of different TV channels are eligible.
Without elements of official symbols
And this applies not only to the flag or coat of arms of Russia, but also, for example, symbols of international organizations.
No mention of cultural heritage
That is, you can not use everything that is included in the register of cultural heritage. So it will not work to call the flower shop “Bouquet & Kremlin” or use St. Isaac's Cathedral as a logo element.
Where to check the uniqueness of a trademark
You can do it yourself with a few free services.
- Official register of Rospatent. Only the names can be checked, but the system immediately analyzes the Cyrillic and Latin versions. There are free and paid versions. The database of the first includes only already registered marks, and the second includes those that are also undergoing registration. You can also view all brand details on the site, such as transfer history.
- Brand Search.A free service with which you can check trademarks, names of legal entities, domains. The search goes through the entire database of Rospatent, including its paid part. Another advantage of Brand Search is the automatic selection of classes of the Nice Classification (International Classification of Goods and Services) and the calculation of the probability of registering a trademark.
- Linkmark.Its feature is image search. The site allows you to check not only the names, but also the logos. Pictures are selected based on international classification codes, so it can be difficult for a beginner to figure it out. Unfortunately, the free version only analyzes registered trademarks and image search is limited to the first 12 results.
How to register a trademark
The registration of trademarks is carried out by the Civil Code of the Russian Federation, article 1480 “State registration of a trademark” by Rospatent, or rather, its subsidiary, the Federal Institute of Industrial Property (FIPS). Its main office is located in Moscow, but it also has regional offices in St. Petersburg and Novosibirsk.
Typically, the procedure for registering a trademark takes three to eight months. An accelerated procedure in three months is possible only if you pay a special tariff of Rospatent for 94 thousand rubles.
The brand registration procedure looks like this.
- Development of the name and logo.
strong>It is necessary that the trademark be unique and meet all other requirements of Rospatent. It is also worth preparing a description, which will also need to be included in the application.
- Selection of classes of the Nice Classification. Goods and services can belong to different classes, so it is important to determine the appropriate one. There are 45 categories in total, they can be viewed on the FIPS website or selected using the Brand Search service.
- Paying the state duty. The fee for registering a trademark is about 30 thousand rubles (Tables of types of legally significant actions and amounts of fees/Rospatent), 30% less when submitting an electronic application – 23 thousand. Fees for consideration and examination depend on the number of classes of the Nice Classification. Fees can be calculated using the table on the Rospatent website.
- Preparing and filing an application.On the portal of the department there is a form and a completed example with the necessary information. The document must indicate the owner of the mark, the applicant, describe the mark, as well as indicate the classes of the Nice Classification and the list of goods and services. The application must be accompanied by a trademark, receipts for payment of state duties and documents proving priority and uniqueness. When everything is ready, you need to submit the entire package through the “Gosuslugi” or the personal account of Rospatent.
- Answer to the expert's requests.After the application is accepted, the department's specialists conduct a formal and substantive examination of the designation declared as a trademark, Article 1499 of the Civil Code of the Russian Federation, Article 1499 “Examination of a designation declared as a trademark”. During the first, payment of state duty and compliance with laws are checked. During the second, compliance with the requirements for the uniqueness of the logo, and so on. If the experts of Rospatent want to clarify something or have doubts about the protection of the mark, they send a corresponding request. It must be answered within six months.
- Obtaining a certificate. If the examination was carried out without problems or the applicant managed to refute the arguments of the experts, the trademark is entered into the register of Rospatent, and the brand owner receives a certificate about trademark registration.
If you can’t figure out the requirements of Rospatent on your own or you want to save time, you can contact a patent attorney. The latter will help prepare documents, draft or amend an application, and respond to expert requests. The qualifications of a specialist can be checked through a special register of Rospatent.
What to do if the trademark is already taken
There are several options, from simpler to really difficult.
Change the classes of the Nice Classification or remove unnecessary ones
This is the easiest way, and it can work: it is quite possible to register similar trademarks, but in different classes. For example, Rospatent refused to register the Dobraya Khozyaushka brand for an apron factory, because this trademark is already in the 25th class (clothes). Then the company can try to register the “Good Hostess” in the 24th (fabric and textile products that do not belong to other classes) or 26th class (lace and embroidered products).
Another working method is to reduce the number of classes of the Nice Classification and leave only the goods or services that are really needed, and not all the goods in the class. People often choose categories in reserve or even an entire class of goods – naturally, in this case, the likelihood of coincidences increases. It is worth thinking about what exactly you are selling now and leaving only this.
Finish the logo or name
You need to make them unique and get rid of the similarity with the competitor's version.
To fix the logo, you should contact the designer: you need to add distinctive properties and original elements. For example, add a new element to the image or change the style of the text part.
In the case of names, lawyers usually rely on the decisions of the Court on intellectual rights. Specific changes depend on the kind of similarity.
- Phonetic. How similar brands sound. Let's say Fenix and Phoenix are spelled differently, but read about the same.
- Semantic. The difference in the meaning of the words is evaluated. So, igood and beGood were found to be similar in terms of semantics, but Canti and Cantinero were found to be different.
- Graphic.visual similarity. Often found when using Latin names. For example, Globo and Globe. This requirement can be circumvented by changing the font and adding some special elements to the word.
Get written consent from the owner of a similar trademark
Then Rospatent can even register a trademark in the same class.
However, if Rospatent considers that the use of a trademark misleads the consumer, it may refuse to register the brand, despite written consent.
Prove that someone else's trademark the sign is not used
In this case, you will have to go to court. The latter must be convinced that the trademark has not been used for more than three years. If this succeeds, the logo or name will be canceled and their legal protection terminated. And it will be possible to register your brand.
Prove that the trademark was recognizable before registration
If Rospatent refused to register the trademark because it considered the name unprotectable, for example, due to commonly used concepts , then it will be very difficult to convince the department. You need to prove that the trademark has long been known to consumers and they associate it with your company.
Thus, the transformer plant “Volkhov” was refused “Gardium” helped a large plant overcome Rospatent's refusal to register a trademark/”Gardium” in the registration of a trademark, because “NTZ Volkhov” consists only of an abbreviation and a geographical name. To convince Rospatent, lawyers collected evidence that the name has been used for a long time and is well known to clients. As a result, the trademark was registered.
