Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney
A trademark – registration subtleties
Any manufacturer is interested in it that the consumers could distinguish and keep in mind its products. Namely for this purpose the entrepreneurs register trademarks. Sometimes a broader notion is used – brand. But how to create and register one's own trademark?
Prior to proceed with a trademark registration, one needs to create it. And as far as possible, already on this stage one should aspire to cause a trademark be complying with all the requirements of the legislation - subsequently it will simplify considerably the designation registration process for an enterprise.
The law states that a mark can be composed of one or several words, letters, figures, pictures, emblems or signatures, it can have several colors or their combinations. For all that, there exist restrictions that are to be taken into account when creating a trademark. So, a mark shall not be composed only of the word elements alone or images, that
- have come to common use and designate the goods of a certain kind (for example, you can't register a trademark that is composed of the only word "fizzy water", if your company actually manufactures fizzy drinks);
- are generally accepted symbols and terms (a bowl embraced by a snake for medicine; a wrench for mechanics etc.);
- characterize the goods on location, time and way of manufacture (for example, if you own a poultry farm located in the Moscow region, it will be difficult to obtain the exclusive right for the mark "Moscow area hens");
- denote a kind, quality of products (one may not use the words "the best", "super" etc.), composition or raw stuff material;
- represent a form of the goods that is determined exceptionally by their appropriation (for example, one may not register a trademark in form of a kinescope of a TV set if a firm releases kinescopes because their form is preconditioned by the technical characteristics).
All these restrictions are described in more detail in part IV of the Civil Code of RF. It follows from this document that a trademark won't be registered if it:
- misleads a consumer in relation to the quality of goods (for example, word "candies" is used in a name but the goods requested for registration - are biscuit);
- coincides fully or to the largest extent with an already registered mark;
- includes the elements exceptionally of the state emblems, flags, emblems, full or condensed names of the state and international organizations;
- bears a close resemblance with especially valuable historical or cultural sites of Russia;
- is composed of the same name as a widely known work of science, literature or art has.
Article 1483 of the above mentioned part IV of the Civil Code of RF and the "Rules of making, filing and considering of an application for registration of a trademark and service mark" contains the full list of the grounds for a registration rejection of a trademark. One can obtain from the Civil Code the additional information on the trademarks and mechanisms of their registration.
So, a trademark is ready– what comes next?
The first thing to do within the framework of a mark registration - is to carry out a so called search on the similar trademarks and to determine whether somebody tried to register a similar designation. For this goal one can make use of the Rospatent's base on the registered marks that is publically available, but here please take into account that only the designations that are already registered are included into this base – it shows no filed applications! To obtain more reliable information one can involve to the work the organizations that have an access to the applications base. In theoretical terms this search can be ordered at the very Rospatent, but here it either costs too much or takes too much time. It takes the Rospatent's specialists more than one month to carry out a search for reasonable money, while should they have a desire they can carry it out for 3-4 days, but such service will cost for an entrepreneur several times more expensive.
Prior to proceed with a search it is necessary to determine for what goods or services a trademark will be used – it is better to carry out a search on the categories of concrete goods.
If you have established that there are no obstacles for a mark registration, one may file an application to Rospatent. One can do it on his-/her own because all the letterheads are available on the registrar's website. Approximately in one and half - two months after an application has been filed you will get a certificate of acceptance confirming the fact that you have filed documents for a trademark registration. Afterwards approximately in a year of expectations, an applicant will be sent either a notification on the verification results of this designation or a decision on registration. For this time Rospatent carries out one more examination in respect of the similar marks and absolute grounds, i.e. it clarifies whether a word, that is filed for an application as absolute in description of these goods or services, is abusive or not, etc.
A certificate itself only states the fact that your application has been accepted for registration and establishes priority but for all that it grants you no rights. Although many manufacturers use it to confirm registration to contractors for them to start releasing earlier the goods with a new brand. But it is important to understand that when your mark is registered, the legal protection arises as from a date of a priority receipt – that is, from the time when a mark is filed for registration. From the time of a trademark registration it belongs to a right holder for 10 years, starting with a date of an application filing. After this term the legal protection of an image can be extended upon the application of a right holder for the next 10 years.
What mistakes are most often made by entrepreneurs in case they register a mark on their own?
The biggest problem - is similar marks. The Rospatent's website that is publically available, shows the designations' similarity in percentage ratio, but in practice this ration is often divorced from reality. One can get a result that the marks are at 80% identical, with the assumption that in real life they have nothing common for the specialists, and verification results can be such that the marks have nothing common but in fact they are almost identical.
There is one more problem – non-compliance with the requirements imposed on the trademarks. When filing an application for registration the manufacturers often think that this fact already entitles them to use this designation, while in fact it turns out that the marks were never registered and even moreover – they just can't be registered. So, a misestimation of a mark registration opportunity – is the second main mistake.
A big number of the problems arises with a mark description, with making of the goods list. Somebody declares too many categories, the others on the contrary – too few, somebody declares the goods that are absent in the MKTU categories in principle.
Besides that, one should not forget that sometimes it is not enough to file merely an application. Sometimes it is necessary to file for registration both verbal mark and an image and a combined mark…
And people don't always understand it, that's why in case it has become necessary for you to register a trademark, the simplest and efficient recommendation is – don't be afraid of being consulted by a specialist! It is very difficult to assume beforehand how your competitors will infringe your rights, and competent registration will make it possible to make oneself safe to the maximum and to protect one's interests.
The original article was published in journal "Na stol rukovoditelu" in 2012, release No. 8 (http://www.nastol.ru/Go/ViewArticle?id=4056)