Keywords: intellectual property, means of individualization, trademark, exclusive right, registration of a trademark, patent, subject-matters of patent law, patenting, invention, utility model, industrial design.
The people who do not have experience in the field of registration and protection of the rights to subject-matters of intellectual property frequently ask: what is the difference between a trademark and a patent? This issue is most important for the entrepreneurs who want to get an effective legal protection for the developed and/or used marks, technical knowledge and design solutions.
At first, it should be noted that the trademark and the patent are absolutely different concepts. The trademark is a word, image or any other designation (“in everyday life” it can be called “logo,” “brand,” “trademark,” etc.), which is used for the individualization of goods and services. The certificate shall be issued for a trademark.
The following shall be patented: inventions (the invention shall be “... technical knowledge in any field related to a product (in particular, to a device, substance, microorganism strain, plant or animal cell culture) or a method (the process of performing actions over the material object with the help of the material means), including to the application of the product or method for a specific purpose”), utility models (technical knowledge relating to devices) and industrial designs (the industrial design shall be “a design of the article’s appearance of an industrial or handicraft production”). In order to obtain protection, such knowledge must have certain characteristics (novelty/originality/industrial applicability, depending on the subject-matter). The patent shall be issued for such a subject-matter in case of a successful registration.
Among the subject-matters of the patent law the industrial design seems to have the greatest similarity to a trademark: it is possible to draw some parallels between them, in particular, in the field of the legal protection of three-dimensional designations – the original form, the appearance of the product, its packaging, which can be registered as a trademark or industrial design. Both the three-dimensional trademark and the industrial design will perform in this aspect, in fact, the same function – to attract the consumer's attention to a particular product and to individualize this product due to its aesthetic properties, which produce a certain visual impression, while protecting the manufacturer/seller of this product from the infringement of his rights, that is, from the use of this three-dimensional designation by third parties without his.
Inventions and utility models have much less similarity with trademarks.
In general, inventions, utility models and industrial designs differ from trademarks by their legal nature. The trademark shall be a means of individualization, which identifies the goods or services of a particular manufacturer and allows distinguishing them from the goods and services of another manufacturer. The subject-matter of the patent law shall be a result of a creative activity. This is a technical or artistic and design knowledge, and it should have an author obligatory. It is also important that only the legal entity or individual entrepreneur may be the right holder of a trademark, and the patent holder may be an individual as well.
These subject-matters differ by the periods of validity of the legal protection, too. The period of validity of a patent for an invention is 20 years. The period of validity of a patent for a utility model is 10 years, and since January 1, 2015, the period of validity of the exclusive right to a utility model shall not be extended. The period of validity of the legal protection of an industrial design is 5 years, and this period can be extended for five years repeatedly by the application of the patent holder, but not more than for twenty-five years totally. The period of validity of a trademark is 10 years with the possibility of extending it repeatedly.
Further, the trademark and subject-matters of the patent law differ in the scope of the legal protection granted to them. The legal protection of a trademark shall be applied to those goods (and/or services) that are specified in the list, for which this trademark has been registered. Thus, in accordance with Clause 3 of Article 1484 of the Civil Code of the Russian Federation, “No one has the right to use, without the permission of the right holder, the designations similar to his trademark in respect of the goods for the individualization of which the trademark has been registered, or similar goods, if the possibility of confusion appears as a result of such use.” As to the subject-matter of the patent law, there is no criterion of identity of the goods here, although there may be a criterion of similarity of the destination. That is, with some references, its legal protection shall be applied to all goods, and third parties are prohibited to use it without the consent of the right holder.
Finally, the protection of a trademark is tied to its use. In accordance with Article 1486 of the Civil Code (“Consequences of the non-use of a trademark”), the legal protection of a trademark may be terminated early in respect of all goods or a part of goods due to the non-use of the trademark continuously for any three years after its official registration. Along with this the application for an early termination of the legal protection of a trademark due to its non-use can be filed by any interested person (who, however, will have to prove his interest). The validity of the patent is not connected with the use. The patent shall be granted for a certain period. Moreover, during this period it can not be canceled due to the application of any third party only for the reason that this protected subject-matter is not used by its patent holder.
At the same time, it should be noted that the processes of registration of trademarks, inventions, utility models, industrial designs have some similar features: the application shall be filed, the formal examination shall be carried out, the substantive examination/examination of the designation applied as a trademark shall be carried out, the decision shall be made, the document of protection shall be issued.
However, as we see, the subject-matters of the patent law and trademarks have absolutely different destinations and the scope of the legal protection provided by the state. Therefore, as a practical matter, if you intend to protect your rights from attacks of third parties and implement them to a maximum effect, it seems reasonable to use all means provided by the Russian civil legislation, to create a “portfolio” of the subject-matters of intellectual property (trademarks and patents) and to manage the portfolio properly.