Peculiarities of making changes in the application and in the certificate for a trademark.

Keywords: intellectual property, means of individualization, exclusive rights, trademark, registration of a trademark, application for a trademark, examination as to form of the application for a trademark, certificate for a trademark, change of a trademark, making changes in a trademark, making changes in the application for a trademark, making changes in the certificate for a trademark

The trademark is, in accordance with the Civil Code of the Russian Federation, “a designation used for the individualization of products of legal entities and individual entrepreneurs”. To get exclusive rights to a trademark in Russia, it is necessary to register it at Rospatent. In case of a successful registration, according to a general rule, the legal protection shall be granted to the applied designation in the volume as it is indicated in the application.

However, in practice it often happens that for some reasons related to the changes of the market conditions, marketing activities, the reorganization or change of the company name of the applicant company, the change of its purposes for the registration of a trademark and other factors, it is necessary to make changes in the application or certificate for a trademark – depending on the step of the registration process. In this article, the conditions and procedure for making such changes will be considered.

In accordance with Article 1497 of the Civil Code of the Russian Federation (“The Examination of the Application for a Trademark and Making Changes in the Documents of the Application”), “During carrying out the examination of the application for a trademark, the applicant has the right to supply, clarify or correct the materials of the application materials, including by filing supplementary materials before the decision on it is made. If the supplementary materials contain a list of products not indicated in the application at its filing date or the applied designation of the trademark has been essentially changed, such supplementary materials shall not be accepted for consideration. They shall be drawn up and filed by the applicant as an independent application.” If the decision of the examination has already been made (the decision on the registration has been made or the notification has been sent to the applicant on the results of checking the compliance of the applied designation with the requirements of the legislation), the applicant can make only those changes in the application that relate to the information about the applicant, including in case of the assignment or transfer of the right to the registration of a trademark or due to the change of the company name or the name of the applicant, as well as the correction of obvious and technical errors in the documents of the application.

            When examining the regulatory framework for making changes in the application for a trademark it is necessary to mention the Rospatent Rules (“The Rules of Composing, Filing and Considering the Documents, Which are the Basis for Committing Legally Significant Acts Related to the State Registration of Trademarks, Service Marks ..,” approved by Order of the Ministry of Economic Development and Trade of the Russian Federation of July 20, 2015 No. 482). To make changes it is required to pay an official fee and to send the documents confirming the payment of the documents to Rospatent. The peculiarities of making changes in the application for a trademark depend on which information the applicant wants to change.

            To change the information about the applicant due to the change of the company name (name) or the location (place of residence), the corresponding application shall be filed, to which the copy of a confirming document shall be enclosed for an individual entrepreneur, for example, an extract from the Unified State Register of Individual Entrepreneurs, for a legal entity it shall be an extract from the Unified State Register of Legal Entities, a copy of the Charter, etc., from which the fact of renaming this legal entity, as well as the change of the address, clearly follows.

            If it is necessary to change the information about the applicant, since the rights to the application have been assigned to a third party, the power of attorney confirming the authority of the representative of the successor applicant, the agreement on the assignation of the right to the registration of the trademark to another party (or its certified copy or the extract) must be enclosed to the application.

            It is possible to make changes in the applied designation itself, if they relate to “the individual elements of the trademark without changing its essence.” The changed applied designation shall be enclosed to the application.

            If the applicant intends to change the list of the products, the changed list of products shall be enclosed to the application.

            The applications on making changes in the address for correspondence or on correcting obvious and technical errors in the documents of the application do not require any mandatory enclosures.

It is also possible to make changes into the already registered trademark, even after the certificate has been issued. According to Article 1505 of the Civil Code of the Russian Federation, upon the application of the right holder, the Federal Executive Authority on Intellectual Property (Rospatent) may make changes in the State Register of Trademarks and the issued certificate concerning, inter alia, “... the information on the right holder, his company name, the name, the location or place of residence, the address for correspondence, the changes related to the reduction of the list of the products and services for the individualization of which the trademark has been registered, the changes of the individual elements of the trademark without changing its essence, as well as the changes to correct obvious and technical errors.”

