Darya Kaigorodova

This article is written in response to comments from our readers on social media. We will examine the issue of whether legal protection can be granted to a mark that, or a confusingly similar mark to it, was previously used and/or is being used by parties other than the applicant as of the application date. What challenges might the applicant face?It is not uncommon for marks submitted for registration to have been previously used by others or to imitate such marks. Consider the following examples:The mark has been used for some time by several competitors without acquiring legal protection, and then one of them submits an application to register the trademark in their name.A foreign company exits the market, its trademark lapses, and a local business begins producing similar goods and applies to register a similar mark.An application for a trademark is submitted by one of the distributors/importers of foreign products marked with a trademark that does not have legal protection in this territory.How is the examination conducted?After submitting the application and receiving the decision to accept it for consideration, the examination phase of the claimed mark begins. From which sources can the examiner obtain information about the use of the mark prior to the priority date?First, an informal objection (so-called protest) against the registration of the trademark may be submitted by any party. Such a party could be, for example, a foreign rights holder, another distributor/importer of foreign products, or a competing company using the mark for identical goods and/or services prior to the priority date.Information provided in an informal objection must be documented. For instance, official company documents, commercial and marketing documents, and media information regarding the promotion of goods and/or services marked with the claimed mark may be attached. In this case, the arguments of the objection may be taken into account during the examination and affect its outcome.Second, the examiner independently refers to information available in the public domain, including on the internet, to identify the presence of information about the claimed mark and evaluate its use by third parties for marking goods and/or services identical to those claimed.If there are sufficient grounds, the examiner first issues a notification of the results of the compliance check of the claimed mark with legal requirements, referencing Paragraph 3 of Article 1483 of the Civil Code of the Russian Federation – misleading consumers about the manufacturer of goods/service provider, and if the applicant does not provide sufficient evidence refuting the argument of misleading, a refusal to register the trademark on this basis is issued.What guides the examination in recognizing a mark as misleading consumers about the manufacturer of goods/service provider?According to the Guidelines approved by the Order of FIPS dated January 20, 2020, No. 12, marks that may mislead regarding the manufacturer of the goods include those whose elements indicate a specific manufacturer or create an impression of a specific manufacturer through associations that arise in the consumer's mind. The same applies to service providers.Thus, to conclude that misleading the consumer is possible, the examiner needs to find evidence that the consumer was aware of the mark before the priority date and associates it with a specific party other than the applicant.The second criterion determining the possibility of misleading consumers about the manufacturer of goods/service provider indicates the need for the applicant to introduce goods with a similar mark into civil circulation. Although this criterion is controversial in scientific literature, it is often referenced in the practice of Rospatent.At the same time, the mere fact of using a designation before the filing date of a trademark application does not indicate the possibility of misleading the consumer. As Rospatent notes, “for consumers to have a misconception about the source of origin of goods, the average consumer must be at least familiar with it, that is, hear about it from advertising, see it in sales offers, see mentions of it in the media, Internet networks, etc.”That is, designations that can mislead consumers regarding the manufacturer of goods and/or services will most likely include designations that are identical or similar to the point of confusion/imitation of such designations, known to consumers and used for marking goods and/or services, as well as designations and their imitations that are not registered as trademarks, but are widely used in civil circulation by persons other than the applicant.Also, with regard to the registration of designations identical/similar to the designations of companies that have left the market of the Russian Federation, Rospatent notes that this fact “does not cancel the creation of a threat of confusion and misleading the consumer regarding the manufacturer of the goods.”So, during the examination, the presence of elements in the designation that can lead to misleading the consumer is assessed, and if the information indicating the manufacturer/service provider is not true, the declared designation may be recognized as capable of misleading.It is important to note that the presence or absence of a designation’s ability to mislead consumers regarding the manufacturer/person providing services is always considered in relation to the declared list of goods and/or services.How to overcome rejection in the registration of a trademark with reference to clause 3 of Article 1483 of the Civil Code of the Russian Federation?You can try to overcome a preliminary refusal to register a trademark as part of a response to the examination notification. If this was not possible and Rospatent decided to refuse registration of a trademark, this refusal can be challenged by filing an objection with the Chamber of Patent Disputes.In this case, it is necessary to document your position, and the list of evidence will depend on the situation.If an application for registration of a trademark is filed in relation to a designation that has been used or is used not only by the applicant, then in this case he will need to submit:documents confirming its actual activities in the sale of declared goods/provision of declared services (lease/purchase and sale agreements for premises, agreements for the sale of goods/provision of services indicating the territory and volumes, advertising agreements, etc.);documents indicating that the applicant is recognized by consumers in Russia as a manufacturer of goods/persons providing services marked with the applied designation (advertising information, media publications, information about participation in exhibitions, etc.). In addition, it is highly desirable to provide information from independent sources, for example, data from a sociological survey of consumers.If the application was submitted by a distributor/importer of goods produced by a foreign company, then you will need to provide as evidence:documents confirming his connection with the manufacturer (contracts/invoices/work completion certificates, etc.);a document in which a foreign manufacturer expresses his consent to register a trademark in Russia in the name of the distributor/importer. It is important to remember that a distribution or licensing agreement that includes the authority to use a manufacturer’s trademark does not constitute consent to its registration.The specified list of documents is not exhaustive and is formed in relation to each specific case separately.

China is one of the strongest economies in the world and a huge market, entry into which is the desired stage of business development for a large number of entrepreneurs from all over the world, including from Russia. The number of trademark applications filed in this country increases every year.Thus, according to the China Patent Office (CNIPA), as of the end of June 2022, the number of registered trademarks by copyright holders from more than 200 countries exceeded 40 million, and this number continues to grow.With such a large number of applications, China has no choice but to more demandingly “filter” the designations submitted for registration, while simultaneously increasing the quality and efficiency of their examination.Currently, the trademark registration process in China is regulated through the Trademark Law, which is amended periodically to meet the needs of the times and the rapidly developing Chinese economy.There are two procedures available to an applicant in China for registering a trademark - an international procedure under the Madrid Agreement and its Protocol and a national procedure.An application under the Madrid system is submitted on the basis of a Russian certificate or application, while the type of mark and list are similar to the Russian mark, and adjustments to the list are possible only in the direction of narrowing it. The advantage of an international registration is that it allows all the Madrid Agreement and Protocol member countries of interest to be included in one application. At the same time, a convenient procedure for making changes and renewing registration, as well as its expansion to other countries of the Madrid system, is provided in the future. An international application is submitted to WIPO through Rospatent.National registration means registration directly in China. The national application can only be submitted through Chinese attorneys. If there is no interest in registration in other countries, in relation to China, filing a national application has a higher priority, since working directly with Chinese attorneys allows you to take into account the specific requirements of CNIPA when preparing and filing an application , as well as to process incoming requests/objections faster, without delays associated with international sending documents. In addition, the national procedure for registering a trademark is faster than the international one, since the application is submitted directly to the Patent Office.When filing a national application in China, it is important to consider the following points:In China, multiclass is available, that is, filing an application in several classes of the ICGS. However, it is advisable to submit a separate application for each class. This recommendation is due to the fact that if, as a result of the examination of any class of a single application, obstacles to registration are identified, consideration of the entire application is suspended. In this case, it is impossible to select classes not affected by the failure. In addition, even if a single application is filed, the fee and typically attorney's fees are charged separately for each class;China is guided by the Nice Agreement regarding the list of goods and services, but imposes its own requirements on it: for each item in a class over 10 in China, an additional fee is charged. Therefore, applying for a complete list can be quite costly;Copyright holders of