Certificate of Trademark: Possible Modifications
Upon sealing with Rospatent on registration of brand, property specifications and information about the right holder shall be recorded onto the Public Register of Trademarks and Service Marks of the Russian Federation. The owner of the visual identity shall be issued a certificate.
While at the moment of filing the documents with Rospatent the applicant updates and specifies the related information, and then the information is analyzed by the experts at the stage of formal verification and substantive examination, the right holder, immediately after the issuance of the certificate or after a certain time, may apply for the modification to the data contained in the Register and the certificate.
It is allowed to edit information about the right holder, correct errors or make insignificant changes to the merchandise mark. Thus, according to paragraph 1 of Art. 1505 of the Civil Code of the Russian Federation, the following information is subject to possible modifications.
- Information about the right holder, including mailing address, name, location, etc.
- Data containing obvious and technical errors.
- List of goods and services for which the property designation is registered (list shortening)
- Essential elements of the trademark, if they do not change the essence of the property (only minor changes are allowed.
It seems justified to disclose in detail the last two items on the list. Correction of the list of goods and services in the form of reduction, as a rule, is due to the following fact. During the use of the property designation, the right holder may conclude that the trademark is used only for a part of the listed names from the Nice classification of goods and services applied for the registration of marks. Optionally, the right holder may have been sent a letter of claim, in which the owner of the early trademark asks to reduce the list of goods/services contained in the trademark registration to resolve a possible conflict. The decision whether to shorten the list or not remains at the discretion of the trademark owner. In some cases, it is advisable to apply for a shortening of the list of goods/services. For example, that will help to avoid disputes with third parties, which have the right to challenge the trademark registration. When extending the term of validity of the trademark, it will reduce the fee paid by the right holder for the maintenance of protection upon the expiration of the certificate.
As for the correction of the designation, the nature of amendments is due to the threat of infringement of the rights of owners of other trademarks in case of significant change of the already registered trademark. Therefore, Rospatent experts pay special attention to the significance of the changes made to the designation. Insignificance means those transformations which do not affect the dominant element of the trademark and do not affect the perception of the designation by the consumer in general.
To make use of the public service for modification of the certificate for the trademark, the right holder must submit the following documents.
- Document, confirming or describing the nature of the proposed modifications.\
- Receipt of payment of state duty. The calculation tool is available at the website of Rospatent: https://rospatent.gov.ru/ru/activities/dues/table
- Consent to the processing of personal data.
- Power of attorney, if the actions are performed through a representative.
The right holder has the right to personally apply to Rospatent, if it is not a foreign company, send an application by mail or use the electronic method of filing an application through the user web-interface.
Upon receipt of the documents, the specialists of the patent office shall establish the fact of payment of the state duty and check the documents on formal grounds. Then the experts assess the validity and possibility of modifications. The average time to consider an application is 75 work days.
Based on the results of the administrative procedure, the patent office staff decide to satisfy the request and make amendments or refuse to correct the previously recorded information. If the applicant gets a refusal, it is executed in the form of a reasoned decision, where the reasons for such position of the experts are indicated. If the right holder disagrees with the conclusion by Rospatent, the adopted decision may be appealed.
If the decision is positive, the changes are made to the Register and the certificate. The result of the procedure is reflected in the following documents:
- Public Register of Trademarks and Service Marks of the Russian Federation;
- Document on modifications;
- Notification on the application satisfaction.
Then the changes are published in the Rospatent official bulletin.