Keywords: intellectual property, means of individualization, exclusive rights, trademark, registration of a trademark, application for a trademark, formal examination of application for a trademark, obtaining a certificate for a trademark
The logo, brand, trademark or mark are all “ordinary” names of a subject-matter of intellectual property, for which there is only one correct legal term – “trademark.” The trademark is “a designation that serves to individualize the goods of legal entities or individual entrepreneurs” [“The Civil Code of the Russian Federation (Part Four)” of December 18, 2006 No. 230-FZ]. It is possible to register as trademarks words and phrases, images, the form of packaging, even colors and melodies, all that helps to distinguish the goods and services of some manufacturers from the goods and services of other manufacturers, to increase their recognition among the consumers, to fight an unfair competition.
The rights to any subject-matter of intellectual property, including to a trademark, is the ability of the right holder to use this subject-matter at his discretion, to dispose of it, to allow or prohibit its use to others and to protect his rights to it.
The trademark belongs to the category of subject-matters of intellectual property, the rights to which can arise only after the registration by the Federal Executive Authority on Intellectual Property – Rospatent. Accordingly, to ensure the legal protection of your trademark, you need registering it by filing an application to the office.
The rules of the execution of an application are contained in the Civil Code and the Rospatent Rules [The Rules for drawing up, filing and consideration of the documents that are the basis for committing legally significant actions for the official registration of trademarks, service marks, collective marks) [Order of the Ministry of Economic Development of the Russian Federation of July 20, 2015 No. 482].
The Civil Code contains only general instructions regarding the registration of an application: the applicant of the application for a trademark can be only a legal entity or an individual entrepreneur; it is allowed to register a mark to the name of an individual (not an IP); you can not specify several trademarks in one application; the application must contain theapplication for the official registration, the applied designation, the list of goods/services, as well as thedescription of the mark. The application shall be signed by the applicant or his representative. In the event that the application is filed by a representative, the power of attorney should be attached to the application.
The application shall be filed in Russian. If any documents enclosed to the application are made in another language, you must enclose their translation into Russian.
The date of filing the application shall be the date of receipt of the application materials by Rospatent.
Rospatent shall publish the information on the applications filed (see the public Register of the applications for registration of a trademark and service mark on the Rospatent website), the information is publicly available, and any interested person can get acquainted with it.
The Rules, which can be found on the Rospatent website, contain much more detailed practical rules for executing an application for a trademark. As the first enclosure to the Rules, the Application form for the official registration of a trademark, collective mark is presented. This form can be downloaded and filled in independently; further, we give an example of filling in it (without the enclosed documents; all names, details and addresses are fictitious).
Further, we shall review briefly the rules for filling in each of the columns of the application for a trademark.
“DATE OF RECEIPT,” “REGISTRATION No.,” “REFERENCE No.”: these fields should not be filled in; they shall be filled in by Rospatent upon the receipt of the application, and the completed data shall be displayed in the Official Filing Receipt that the applicant shall receive.
In column “ADDRESS FOR CORRESPONDENCE” the contact details of the applicant (or his representative) shall be indicated: telephone, fax, e-mail.
In column “APPLICANT” the full name of the legal entity shall be indicated (the abbreviations shall not be allowed, even in the name of the organizational and legal form: it is necessary to indicate “Limited Liability Company ...” or “Individual Entrepreneur ... ,” but not “LLC” or “IE”). This column also indicates the legal address of the company (in accordance with its constituent documents) or the address of the place of residence of the individual entrepreneur.
In column “APPLICANT IDENTIFIERS” the PSRN, ITN and IEC of the legal entity or the PSRNSP and ITN of an individual entrepreneur shall be indicated. It is also necessary to indicate the country code, for Russia it is RU.
In column “REPRESENTATIVE(S) OF THE APPLICANT” the person appointed by the applicant to run business in Rospatent (usually a patent attorney) shall be indicated. If you have a representative, it is necessary to fill in all the appropriate fields: “Surname, name, patronymic,” “Address,” the contact information (telephone, fax, e-mail); to note whether the representative is a patent attorney and, if so, to indicate his registration number.
In field “IMAGE OF THE APPLIED DESIGNATION” the corresponding picture (if the mark is figurative or combined) or a word/phrase (if the mark is a word) shall be placed, so that that the designation would clearly fit into a square field and would keep within the bounds of it. Special attention should be paid to the background: if the background of the picture is different and stands out on white, it will be registered exactly on this background and together with the background.
In column “DESCRIPTION OF THE APPLIED DESIGNATION” (next to the image of the mark) it is necessary to describe what it is (for example, what it consists of, whether the word elements are fantasy or have a certain semantic meaning, whether the word elements in the Latin alphabet have a translation into Russian; provide their transliteration, etc.). There is no a standard template for the description of the mark, each time everything depends on the applied designation.
Further, the colour or colour combination shall be indicated in the appropriate fields (they shall be necessarily indicated for the mark performed in colour, but optionally they may also be indicated for the black-and-white word marks). The indication of colours is rather important: if the colours indicated in this column of the application form differ from the image of the mark, you can receive an examination request.
