The trademark is intended to distinguish the goods of a particular manufacturer from the mass of other similar goods. The certificate of a trademark registration shall be issued to a legal entity or an individual entrepreneur, if the application for a trademark has successfully passed the examination, which resulted in a decision to register, after which the fee for issuing the certificate was paid. However, when filing an application for a trademark registration, the potential right holder may make a mistake. In this article, we shall consider the consequences of indicating the incorrect information about the applicant.
The trademark may be issued in the form of a word/combination of words, graphic representation or a three-dimensional object. It is commonly known that Rospatent deals with the provision of the legal protection to a particular designation. The application for a trademark registration shall be filed to this particular office. Both the applicant himself and his authorized representative (acting by power of attorney) may file an application for providing the legal protection for the trademark. The fee for the registration shall be charged in the amount stipulated by the legislation. When filing an application, it is necessary, along with other data, to fill in the information about the applicant correctly. Otherwise, the indication of the incorrect information in future may lead to additional costs and difficulties.
If the mistake has been made anyway, when filing an application for trademark registration, it will be necessary to contact Rospatent again to correct it. The additional fee shall be charged depending on the stage of the consideration of the application:
- If the trademark is not registered yet, it will be necessary to pay fee for making changes in the application, amounting to 4,900 roubles. There may be an exception in case when the mistake is of a technical nature (a typo or defect which prevents the correct reading of the information). Then it is possible to make changes without paying the official fee.
- When the trademark is already registered, and the relevant certificate is received, making changes in the information about the applicant will be 2,050 roubles.
In order to make changes in the application/certificate for a trademark, it is necessary to file an appropriate application, as well as the document confirming the correctness of the changes made. For example, if the mistake has been made when filling in the legal address of the applicant, it will be necessary to enclose a copy of the registration documents to the application or provide an extract from the Unified State Register of Legal Entities.
According to Article 1232 of the Civil Code of the Russian Federation the right holder must notify the Federal Executive Authority on Intellectual Property, consequently, on the changes relating to the official registration of the result of the intellectual activity or the means of individualization of the information about the right holder: the firm's name or name, the location or place of residence and the address for correspondence. The right holder shall bear the risk of adverse consequences if such notification of the correspondent federal executive body is not made or if the false information is presented.
What are the consequences for the indication of the incorrect information, when filing an application for trademark registration?
When filing an application, it is necessary to pay careful attention to the correctness of filling in the data, including the postal data. There are cases in the legal practice when the incorrectness of filling in such data has led to adverse consequences. For example, if the wrong address for correspondence has been indicated when filing an application, the examiner's notification/request/decision on registration may not reach the applicant. Alternatively, if the third party attempts to terminate early the validity of the trademark that has already been registered in connection with its non-use, a copy of the statement of claim may also not reach the addressee.
In addition, the right holders, who already have one or several trademarks, often file an application for the registration of a new designation (for example, in connection with re-branding). In this case, the new designation, for example, has a common word element with previously registered trademarks (trademark). The examination shall be carried out on the application, and if it contains the information different from the information indicated in the previously registered trademarks, then the notification may be issued with respect to the new application, with the opposition of the applicant’s own trademarks. Overcoming such opposition, consequently, will entail additional financial and time costs, and also will require making changes in the application materials or the already registered trademark.
The right holder of the trademark can be a legal entity exclusively or an individual entrepreneur (Article 1478 of the Civil Code of the Russian Federation). Nevertheless, there are cases when the applicant, when filing an application, indicates himself as an individual or indicates the false information about an individual entrepreneur, in fact without an appropriate status. If during the examination the examiner learns about this fact, there will be a refusal for the registration of the trademark.
If for some reason the registration of a trademark in the name of an individual is nevertheless granted, then such a trademark will be vulnerable for the recognition of its registration as invalid: “Granting the legal protection of a trademark may be attacked and hold invalid completely during the entire period of validity of the exclusive right to the trademark, if the legal protection has been granted to it in violation of the requirements of Article 1478 of this Code.”