In what form one should register a trademark – a theory and practice

The trademark is one of the most registered means of individualization in Russia. According to theRospatent’s report for 2017, since 2014 there has been a continuous increase in the number of registeredtrademarks. 1 Over the last year, the volume of applications filed has exceeded the threshold of 73,500applications. With so many designations, it is difficult to create a unique, effective means ofindividualization. To simplify the process of developing the original designation, it is worth examiningthe variety of trademarks and the peculiarities of their registration.Types of trademarksWord, figurative, three-dimensional and other designations or their combinations can be registered astrademarks, in accordance with the provisions of Article 1482 of the Civil Code of the RussianFederation. Indicating to a possibility of protecting “other” designations, the legislator makes a list ofregistered subject matters as a public one. When checking the means of individualization in respect ofwhich the protection is sought, the Rospatent examiners, regardless of the type of the trademark beingunder consideration, establish the compliance of the subject matter being checked with the provisions ofthe current legislation, namely, with the norms of Article 1477 of the Civil Code of the RussianFederation and Paragraphs 1-7, Subparagraph 3 of Paragraph 9, Paragraph 10 of Article 1483 of the CivilCode of the Russian Federation. Thus, the applicant is entitled to file for registration any designation,which complies with the conditions applicable to the protectable trademarks. However, a variation of theclaimed means of individualization may cause making additional requirements to the subject matter or toits description.Word trade marksThe Rules for drafting, filing and considering the documents that are the basis for performing legallysignificant actions for the state registration of trademarks, service marks, collective marks of theregistration of trademarks, service marks, collective marks (hereinafter referred to as the Rules) describein detail the types of trademarks stipulated in Article 1482 of the Civil Code of the Russian Federation. 2In accordance with Paragraph 32 of the Rules, the word trademarks include the combination of letters,which have a word nature, words, sentences, as well as their combinations. The main function of the wordmeans of individualization is quick informing the consumer. The designation may contain the informationabout the distinctive properties or quality of the product, an indication to the manufacturer or a hint to theplace of manufacture. The main advantage of the word trademark is its memorability, due to thepeculiarities of pronunciation, any analogy with the known words or absolute uniqueness. The analysis ofwell known and well used designations shows that the optimal word means of individualization mustinclude one or more words and in some cases – a slogan. The compliance with the above volumefacilitates the perception and memorizing the trademark by the consumer.Figurative trademarksSuch designations include the images on a plane of natural and other objects, living beings, subjects, anyfigures. The figurative means of individualization allow the manufacturer to bring additional attention ofthe buyer to the products. It is worth noting that compared to the word trademarks, the figurativetrademarks are considered to be more perceived by the consumers, who do not always have time tofamiliarize themselves with the designation (for example, with reading it). In the foreign literature, theterm “eye-catching” is applied to such subject matters, what means “attracting an attention.”

1 https://rupto.ru/content/uploadfiles/docs/otchet_2017_ru.pdf2 http://new.fips.ru/documents/npa-rf/prikazy-minekonomrazvitiya-rf/prikaz-ministerstva-ekonomicheskogo-razvitiya-rf-ot-20-iyulya-2015-g-482.php#P32

Combined trademarksThe combined means of individualization are defined as the designations consisting of a combination ofword, figurative, three-dimensional and other elements. This kind of designations seems to be the mostsuccessful for the registration as a trademark. The combined subject matter, consisting of a complex ofelements, influences the consumer through various “channels” of perception: visual and audio, and,possibly, kinesthetic. Such trademark is universal and multifunctional.Three-dimensional trademarksIn Paragraph 32 of the Rules, such designations include: “three-dimensional subject matters, figures andcombinations of lines and figures in a spatial arrangement, which may be a form of the product or its part,a form of the packaging of the product, a form not related to the product.” In case, when the three-dimensional means of individualization is filed for the registration, the holder of the trademark shallrepresent a general view of this subject matter in the application.Other designationsOther designations include: sound, light, changeable, holographic, tactile, positional, olfactory and tastedesignations. Despite the increase in the number of applications filed for the registration of suchdesignations, the number of the registered trademarks from this group is rather modest compared to word,figurative or combined means of individualization.Sound trademarks are used for radio or television advertising. The applicant of the sound designationshall submit for examination a soundtrack on a digital media.The changeable trademarks consist of a combination of figurative, word, light, sound designations, andthey are used in b-rolls of television companies and film companies.The tactile trademarks are most often intended for the perception of the product by visually impairedconsumers and they are made in a special relief and dot font.The taste and olfactory trademarks usually refer to the characteristics of food products and beverages. Inorder to become protectable, such designations must acquire distinctiveness as a result of the use withrespect to the claimed products. As it has been noted in the Guide for the State Registration of aTrademark, Service Mark, Collective Mark: “the smell should not be a natural property of a product (forexample, the smell of leather for shoes, the smell of fruit for fruit juice).” 3 If the olfactory or tastedesignation is filed for the registration, the applicant should describe clearly and intelligibly in a wordform the characteristics of the smell or taste.In what form one should register a trademarkWhen creating a designation, a potential right holder of a trademark should take into account thefollowing circumstances. According to the materials of the Rospatent reports, word, figurative andcombined trademarks are registered in the majority of cases. Consequently, there are especially manysuch subject matters, what means there is a high risk of establishing identity or similarity to the degree ofconfusion with the already registered means of individualization. Due to this reason additional difficultiesin developing a new and original trademark may appear. Perhaps one should pay attention to more raredesignations, for example, sound, light, olfactory ones, or include them as elements in the combinedmeans of individualization. It is also important to take into account the class of the consumers withrespect to whom the sale of the product is intended, the peculiarities of the types of designations and the

3 The Guide for the implementation of administrative procedures and actions within the framework of providing the stateservice for the state registration of a utility model and for the grant of a patent for a utility model, its duplicate – URL:https://rupto.ru/ru/documents/ruc-tz/download

specificity of the products being manufactured. When creating and registering the designation, it is worthremembering that the buyer does not spend a lot of time studying the trademark, therefore the trademarkmust be memorable and unique.