Further, it is necessary to mark the field related to the kind of the mark: there are more or less “standard kinds”: a word mark, figurative, combined, three-dimensional, colour (as a trademark). There are also more “original” kinds: a light mark, changing, positional, holographic, sound, a trademark perceived by smell. If the mark is not a word one, figurative or combined, it is necessary to describe its characteristics in detail in the appropriate field (if necessary, on a separate sheet).
The rules contain special instructions regarding other kinds of a mark. So, if the mark is volumetric (three-dimensional), then one image of the general appearance of this designation (schematic, photographic or performed in a graphic editor) shall be given and the images of all necessary projections of the mark shall be additionally presented, so that they would give an “exhaustive representation” about the different kinds of this designation. If the mark is sound, a sample of the phonogram shall also be presented, and so on.
Also it is possible to indicate in the application, whether there are unprotected elements in the mark (for example, the elements that are descriptive for the applied goods, services (“cafe” for cafe services, etc.)).
In field “GOODS, in respect of which the official registration of the mark is claimed, grouped according to the classes of the International Classification of Goods and Services for the Purposes of the Registration of Marks (ICGS)”the ICGS classes and the names of goods and (or) services shall be indicated. If the list does not fit into the application, it can be presented on a separate sheet.
The application shall be submitted for a particular list of goods/services. Totally there are 45 classes of the ICGS, 34 of them relate to the goods, and the rest ones relate to services. The full list of goods and services in available on the FIPS website http://www1.fips.ru/MKTU10_PDF_2015/part2_mktu10_2015.pdf
The list always begins with a two-digit number of the ICGS class, and then the names of individual goods/services shall be indicated through a dash. At the end of the list of each class there shall be a dot. The text of the list of each subsequent class shall be separated by line spacing. The list of goods must be specific; it can not consist only of the fields of activity. The goods in the list should not be duplicated; each product must have its unique name.
Further comes the fields relating to the trademark priority and the feepayment (including the information about the payer – the full name/the name of the legal entity, ITN and IEC).
Further, in the application in the appropriate columns of field “List of the documents enclosed” it is necessary to mark the correspondent documents, usually they are “applied designation”, “list of goods and (or) services,” the power of attorney for the representative (if any).
In field “Additional information” you can indicate the numbers of the certificate for the earlier registered trademarks/AO, for example, if the applied designation is a continuation of this series.
Finally, in the last field it is necessary to indicate the date of drawing up the application and to put a signature of the authorized person.
In terms of purely technical requirements, it is necessary to note the following: only one-sided printing shall be possible, printing on both sides of the sheet shall not be allowed. Each document of the application shall be numbered. The list should be printed in font at least 2.1 mm, without separating into columns, with 1.5 line spacing.
The documents of the application shall be filed in one copy. The images of the trademark shall be filed in two copies.
If any information does not fit fully in the appropriate columns of the application, they shall be presented in the same form on an additional sheet with the indication in the appropriate column: “see a continuation on an additional sheet.”
There are certain grounds according to which the application can not be accepted at all and, accordingly, not registered: for example, if the application materials do not contain the application itself; if this application is not readable or presented in a foreign language; if the applicant is not indicated in the application; due to technical reasons in connection with the condition of the paper carrier; if the application is filed in an electronic form with the infringement of obligatory requirements.
The formal examination of the application shall be carried out within a month after filing (acceptance and registration) the application, during which the presence of the necessary application documents and their compliance with the established requirements shall be checked, as well as the correct payment of a fee. The fee for registering an application and carrying out its examination currently is 14,200 for the 1st class of the ICGS plus 2,050 roubles for each subsequent one. Based on the results of the formal examination, the application shall be accepted for consideration or the decision on the refusal to accept it for consideration shall be made.
In course of the examination of the application, the applicant shall be entitled to clarify or correct the application materials before the decision on it is made, including by filing additional materials.
After a positive decision of the formal examination, the substantive examination shall begin. It should be remembered that a successful registration can take place only if the chosen designation meets the criteria for protectability. In other words, the designation should not fall under a number of restrictions, which Article 1483 of the Civil Code of the Russian Federation contains.
In general, it should be noted that although the procedure of filing an application for a trademark is described in detail in regulatory enactments, if the applicant does not have enough experience in this area, it will be rather difficult for him to navigate the provisions of the Civil Code and the Rules. To avoid unnecessary wasting time and funds (currently, the fee for making changes in the application materials is 4,900 roubles), numerous problems and to reduce significantly the chances of refusal of the registration, it is recommended to contact specialists in this field, who know all subtleties of drawing up applications for trademarks.
For 20 years, Zuykov and Partners has registered over 5,000 trademarks for its numerous clients. To demonstrate an operational standard, our company will classify correctly your goods/services and will make a list for filing an application for a trademark, will prepare, execute the application and send it to Rospatent as early as possible. We track the terms of sending the correspondence to Rospatent and the terms of payment of fees, and we send the relevant reminders to our clients, inform them about all incoming correspondence from Rospatent within 3-5 working days, we keep copies of all correspondence and documents sent to Rospatent and received from Rospatent, and we provide them at the first request of the client.
We shall be happy to provide you with the services, which involve drawing up and filing an application for registration of a trademark, and maintaining the correspondence with Rospatent before obtaining a certificate for a trademark, as well as maintaining its full support after the official registration.