How should the applicant act if he has received a notification from Rospatent about the results of verification of the claimed designation with the requirements of the law?
If the means of individualization meets the conditions contained in part four of the Civil Code of the Russian Federation, it is registered by the federal executive body. Otherwise, in accordance with paragraph 3 of Article 1499 of the Civil Code of the Russian Federation the applicant is sent a notice of the results of the verification of the designation.This state of affairs allows us to highlight the following significant circumstances:• A notification is sent between the completion of the substantive examination and the adoption of the final decision by Rospatent on the refusal to provide legal protection.• The applicant is given the opportunity to influence the final conclusions of experts, which are drawn up based on the results of the trademark verification.A notification is a written document. It contains a motivated examination position with a description of the reasons for which a decision of refusal to register the designation (for the entire list of declared goods and / or services or parts of them) will be presumably made, and it also suggests the applicant submit his own arguments regarding the current situation.Depending on which of the patentability conditions the trademark does not comply with, the notification may indicate:• The presence of an already registered trademark / claimed designation with an earlier priority, which may be recognized as identical or similar to the extent of confusion with the declared object.• The absence of a verified designation distinctiveness.• The possible likelihood of misleading the consumer regarding the type of product, manufacturer, place of origin.• On the mismatch of the trademark with other conditions of protection, for example, when the object contains elements that are contrary to the principles of humanity and morality.Sometimes, in a notification, the specialist indicates elements, the removal of which will increase the protectability of the trademark. For example, if the combined designation contains an indication of the type of product, for example, “milk”, and the mark is declared for a wider list of goods, for example, “kefir, fermented baked milk, sour cream”, its exclusion allows registering the declared designation for a wider list of goods, i.e. the trademark will be granted wider legal protection. Or the applicant may be asked to refuse to register the means of individualization in relation to that part of the goods for which a trademark similar to the degree of confusion has already been registered. In this case, when registering a new trademark, the risk of confusing the objects will be minimized.If similar signs are found, the patent attorney, as a rule, offers the following actions:- filing a statement of claim with the Intellectual Property Rights Court on early termination of legal protection of a given mark in connection with its non-use, if the registration date of the opposed mark allows this to be done.- appeal to the rights holder of trademarks for a letter of consent to register the claimed designation. In this case, the decision on the acceptance or rejection of the letter of consent is the competence of the expert examination.- proof of the absence of confusing similarity of the signs as part of the response to the notification.The above list of grounds for refusal of registration, as well as methods and means of responding to them are not exhaustive.The applicant has the right to send a response with arguments justifying his point of view. In support of his position, it is advisable for the applicant to refer to examples of court decisions or Rospatent's practice in cases with similar circumstances.The received response is taken into account by experts when making the final decision on the trademark in question if the deadline for its submittal is not violated. In paragraph 3 Article 1499 of the Civil Code of the Russian Federation, the maximum term for the applicant to submit arguments for consideration is set: "... if they are submitted within six months from the date the notification was sent to the applicant." It is important to note that, unlike the response time to the examination request, the response time to the notification cannot be extended.Therefore, in case of receiving the notification, the applicant should:• Carefully study the grounds for refusal indicated by the expert in the notification.• Prepare a logical and motivated answer based on the current legislation in the field of trademarks, in which he has to give reasons in defense of the claimed designation, i.e. give reasons why the expert should draw a conclusion in favor of registering the designation.• In certain cases, consider the possibility of amending the claimed designation or make a decision to reduce the list of goods for which a trademark is claimed.• Send a response to the notification, taking into account the need to comply with the deadlines indicated in the text of the document.In conclusion, it is worth noting that the response to the notification can play a decisive role in determining the protectability of a trademark, and therefore we strongly recommend that you do not ignore the letters received from Rospatent and entrust professional patent attorneys to respond to such correspondence with the Patent Office.At the same time, the information set forth in the response to the notification should be informative and created in a comprehensible format for the specialist.
Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63