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In what form one should register a trademark – a theory and practice

Dec. 15, 2018

The trademark is one of the most registered means of individualization in Russia. According to the
Rospatent’s report for 2017, since 2014 there has been a continuous increase in the number of registered
trademarks. 1 Over the last year, the volume of applications filed has exceeded the threshold of 73,500
applications. With so many designations, it is difficult to create a unique, effective means of
individualization. To simplify the process of developing the original designation, it is worth examining
the variety of trademarks and the peculiarities of their registration.
Types of trademarks
Word, figurative, three-dimensional and other designations or their combinations can be registered as
trademarks, in accordance with the provisions of Article 1482 of the Civil Code of the Russian
Federation. Indicating to a possibility of protecting “other” designations, the legislator makes a list of
registered subject matters as a public one. When checking the means of individualization in respect of
which the protection is sought, the Rospatent examiners, regardless of the type of the trademark being
under consideration, establish the compliance of the subject matter being checked with the provisions of
the current legislation, namely, with the norms of Article 1477 of the Civil Code of the Russian
Federation and Paragraphs 1-7, Subparagraph 3 of Paragraph 9, Paragraph 10 of Article 1483 of the Civil
Code of the Russian Federation. Thus, the applicant is entitled to file for registration any designation,
which complies with the conditions applicable to the protectable trademarks. However, a variation of the
claimed means of individualization may cause making additional requirements to the subject matter or to
its description.
Word trade marks
The Rules for drafting, filing and considering the documents that are the basis for performing legally
significant actions for the state registration of trademarks, service marks, collective marks of the
registration of trademarks, service marks, collective marks (hereinafter referred to as the Rules) describe
in detail the types of trademarks stipulated in Article 1482 of the Civil Code of the Russian Federation. 2
In accordance with Paragraph 32 of the Rules, the word trademarks include the combination of letters,
which have a word nature, words, sentences, as well as their combinations. The main function of the word
means of individualization is quick informing the consumer. The designation may contain the information
about the distinctive properties or quality of the product, an indication to the manufacturer or a hint to the
place of manufacture. The main advantage of the word trademark is its memorability, due to the
peculiarities of pronunciation, any analogy with the known words or absolute uniqueness. The analysis of
well known and well used designations shows that the optimal word means of individualization must
include one or more words and in some cases – a slogan. The compliance with the above volume
facilitates the perception and memorizing the trademark by the consumer.
Figurative trademarks
Such designations include the images on a plane of natural and other objects, living beings, subjects, any
figures. The figurative means of individualization allow the manufacturer to bring additional attention of
the buyer to the products. It is worth noting that compared to the word trademarks, the figurative
trademarks are considered to be more perceived by the consumers, who do not always have time to
familiarize themselves with the designation (for example, with reading it). In the foreign literature, the
term “eye-catching” is applied to such subject matters, what means “attracting an attention.”

1 https://rupto.ru/content/uploadfiles/docs/otchet_2017_ru.pdf
2 http://new.fips.ru/documents/npa-rf/prikazy-minekonomrazvitiya-rf/prikaz-ministerstva-ekonomicheskogo-razvitiya-rf-ot-
20-iyulya-2015-g-482.php#P32

Combined trademarks
The combined means of individualization are defined as the designations consisting of a combination of
word, figurative, three-dimensional and other elements. This kind of designations seems to be the most
successful for the registration as a trademark. The combined subject matter, consisting of a complex of
elements, influences the consumer through various “channels” of perception: visual and audio, and,
possibly, kinesthetic. Such trademark is universal and multifunctional.
Three-dimensional trademarks
In Paragraph 32 of the Rules, such designations include: “three-dimensional subject matters, figures and
combinations of lines and figures in a spatial arrangement, which may be a form of the product or its part,
a form of the packaging of the product, a form not related to the product.” In case, when the three-
dimensional means of individualization is filed for the registration, the holder of the trademark shall
represent a general view of this subject matter in the application.
Other designations
Other designations include: sound, light, changeable, holographic, tactile, positional, olfactory and taste
designations. Despite the increase in the number of applications filed for the registration of such
designations, the number of the registered trademarks from this group is rather modest compared to word,
figurative or combined means of individualization.
Sound trademarks are used for radio or television advertising. The applicant of the sound designation
shall submit for examination a soundtrack on a digital media.
The changeable trademarks consist of a combination of figurative, word, light, sound designations, and
they are used in b-rolls of television companies and film companies.
The tactile trademarks are most often intended for the perception of the product by visually impaired
consumers and they are made in a special relief and dot font.
The taste and olfactory trademarks usually refer to the characteristics of food products and beverages. In
order to become protectable, such designations must acquire distinctiveness as a result of the use with
respect to the claimed products. As it has been noted in the Guide for the State Registration of a
Trademark, Service Mark, Collective Mark: “the smell should not be a natural property of a product (for
example, the smell of leather for shoes, the smell of fruit for fruit juice).” 3 If the olfactory or taste
designation is filed for the registration, the applicant should describe clearly and intelligibly in a word
form the characteristics of the smell or taste.
In what form one should register a trademark
When creating a designation, a potential right holder of a trademark should take into account the
following circumstances. According to the materials of the Rospatent reports, word, figurative and
combined trademarks are registered in the majority of cases. Consequently, there are especially many
such subject matters, what means there is a high risk of establishing identity or similarity to the degree of
confusion with the already registered means of individualization. Due to this reason additional difficulties
in developing a new and original trademark may appear. Perhaps one should pay attention to more rare
designations, for example, sound, light, olfactory ones, or include them as elements in the combined
means of individualization. It is also important to take into account the class of the consumers with
respect to whom the sale of the product is intended, the peculiarities of the types of designations and the

3 The Guide for the implementation of administrative procedures and actions within the framework of providing the state
service for the state registration of a utility model and for the grant of a patent for a utility model, its duplicate – URL:
https://rupto.ru/ru/documents/ruc-tz/download

specificity of the products being manufactured. When creating and registering the designation, it is worth
remembering that the buyer does not spend a lot of time studying the trademark, therefore the trademark
must be memorable and unique.

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Author of article

Sergey Zuykov

Sergey Zuykov

Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney