10 questions for a trademark specialist

From our experience of working with clients, during the initial consultation with a trademark specialist, questions of similar content are often asked. We will try to answer the most relevant of them in this article.

1. Register a trademark or patent an industrial design?

It is sometimes very difficult to understand the variety of intellectual property objects, especially for those who are just embarking on this path. Realizing that they need to protect their brand, clients often ask how best to do this. The choice of options comes down to registering a trademark and patenting an industrial design and is made depending on the object and purpose.

The main function of a trademark is individualizing; with its help, the goods and services of a particular company can be distinguished in the market from a number of others.

The purpose of an industrial design is to protect the appearance of the product itself, its design, including shape, surface character, pattern, lines, color scheme and other features that determine its aesthetic features.

As a rule, the choice is quite simple: you need to protect the logo - we register a trademark. But sometimes an object (for example, packaging, label) can be protected both as a trademark and as an industrial design. Then you should decide what exactly you want to protect - the appearance of the product or individualize the brand, and also take into account all the advantages and disadvantages of both intellectual property objects. For a more accurate assessment, it is also advisable to conduct a search both in the trademark database and in patent information.

In addition, according to Russian legislation, it is not prohibited for an object to receive comprehensive legal protection both as a trademark and an industrial design.

2. If there are several designation options, is it possible to register only one?

After a client has decided to register a trademark, as a rule, many questions arise regarding the designation itself: there are often several variations of the designation, more or less different from each other.

In this case, we always recommend registering the trademark in the form in which it is planned to be used. This means that the number of trademark applications must correspond to the number of variations in the appearance of each designation. Otherwise, there is a risk of not being able to prove its use if any person takes action to early terminate the legal protection of a trademark through the court in the manner prescribed by Article 1486 of the Civil Code of the Russian Federation.

The exception is when the changes are very minor and do not change the essence of the designation. At the same time, the insignificance of changes is a subjective factor, which complicates the process of proving it.

3. If you register a designation in black and white, will this protect it in other color combinations?

The same recommendations apply for color combinations as for designation variations. Registration of a trademark in black and white does not imply its protection in colors other than black and white.

In a case where a trademark is registered only in black and white, there is a possibility that its use in color may not prove the use of the registered black and white mark. This rule also applies in reverse: the use of a trademark in a color combination may not prove its use in black and white.

Thus, if you plan to use a trademark in color in your activities, it is in this form that it should be registered.

4. Is it possible to submit one application for a trademark in Latin and Cyrillic?

A sign in Latin and Cyrillic alphabet cannot be included in one application for registration of a trademark. If a mark is intended to be used in both variants simultaneously, then a separate application must be submitted for each designation.

5. Why conduct a preliminary search?

Preliminary search is not the most popular option; many people skip this stage. However, to assess the chances of registering a designation before filing an application, we believe it is still advisable to carry it out.

The search allows, before filing an application, to assess the very possibility of registering a designation in the declared form, and, if necessary, adjust it in such a way as to increase the chances of registration. Taking into account the fact that the search is carried out not only in the database of registered trademarks, but also in the database of submitted applications, its results are much broader than with an independent search on the Internet.

6. What is ICGS?

The search is carried out, as well as a trademark application is filed in relation to specific goods and services for which the trademark is planned to be used in the future.

All goods and services are divided into 45 classes: 34 classes for goods and 11 classes for services in accordance with the International Classification of Goods and Services (ICGS). This classification was adopted within the framework of the Nice Agreement and is universal for use in all participating countries when filing an application for trademark registration.

General information on goods and services included in the classes of the ICGS is freely available on the Internet; the ICGS in the current edition can also be found on the FIPS website.

7. What should you consider when choosing goods and services when filing a trademark application?

The ICGS is quite extensive - it contains a significant number of positions in each class, and therefore it can be difficult to decide on the list.

When compiling a list of goods and services, we recommend that you proceed from the fact that: 1) after registration, the copyright holder has an obligation to use the mark in relation to those goods and services for which it is registered. If it is not used (impossibility to confirm use), the mark may be canceled by the interested party; 2) after submitting an application, you cannot add goods or services to the list; 3) if registration in relation to some items of the declared classes is refused by the examination, the list can be limited.

8. Why is the procedure for registering a mark so long? Is it possible to speed it up?

As a general rule, the standard period for registering a trademark is 8-10 months. At the same time, Rospatent provides an option for official acceleration. The essence of the procedure is to order an accelerated search from FIPS, the results of which are then used during the substantive examination, reducing it to 2 months.

It is important to keep in mind that accelerating the process of reviewing an application allows you to quickly obtain the results of the examination, but does not affect them, that is, the likelihood of receiving a notification on the application, and not a decision on registering a mark, is the same as with the standard period for reviewing the application.

9. What to do if, as a result of the substantive examination, a notification is received regarding the application?

The main thing is not to panic! Currently, receiving notifications on an application is not at all uncommon, given the extensive database of already registered marks. According to Rospatent statistics, more than 100 thousand applications were submitted in 2023 alone.

After receiving the notice, the applicant is given 6 months to respond to it. In this case, this is the applicant’s right, not an obligation.

Response options vary depending on the grounds on which the notification was issued: you can limit the declared list, prove dissimilarity with opposing marks, cancel them due to non-use, request letters of consent from copyright holders, prove the distinctiveness of the mark, and so on. Depending on the situation, methods for overcoming obstacles to registration are selected by the specialist individually.

10. What is the certification stage?

The procedure for registering a trademark does not end with a positive decision on registration. Once the decision to register has been made, the stage of obtaining a certificate begins. At this stage, you must submit an application and pay a fee for registering a trademark and issuing a certificate for it. In this case, there is an option to choose the medium: you can receive the certificate in the form of an electronic document or in paper form.

Thus, we have tried to answer the most frequently asked questions from clients related to trademark registration. We hope that this information has given a general idea of this procedure and has been useful as such!