trademarks whose verbal element is written only in Latin or Cyrillic alphabet are poorly protected from violation of their exclusive rights in China. To increase the chances of registration and the degree of protection of the exclusive right to a trademark, we recommend adding hieroglyphs to it, the translation of which corresponds to the verbal element of the designation. It is advisable to carry out the translation of hieroglyphs by Chinese attorneys. Independent translation can distort the meaning inherent in the sign and mislead consumers;If the trade name of a legal entity is used in a mark, it must completely coincide with the information about the applicant for this mark, otherwise it will lead to misleading consumers.The procedure for registering a trademark in China includes the following stages: application filing, formal examination (1 month), substantive examination (6 months), publication of the application in the official gazette and opposition period (within 3 months, third parties can file an opposition to the registration designation as a trademark, which can be considered by the Patent Office for up to 12 months), issuance of a trademark certificate. Currently, China is moving towards reducing the time required for registering a trademark - in 2023, corresponding amendments were proposed to the Trademark Law.As examination requirements for both international and national applications become more stringent, the PRC Patent Office has recently issued preliminary refusals quite often.Trademark registration in China may be refused on absolute and relative grounds.Absolute grounds under Article 10 of the Trademark Law include marks similar to the symbols of the People's Republic of China; another state; an international intergovernmental organization (if there is no appropriate consent for registration); Red Cross or Red Crescent; official insignia; signs that are discriminatory against any nationality; misleading regarding the quality, place of production or other characteristics of the goods; harmful to socialist ethics or consumers, or otherwise having an adverse effect.Geographical names, as well as designations that do not have distinctiveness, cannot be registered as a trademark (Article 11 of the Trademark Law). The latter include signs that have a descriptive meaning, as well as indicating the quality, material, functionality, method of use, weight, quantity and other characteristics of goods and/or services. The exception is cases where the designation has acquired distinctiveness as a result of long-term use.In addition, from our experience, specific goods and/or services related to activities prohibited in China (slot machines and gambling, etc.) are refused on absolute grounds; having a negative social connotation, for example, associated with military operations or having sexual overtones; goods whose turnover is in the PRC (ivory goods, etc.); goods that can potentially harm health (clothing for weight loss, etc.). The Patent Office also does not accept services of class 35 of the ICGS related to retail and wholesale trade.A preliminary refusal on relative grounds may be issued due to the fact that, in the opinion of the examination, the designation applied for registration is confusingly similar to well-known, either previously registered or filed for registration trademarks with an earlier priority date in relation to similar goods and /or services.In our opinion, it is generally more likely to overcome a preliminary refusal for a mark on relative grounds than on absolute grounds, since in the latter case, as a rule, it is necessary to prove the long-term use of the mark in China, the acquisition of distinctiveness by it and/or the absence of that effect in the mark (for example, negative social connotation), which is imputed to the applicant.Refusal on absolute grounds in relation to specific goods and/or services, as a rule, is not overcome: in the absence of a response from the applicant, the refused items are simply removed from the list and the mark is registered in relation to the remaining items.Regarding overcoming a preliminary refusal on relative grounds, we note an important nuance: the Patent Office of the People's Republic of China has actually stopped accepting letters of consent from the copyright holders of opposing trademarks. Thus, there are several working methods by which one can try to overcome the negative decision of the department: 1) cancellation of the opposed marks due to their non-use in China, if the deadlines allow this (at least 3 years must pass from the date of registration of the mark); 2) alienation (assignment) of opposing marks (important: if the copyright holder has other similar marks, it is necessary to assign all marks at the same time); 3) limitation on the application list in terms of goods and/or services that are similar to the goods and/or services in respect of which opposing marks are registered/submitted for registration.It should be borne in mind that in China there is a short period during which the applicant can submit a response to a preliminary refusal - 2 weeks, but at the same time there is no procedure for extending the period. If you fail to provide a response to a preliminary refusal for a trademark in China, it is highly likely that your application will be refused.If the examination is successful, the application is published in the official gazette, and a period of opposition begins, after which, if there are no objections, the designation is registered as a trademark.

