Company (Brand) Name and Logo Registration as a Trademark

Starting a commercial activity for a legal entity or an individual is closely tied to selecting a product or service name that should be memorable to consumers and recognizable in the market. The choice of name must consider uniqueness and creativity, as only with these characteristics can the name be registered as a trademark.

What is trademarking a name and why it is done

There are various approaches to choosing a designation for commercial activities and, subsequently, registering it as a trademark. Some businesses try to register the legal entity’s name as a trademark, while others choose an entirely different designation that does not correlate with the company name, often referred to as a "logo," which may involve an original name (word/phrase, possibly with added graphics/images). In any case, trademark registration is the only way to gain exclusive rights to a specific designation, enabling one to protect their rights from infringement in the market, advertising, domain names, and online use.

Why is this so important for business?

When choosing a designation for further registration, it is necessary to proceed from several factors.

1. The designation must be unique – this means that such a trademark must not be registered in the country where the application is planned to be filed and the mark is to be used, and such a trademark must not be registered for similar goods/services.
2. The designation must meet the requirements for registration of trademarks. In Russia, these requirements are set out in Article 1483 of the Civil Code of the Russian Federation.
3. The designation must be registered in the form in which it is used/planned to be used, so that, if necessary, it will be possible to prove the use of your trademark after 3 years from the date of registration, when the mark becomes vulnerable to cancellation proceedings for non-use by third parties.
4. Selecting the type of trademark. Thus, a sign can be: verbal - in this case the designation contains only a word or phrase, executed in a standard font in black and white; pictorial - in this case the designation contains only a graphic part without any verbal elements and can be in color or black and white; combined - in this case the designation includes verbal and pictorial elements in any color combination. Verbal, pictorial and combined types of marks are the most popular among applicants. Sound, volumetric, positional, taste and other types of trademarks are less common in practice.
5. A trademark is registered in relation to specific goods and services that are grouped for registration purposes according to a special classification system – the International Classification of Goods and Services (ICGS). The ICGS includes 45 classes, from 01 to 34 – classes of goods, from 35 to 45 – classes of services.
6. Applicant's choice. At the moment, the applicant can be: a Russian individual, sole proprietor or legal entity, as well as a foreign legal entity or individual.

The above features form the basis for the future trademark. However, the terms "trademark" and "brand" should not be confused. The concept of "brand" is broader than a trademark. It can be said that a trademark is an element of a brand, since it is the trademark that legally protects the brand name or its visual part. In addition to a trademark, the concept of "brand" implies corporate style, the company's approach to business, attitude towards consumers, slogan, etc. "Trademark" is a designation used to individualize goods, work performed or services rendered.

Stages of the procedure

Every year, more and more applications are filed with the Federal Service for Intellectual Property (Rospatent), and accordingly, registering trademarks is becoming more difficult, since the growth in the number of registered marks and filed applications narrows the space for new applicants. The interests of applicants and copyright holders of earlier trademarks collide, and disputes begin, considered by the Chamber of Patent Disputes of Rospatent.

In order to reduce risks, it is advisable to conduct a search for the selected designation in relation to the classes of the Nice Classification of Goods and Services of interest before filing an application. We conduct two types of searches: verbal and figurative, respectively, depending on the type of mark, we offer specific types of searches. If the designation is multi-component, i.e. contains unrelated verbal elements or several separate figurative elements, we may recommend conducting more than one verbal/figurative search in order to check each element separately and understand the practice of registering such elements. For our part, we always offer to conduct searches so that before filing an application the client understands the chances of registering the mark, but the final decision remains at the discretion of the client.

At the same time, it should be noted that conducting a search is a preliminary examination of a designation similar to that conducted with respect to a submitted application by a Rospatent expert. As part of the search, we check the designation for the presence/absence of absolute and relative grounds for refusing to register a trademark, and we check information about the designation on the Internet. Based on the results of the search, we send a report that contains all the information identified and possible courses of action in the event of possible obstacles to registering a trademark. Based on the search results, the client decides on further filing of the application. If the search results reveal significant risks, the client can modify the designation to avoid similarities with previously identified marks or applications. If the mark requires significant modification, we will recommend conducting another search.

From a financial point of view, conducting a search before filing an application helps to save money spent at the application filing stage, including the Rospatent fee, if the examination results in a notification, which can be very problematic to overcome and will require additional costs.

The procedure for registering a trademark in Russia begins with filing an application with Rospatent. After filing, the application goes through the stages of formal examination and examination of the declared designation.

According to Article 1498 of the Civil Code of the Russian Federation, "A formal examination of an application for a trademark shall be conducted within one month from the date of its submission to the federal executive body for intellectual property. During the formal examination of an application for a trademark, the presence of the necessary application documents and their compliance with the established requirements shall be checked. Based on the results of the formal examination, the application shall be accepted for consideration or a decision shall be made to refuse to accept it for consideration. The federal executive body for intellectual property shall notify the applicant of the results of the formal examination. Simultaneously with the notification of a positive result of the formal examination of the application, the applicant shall be informed of the date of filing the application."

After the formal examination is completed, the examination of the declared designation begins. According to Article 1499 of the Civil Code of the Russian Federation, “During the examination, the declared designation’s compliance with the requirements of the legislation is checked. Based on the results of the examination of the declared designation, the federal executive body for intellectual property makes a decision on the state registration of the trademark or on the refusal to register it.”

Conducting an examination of the declared designation is the most important stage of the registration procedure, during which the Rospatent expert checks the application for the presence or absence of absolute and/or relative grounds for refusing to register a trademark, the specified grounds are set out in Article 1483 of the Civil Code of the Russian Federation.

Is it possible to simplify/speed up the procedure?

The examination of the declared designation can be accelerated in Rospatent. The standard examination period is 8-10 months from the date of filing the application. Acceleration allows to reduce the examination period to 2-3 months. At the same time, acceleration reduces the examination period, but does not affect its result. Rospatent's tariff for acceleration depends on the type of trademark: for a word, figurative mark - 94,400 rubles, for a combined one - 188,800 rubles.

Based on the results of the examination of the applied-for designation, Rospatent issues either a decision on registration or a notification. A decision on registration means a positive decision made on the application by the expert. In this case, the final stage of the registration procedure remains - payment of the registration fee, registration of the mark and issuance of a certificate. Currently, a certificate can be obtained in electronic or paper form, both types of certificates have the same legal force. At the same time, the fee for issuing a paper certificate is 3,000 rubles more. Issuing a notification on an application means that there are obstacles to registering a trademark that the expert has identified. The deadline for responding to a notification is 6 months from the date of its issuance. During this period, the applicant can take action to overcome the arguments of the examination. Possible options for action may be: responses to notifications with arguments about the dissimilarity, heterogeneity of goods / services; negotiations on obtaining letters of consent from the owners of the opposed marks; making changes to the declared list. However, the decision to accept or reject the arguments presented in the response remains at the discretion of the expert.

Why it’s better to work with specialists

Involving a patent attorney to assist in the trademark registration process allows you to build a registration strategy so that the goal is achieved - the trademark is registered. At the same time, it is necessary to assess the risks that the attorney identifies, because our goal is to make the registration procedure as "smooth" as possible. Complex multi-stage cases are also our advantage, since the company Zuykov and partners has sufficient experience in solving complex strategic tasks of the trademark registration process in order to achieve the result that the client wants.