Acquisition of distinctiveness by a trademark

According to Art. 1477 of the Civil Code of the Russian Federation, a trademark is a designation used to individualize goods [1]. Thus, the ability to individualize goods (services) is determined by the nature of the trademark. The type and color combination of a trademark are characteristics that distinguish marks from each other. The most basic types of trademarks include verbal, combined and figurative. Verbal designations include words, combinations of letters that have a verbal nature, phrases, sentences, as well as their combinations. Pictorial symbols include images on a plane of living beings, objects, natural and other objects, compositions of lines, spots, and any figures. Combined designations include combinations of elements of different types of designations: pictorial, verbal, volumetric and other designations. However, in addition to the indicated types, signs can be three-dimensional, sound, positional, changing, color, light, holographic. A designation may be applied for registration as a trademark in any color or color combination [2].

However, a unique combination of mark elements or colors is not enough to register a trademark. The designation applied for registration must comply with the requirements of Art. 1477 and 1483 of the Civil Code of the Russian Federation. So, in paragraph 1 of Art. 1483 of the Civil Code of the Russian Federation contains the so-called absolute grounds for refusal of registration, according to which state registration as trademarks of designations that do not have distinctive ability or consist only of the following elements is not allowed:

1. those that have come into general use to designate goods of a certain type;
2. which are generally accepted symbols and terms;
3. characterizing goods, including indicating their type, quality, quantity, property, purpose, value, as well as the time, place and method of their production or sale;
4. representing a form of goods that is determined solely or mainly by the property or purpose of the goods.

Designations that do not have distinctive ability also include: simple geometric shapes, lines, numbers; individual letters and combinations of letters that do not have a verbal character or are not perceived as a word; common names. These elements may be included in a trademark as unprotected elements if they do not occupy a dominant position in it.

However, designations, designations consisting only of non-protectable elements mentioned in paragraph 1 of Art. 1483 of the Civil Code of the Russian Federation can be registered as trademarks if they have acquired distinctiveness as a result of their use and the consumer perceives the declared designation as a trademark of the applicant [3].

The distinctiveness of a trademark is the property of a trademark to distinguish, in the eyes of the consumer, the goods marked by it from similar goods of third parties. It should be noted that applicants often submit for registration designations containing so-called slogans, sometimes of an advertising nature. Often, such designations can be effective for individualizing goods and services on the market. Such phrases can be easy to remember and thereby provide an advertising effect for the product or service specified in the list.

When conducting an examination of the above-mentioned designations, to determine the presence or absence of their distinctiveness, the following factors can be taken into account:

• whether the designation is ambiguous;
• whether it is original in nature;
• whether it can be easily remembered by the consumer.

Such designations should be succinct and not overloaded with words [4].

If at the application stage a notification is received which sets out the reasons for refusal of registration on the basis of clause 1 of Art. 1483 of the Civil Code of the Russian Federation, the applicant may try to prove the distinctive ability of the mark so that the element is registered without disclaimer. As documents confirming the distinctiveness of a mark, information can be provided: on the duration, intensity of use of the designation, territory and volumes of sales of goods marked with the declared designation, on advertising costs, its duration and intensity, on the degree of consumer awareness about the declared designation and the manufacturer of the goods, including the results of sociological surveys; information about publications in the open press of information about goods accompanied by the declared designation and other information.

Please note that the submitted documents must contain the mark in the form in which it was applied for registration.

Documents submitted by the applicant to prove that the designation has acquired distinctiveness are taken into account when making a decision on state registration of a trademark if they confirm that the applied for designation, before the filing date of the application, was perceived by the consumer as a designation intended to individualize the goods of a certain manufacturer.

Documents containing information about the duration, intensity of use of the designation, are advisable to present the territory and volumes of sales of goods in a structured form, broken down by year, so that the idea of the use of the mark within the framework of the specified criteria is clearer. It is desirable that indicators of the intensity of use and sales volumes of goods show growth, and the territory of use expands. Such development in the use of the trademark will be confirmed by an increase in the share of consumers familiar with the mark.

Information about advertising provided as part of the process of proving distinctiveness is an important indicator, because advertising is the main channel for promoting goods or services. It is through advertising that a consumer can learn about a trademark that is used on a product or in the provision of services. In the modern world, advertising methods and tools are widely developed: advertising is carried out by posting on signs in public places, broadcast on television, radio, on the Internet and by telephone, as well as through the distribution of samples or printed advertising materials. Contracts with advertising contractors, videos, printed materials - all this can be presented as an argument for the applicant's position on the acquisition of distinctiveness.

A sociological survey is a tool that identifies the degree of consumer awareness about the declared designation and the manufacturer of the goods. Due to the high cost of conducting a sociological survey, applicants are not always ready to carry it out at the application stage. At the same time, if the survey results show a result confirming a high level of consumer awareness about the declared designation and the manufacturer of the goods, about the association of the designation with the applicant, the applicant’s position will be significantly strengthened.

Additionally, to prove distinctiveness, information on exhibitions and other events at which the trademark was presented to a wide range of people, information on the placement of the mark in printed publications, etc. can be provided.

The examination of Rospatent is very strict in the analysis of documents that are submitted by applicants to prove their distinctiveness. Thus, the expert can request additional materials that he considers necessary to provide in the application materials.

At the same time, even if a trademark consisting of the elements specified in paragraph 1 of Art. 1483 of the Civil Code of the Russian Federation, registered as protected, taking into account the provided evidence of distinctiveness, it cannot be ruled out that third parties may try to challenge the corresponding decision of Rospatent on registration. Such actions may include conducting a counter-argumentative social survey and collecting evidence to support the contrary.

It must be understood that proof of distinctiveness is subjective. The perception of the declared designation and its attribution to unprotected elements must occur without speculation, that is, without building additional associations. To be classified as unprotected elements, the designation must directly meet the criteria of paragraph 1 of Art. 1483 Civil Code of the Russian Federation. In the event that the designation is not descriptive, i.e. does not apply to the designations specified in paragraph 1 of Art. 1483 of the Civil Code of the Russian Federation, we can talk about its fantasy and give appropriate arguments.

Sources:

1. Civil Code of the Russian Federation (part four) dated December 18, 2006 N 230-FZ (as amended on December 5, 2022), Article 1477.
2. Rules for the preparation, submission and consideration of documents that are the basis for carrying out legally significant actions for the state registration of trademarks, service marks, collective marks, approved by Order of the Ministry of Economic Development of Russia dated July 20, 2015 N 482, paragraph 32 [Electronic resource]. Access mode: https://rospatent.gov.ru/ru/documents/482-prikaz-minekonomrazvitiya-rossii-ot-20-07-2015-482
3. Rules for the preparation, submission and consideration of documents that are the basis for carrying out legally significant actions for the state registration of trademarks, service marks, collective marks, approved by Order of the Ministry of Economic Development of Russia dated July 20, 2015 N 482, paragraph 35 [Electronic resource]. Access mode: https://rospatent.gov.ru/ru/documents/482-prikaz-minekonomrazvitiya-rossii-ot-20-07-2015-482
4. Filippova A.A. Features of checking the presence of distinctiveness of designations applied for registration as trademarks [Electronic resource]. Access mode: https://new.fips.ru/about/deyatelnost/konferentsii-seminary/fil_tz.pdf