What shall the applicant do in case of receiving a decision on refusal to register a trademark in Russia?
If Rospatent refused to register the trademark, the applicant has the right to appeal such a decision. The appeal will be examined by the Chamber for Patent Disputes.In the article describes the features of the consideration of cases in the Chamber for Patent Disputes and notices the possibility of further appeal of decisions by the applicant in court.
If during the examination, a Rospatent specialist concludes that it is impossible to register the designation for any reason, then the decision to refuse state registration of the trademark is made.
Despite the fact that this act of the patent office completes the examination of the means of individualization as part of the examination, the applicant has the opportunity to defend his point of view, which is different from the opinion of the specialists of Rospatent.
So, upon receipt of a refusal to register a trademark, the owner of the designation has the right to file an objection with the Chamber for Patent Disputes.
The appeal is submitted by the person who filed the application in person or through an authorized patent attorney, whose competence should be confirmed by a power of attorney indicating the extent of his authority. Be sure to include the identification information of the entity that sent the documents, as well as the address for correspondence.
An objection to the Chamber for Patent Disputes is registered and an incoming number is assigned to it. Going forward:
• If the appeal meets the conditions for filing, then within one month from the date of its receipt by the Patent Disputes Chamber, a notice of acceptance of the objection to the consideration is sent to the person, which indicates the date of the meeting of the board for consideration of the appeal.
• When the documents do not comply with the filing conditions, a notice is sent within one month from the date of receipt that the objection is not accepted for consideration.
• In some cases, the Patent Disputes Chamber may, within one month from the date of receipt of the objection, send a request with a proposal within three months from the date of its receipt to submit additional information necessary for a full consideration.
Opposition cases are examined collectively at a meeting of the Patent Disputes Chamber composed of at least three of its members, including the chairperson and the reviewer, approved by the chairman of the Patent Disputes Chamber.
The decision of the Chamber of Patent Disputes following the results of proceedings to refuse to register a trademark should contain: a reasoned position of the board and a conclusion on registration or on refusal to register a trademark. Based on the results of the consideration of the objection, the Patent Disputes Chamber may decide:
• On satisfaction of the appeal.
• On the refusal to satisfy an objection.
• Or the termination of office work.
In this case, the decision of the Patent Disputes Chamber may provide for the annulment, amendment or upholding of the contested decision.
If the applicant does not agree with the decision of the Chamber for Patent Disputes, then he has the right to apply to the court to resolve the conflict.
Currently, a specialized body for the resolution of disputes in the field of intellectual property operates within the framework of the arbitration system. So, according to part 4 Article 34 of the Arbitration Procedural Code of the Russian Federation, the Intellectual Property Court, as a court of first instance, considers disputes on contesting decisions of federal executive authorities on granting or refusing to grant legal protection to trademarks.
The statement of claim shall be submitted to the arbitration court within three months from the day when the person became aware of the violation of his rights and legitimate interests, unless otherwise provided by federal law. The claim is subject to standard requirements for such documents. The motivated and clearly stated position of the plaintiff is of particular importance.Based on the results of the consideration by the court of first instance, a well-founded decision is made, which can be appealed to a higher judicial authority.
Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63