Grounds for refusal to register a trademark and ways to overcome them

Registration of a trademark is a labor-intensive procedure that includes several stages, the key of which is the examination of the applied designation. The further “life cycle” of the declared designation will depend on what results the examination of the applied designation will entail. Let us dwell in more detail on this stage of the examination and its features.

Examination of the claimed designation

As follows from the provisions of Article 1499 of the Civil Code of the Russian Federation, “Examination of a designation declared as a trademark (examination of the declared designation) is carried out on an application accepted for consideration as a result of a formal examination. During the examination, the compliance of the declared designation with the requirements of Article 1477 and paragraphs 1 - 6, subparagraph 1 of paragraph 7, subparagraph 3 of paragraph 9 (in terms of industrial designs), paragraph 10 (in terms of means of individualization and industrial designs) of Article 1483 of this Code is checked and it is established priority of the trademark."

Thus, during the examination of the declared designation, the compliance of the declared designation with the requirements of the above articles is carried out. If the examination reveals any inconsistencies, the applicant is sent a notice of the results of checking the conformity of the applied designation, which specifies specific grounds (a reference to the clause/clauses of the article of the Civil Code of the Russian Federation is indicated) for which the trademark cannot be registered registered

It is important to note that the applicant can present his arguments regarding the reasons given in the notification. These arguments of the applicant are taken into account when making a decision based on the results of the examination of the applied designation, however, it is very important to comply with the deadlines for submitting them to the examination - this period is strictly regulated, and it is six months from the date of sending the specified notification to the applicant. Thus, having received the expert’s notification, the applicant has a six-month period to work through possible options to overcome the expert’s arguments and take the necessary actions. The decision to accept arguments remains at the discretion of the expert. It should be noted that there is no provision for an extension of the deadline for responding to a notification.

Each trademark application is a unique project with its own characteristics and key points. The paperwork for each application is carried out separately, and therefore there is no universal “recipe” for overcoming the examination’s arguments that is applicable to all applications. At the same time, several standard options can be identified to overcome the examination’s arguments, depending on the grounds for refusal, which can be modified depending on each specific case.

Non-compliance of the registration of the declared designation with the requirements of clause 1 of Article 1483 of the Civil Code

As follows from the provisions of clause 1 of Article 1483 of the Civil Code of the Russian Federation:

"1. State registration as trademarks of designations that do not have distinctiveness or consist only of the following elements is not permitted:

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.

These elements may be included in a trademark as unprotected elements if they do not occupy a dominant position in it.

1.1. The provisions of paragraph 1 of this article do not apply to designations that:

1) acquired distinctiveness as a result of their use;

2) consist only of the elements specified in subparagraphs 1 - 4 of paragraph 1 of this article and forming a combination that has distinctive ability".

As an example, let us consider a case where the examination in the notification indicates the descriptiveness of the mark for the declared services. In this case, it is possible, for example, to argue that the applied designation is fanciful in relation to those services for which its registration is sought. It will also be useful to attach documents confirming the use of the mark by the applicant - thereby showing that through intensive use the trademark has acquired distinctiveness. In addition, the practice of Rospatent in registering such marks can be used to support the applicant’s opinion.

Non-compliance of the registration of the declared designation with the requirements of clause 3 of Article 1483 of the Civil Code

As follows from the provisions of paragraph 3 of Article 1483 of the Civil Code of the Russian Federation:

"3. State registration as trademarks of designations that represent or contain the following elements is not permitted:

1) that are false or capable of misleading the consumer regarding the product, its manufacturer or place of production;

2) contrary to public interests, principles of humanity and morality.

As an example, consider a case where in the notification the examination indicates that the applied for mark is capable of misleading consumers regarding the manufacturer of the goods and refers to information on the Internet where a similar mark is used by another person (not the applicant for the application). In this case, it will be necessary to document the connection between the applicant and the person whose information is posted on the site. It is important that the documents reflect the connection between the companies.

Non-compliance of the registration of the declared designation with the requirements of clause 6 of Article 1483 of the Civil Code

As follows from the provisions of paragraph 6 of Article 1483 of the Civil Code of the Russian Federation:

"6. Designations that are identical or confusingly similar to:

1) trademarks of other persons applied for registration (Article 1492) in relation to homogeneous goods and having an earlier priority, if the application for state registration of a trademark is not withdrawn, is not recognized as withdrawn, or a decision has not been made to refuse state registration;

2) trademarks of other persons protected in the Russian Federation, including in accordance with an international treaty of the Russian Federation, in relation to similar goods and having an earlier priority;

3) trademarks of other persons, recognized in the manner prescribed by this Code as well-known trademarks in the Russian Federation, in relation to homogeneous goods from a date earlier than the priority of the declared designation.

Registration as a trademark in relation to homogeneous goods of a designation that is confusingly similar to any of the trademarks specified in subparagraphs 1 and 2 of this paragraph is permitted with the consent of the copyright holder, provided that such registration cannot cause misleading of the consumer. Consent cannot be revoked by the copyright holder.

The provisions provided for in paragraph five of this paragraph do not apply to designations that are confusingly similar to collective marks.”

As an example, let us examine the case when, in a notification, the examination of an application for a combined trademark also opposes a combined trademark with an earlier priority. When preparing an answer, it is important to analyze the symbols according to three similarity criteria: phonetic, semantic and graphic – and correctly describe the differences in symbols for each of them.

According to clause 41 of the 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, “a designation is considered confusingly similar to another designation (trademark), if it is associated with him as a whole, despite their individual differences."

Thus, the Rules establish that when comparing a declared designation with other designations to establish confusing similarity (or dissimilarity), the designation as a whole is taken into account. In this regard, when responding to a notification, it is necessary to provide arguments about the dissimilarity of the marks according to the three above criteria and argue that these differences provide a completely different perception of the compared marks, and the marks are not associated with each other.

In addition to the above arguments, it is also possible to submit documents confirming the applicant’s use of the trademark and its presence on the market.

The above examples make it possible to clearly show what options there may be to overcome the arguments of the examination. However, this is only a small part of the possible options, since each application requires an individual approach and elaboration of a strategy in relation to a specific case. It is very important to competently approach the preparation of a response to a notification, work out possible options for action, and present compelling arguments in favor of registering a trademark.

It should also be noted that the examination notification may indicate either one or several grounds for refusal of registration - it all depends on the declared designation that was submitted for registration as a trademark.

Summarizing the above, we can conclude that before filing an application for a trademark, it is very important to evaluate it for protectability and analyze possible grounds for refusal of registration. Thus, competent preparation for registration of a trademark will make it possible to prepare a designation that meets all established requirements and, as a result, the examination will take place without issuing a notification, which will have a positive impact on the registration time frame.