Key Procedures for Amending a Trademark: During Examination and After Registration

Any business development is directly linked to changes, and various external and internal factors also affect trademarks. What should be done if an application has been filed or a trademark has already been registered, but there is a need to change the information about the trademark? Should one go through the registration process again or use the procedure for making amendments? This article will discuss in more detail the procedures for making changes during the trademark application stage and after the trademark has been registered.

Amending a trademark application during the examination stage

According to Article 1497 of the Civil Code of the Russian Federation, "… 2. During the examination of an application for a trademark, the applicant has the right to supplement, clarify or correct the application materials before a decision is made on it, including by submitting additional materials. If the additional materials contain a list of goods that are not indicated in the application on the date of its filing, or if the declared designation of the trademark changes significantly, such additional materials will not be accepted for consideration. They can be prepared and submitted by the applicant as a separate application. 3. A change in the information about the applicant in the application for a trademark, including in the event of transfer or transition of the right to register a trademark or as a result of a change in the name or title of the applicant, as well as the correction of obvious and technical errors in the application documents may be made before the state registration of the trademark or before a decision is made to refuse its state registration."

• Changes concerning the list of goods and services

As follows from the provisions of Article 1497 of the Civil Code of the Russian Federation, additional materials containing a list of goods/services that were not specified in the application on the date of its filing are not accepted for consideration. Thus, it is impossible to supplement the list of goods/services with new items or new classes of the Nice Classification. However, it is possible to limit the list by removing certain items of goods/services or a specific class of the Nice Classification. To make such changes, the applicant submits an application to Rospatent in the prescribed form, which specifies the changes - which specific goods/services are removed from the list, and also provides the amended list of goods and services grouped by classes of the Nice Classification. After the application is reviewed, appropriate changes are made to the application, of which the applicant is notified. Changes to the list of goods and services are not subject to state duty.

• Changes concerning the declared designation

It is possible to make changes to the declared designation if it does not change significantly, i.e. if the changes concern individual elements of the trademark and do not change its essence. The application is drawn up in the established form, it should indicate the changes being made, and also attach the changed designation itself. Making changes to a part of the declared designation is not subject to state duty.

In practice, this procedure is applied, but changes are not always made to the declared designations, which indicates the strict approach of the Rospatent to this procedure. Changes are made if the sign has not been significantly changed, for example, the relative size of the designation, the case of letters, etc. have changed slightly. In this case, the materiality and admissibility of such changes is determined by the examination in relation to each specific case. Based on the results of the application review, the applicant is sent a notice of satisfaction of the application (if the examination considered it possible to make changes), or a notice of refusal to satisfy the application.

• Changes concerning information about the applicant in terms of name and/or address

If the applicant's name and/or legal address have changed, such changes should also be recorded in Rospatent. A specific application form is provided for making changes, which specifies the data that is subject to change. Documents confirming such changes should be attached to the application - for example, an extract from the Unified State Register of Legal Entities with the new name/address and the previous one that was indicated when filing the application, i.e. the attached documents must clearly demonstrate the changes. Such changes are not subject to state duty.

• Changes in applicant information due to the transfer of the right to register a trademark to another person

If during the examination of the application it becomes necessary to transfer the rights to a third party, such changes must be formalized accordingly. For this procedure, you must fill out an application in the prescribed form, indicating the details of the previous applicant and the details of the new applicant (successor). A document confirming the transfer of rights must be attached to the application. Such changes, unlike the above-described cases, are subject to a state fee - its amount is established in paragraph 2.6.2 of Appendix No. 1 to the Regulation on Patent and Other Fees.

In terms of making changes at the application stage, it should be noted that it is also possible to make changes to the correspondence address, for example, if the applicant has changed his representative. If the applicant discovers typos or technical errors, they are also corrected by filing applications for making changes. Such changes are not subject to state duty.

Amendments to a registered trademark

According to Article 1505 of the Civil Code of the Russian Federation, “The federal executive body for intellectual property shall, at the request of the copyright holder, make changes to the State Register of Trademarks and the issued certificate for the trademark, relating to information on the registration of the trademark, including the copyright holder, its name, place of business or place of residence, address for correspondence, changes related to the reduction of the list of goods and services for the individualization of which the trademark is registered, changes to individual elements of the trademark that do not change its essence, as well as changes to correct obvious and technical errors.”

As can be seen from the provisions of the above article, in order to make changes, it is necessary to submit an application to Rospatent, indicating the nature of the changes being made.

For example, to make changes to the name and address of the copyright holder, it is necessary to indicate new information and attach documents confirming such changes to the application. To make changes to the list of goods and services, the application should indicate those goods/services that are subject to exclusion, as well as provide the amended list of goods and services. As in the case of the application, adding new goods/services is not provided.

In the case of changing the designation, it is also important to pay attention to the fact that the changes do not change the sign in essence and do not affect the perception of the sign as a whole or its main elements. Thus, for clarity of the changes being made, the following can be given as examples of when changes were made:

• the unprotected verbal element “restaurant” has been excluded from the trademark (certificate No. 359073, trademark “Yapona Mama”);
• the color combination in the trademark has been changed: from "blue, crimson" to "light blue, red" (certificate No. 621085, trademark "citylab"), from "dark yellow, blue, white" to "yellow, blue, white" (certificate No. 754324, trademark "amg").

As noted above, the materiality and admissibility of the changes made is determined by an expert examination in relation to each specific case. If the mark has been significantly changed and these changes affect its perception, then a new application should be filed and a new trademark registered.

It should be noted that, unlike an application, changes made at the stage of a registered mark are subject to state duty. Thus, the amount of duties is determined in paragraphs 2.16 and 2.17 of Appendix No. 1 to the Regulation on Patent and Other Duties.

In case of successful amendment of a registered trademark, such amendments are reflected in the state register in the section “Amendments”, where the specific amendments that were made are specified, and the date of recording is also indicated.

The period for making changes is approximately 1.5 – 2 months. Applications can be submitted both in paper form and electronically.

The procedure for making changes at first glance seems quite simple, however, as practice shows, it has its own characteristics and nuances.