            This procedure is regulated by the Administrative Procedure approved by Order No. 704 of the Ministry of Economic Development and Trade of the Russian Federation of September 30, 2015, which regulates the procedure for providing by Rospatent the relevant state service for making changes. This Procedure contains an exhaustive list of documents that the applicant must provide in order to make changes.

            First of all, in respect of each certificate the application shall be filed according to a prescribed form – the form is provided in the first annex to the Procedure.  The document confirming the payment of an official fee in the prescribed amount, the power of attorney for the representative, and, if necessary, the document confirming the changes made shall be enclosed to the application.

            The changes, as in case with the application, may relate to the following information.

            The company name or the surname, name, patronymic (the last one is if available) of the right holder: the former and changed company name or surname, name, patronymic (the last one is if available) shall be provided.

            The address of the place of residence of the individual or the location of the legal entity: the changed address of the place of residence of the individual or the location of the legal entity shall be provided.

            The address for correspondence: the changed address for correspondence shall be provided.

The changes of the list shall be the products (services) excludable from the list of the products (services) in respect of which the state registration of the trademark has been carried out and which are grouped according to the classes of the International Classification of Products and Services for the Registration of Trademarks. The examination checks whether the new list indicated in the application on making changes contains any new products or services for which the trademark has not been registered and whether this new list expands the scope of the exclusive rights to the trademark.

To add products/services to the already existing registration is not possible.

The image of the trademark: it is necessary to enclose the changed image of the trademark in two copies. As it has been mentioned earlier, when filing an application, two copies of the image of the changed trademark shall be provided. If the colour combination changes, the description of the changed colour or the colour combination shall be also provided.

When studying the possibility of making changes, the examination checks whether the changes made have changed the essence of the trademark, the perception of the trademark as a whole or its basic, dominant elements. In case if the change of the trademark is essential, for example, as a result of re-branding, it is recommended to re-file an application for the registration of a new trademark.

            And some others.

The same confirming documents as in case of the application for the registration of a trademark shall be enclosed to the application.

In case of compliance with all requirements and making changes in the certificate successfully, these changes shall be placed in section “Changes and Supplements” in the State Register. The entries shall be recorded with the indication of the date of the change or supplement. The term for making changes shall be about two months.

Some right holders may have a question: why should he bother to register changes made in the trademark?

The answer is quite simple: making changes late limits significantly the ability to protect and use the rights to the trademark.

So, for example, the use of the exclusive rights to the trademark (the registration of an alienation agreement, license agreement, etc.) will be refused, if the information on the company name or the legal address of the right holder indicated in the certificate has not been brought in time in line with the information of the Unified State Register of Legal Entities and does not correspond to the actual information indicated in the agreement.

In addition, if the address for correspondence indicated in the Register is not true to fact, the rights holder may not be aware of the threats to the effect of his exclusive rights to the trademark, for example, in connection with filing a claim for non-use by a third party, since all correspondence between the right holder and Rospatent shall be done according to the address indicated for correspondence.

The allocation of an individual registration shall be a special case of making changes in the certificate for a trademark. This possibility is a novel in the Russian legislation on the intellectual property.

Thus, according to Paragraph 2 of Article 1505 of the Civil Code of the Russian Federation, “In case of challenging the provision of the legal protection to a trademark (Article 1512) from the state registration of a trademark, which is in force in respect of several products, according to the application of the right holder the individual registration of such trademark can be allocated for one product or a part of the products from the ones indicated in the initial registration, which are not homogeneous with the products, the list of which remains in the initial registration. Such application may be filed by the right holder before making a decision on the results of the consideration of the dispute concerning the registration of a trademark.” Therefore, any registration the list of which contains more than one position, can be divided formally to preserve the rights of the right holder to at least a “part” of the registration. At the same time, it is clear that the positions provided in the application on the allocation should be included in the list of the products of the initial certificate and should be not homogeneous with the positions, the list of which remains in the initial registration.

It is necessary to distinguish the allocation of an individual registration from filing an allocated application for the registration of a trademark from the initial application, which is possible before the examination makes a decision on the above initial application.

As we see, making changes in the application and the certificate for a trademark seems to be a fairly simple procedure, which, in practice, however, has many peculiarities that require a careful and scrupulous approach.