From our experience of working with clients, during the initial consultation with a trademark specialist, questions of similar content are often asked. We will try to answer the most relevant of them in this article.1. Register a trademark or patent an industrial design?It is sometimes very difficult to understand the variety of intellectual property objects, especially for those who are just embarking on this path. Realizing that they need to protect their brand, clients often ask how best to do this. The choice of options comes down to registering a trademark and patenting an industrial design and is made depending on the object and purpose.The main function of a trademark is individualizing; with its help, the goods and services of a particular company can be distinguished in the market from a number of others.The purpose of an industrial design is to protect the appearance of the product itself, its design, including shape, surface character, pattern, lines, color scheme and other features that determine its aesthetic features.As a rule, the choice is quite simple: you need to protect the logo - we register a trademark. But sometimes an object (for example, packaging, label) can be protected both as a trademark and as an industrial design. Then you should decide what exactly you want to protect - the appearance of the product or individualize the brand, and also take into account all the advantages and disadvantages of both intellectual property objects. For a more accurate assessment, it is also advisable to conduct a search both in the trademark database and in patent information.In addition, according to Russian legislation, it is not prohibited for an object to receive comprehensive legal protection both as a trademark and an industrial design.2. If there are several designation options, is it possible to register only one?After a client has decided to register a trademark, as a rule, many questions arise regarding the designation itself: there are often several variations of the designation, more or less different from each other.In this case, we always recommend registering the trademark in the form in which it is planned to be used. This means that the number of trademark applications must correspond to the number of variations in the appearance of each designation. Otherwise, there is a risk of not being able to prove its use if any person takes action to early terminate the legal protection of a trademark through the court in the manner prescribed by Article 1486 of the Civil Code of the Russian Federation.The exception is when the changes are very minor and do not change the essence of the designation. At the same time, the insignificance of changes is a subjective factor, which complicates the process of proving it.3. If you register a designation in black and white, will this protect it in other color combinations?The same recommendations apply for color combinations as for designation variations. Registration of a trademark in black and white does not imply its protection in colors other than black and white.In a case where a trademark is registered only in black and white, there is a possibility that its use in color may not prove the use of the registered black and white mark. This rule also applies in reverse: the use of a trademark in a color combination may not prove its use in black and white.Thus, if you plan to use a trademark in color in your activities, it is in this form that it should be registered.4. Is it possible to submit one application for a trademark in Latin and Cyrillic?A sign in Latin and Cyrillic alphabet cannot be included in one application for registration of a trademark. If a mark is intended to be used in both variants simultaneously, then a separate application must be submitted for each designation.5. Why conduct a preliminary search?Preliminary search is not the most popular option; many people skip this stage. However, to assess the chances of registering a designation before filing an application, we believe it is still advisable to carry it out.The search allows, before filing an application, to assess the very possibility of registering a designation in the declared form, and, if necessary, adjust it in such a way as to increase the chances of registration. Taking into account the fact that the search is carried out not only in the database of registered trademarks, but also in the database of submitted applications, its results are much broader than with an independent search on the Internet.6. What is ICGS?The search is carried out, as well as a trademark application is filed in relation to specific goods and services for which the trademark is planned to be used in the future.All goods and services are divided into 45 classes: 34 classes for goods and 11 classes for services in accordance with the International Classification of Goods and Services (ICGS). This classification was adopted within the framework of the Nice Agreement and is universal for use in all participating countries when filing an application for trademark registration.General information on goods and services included in the classes of the ICGS is freely available on the Internet; the ICGS in the current edition can also be found on the FIPS website.7. What should you consider when choosing goods and services when filing a trademark application?The ICGS is quite extensive - it contains a significant number of positions in each class, and therefore it can be difficult to decide on the list.When compiling a list of goods and services, we recommend that you proceed from the fact that: 1) after registration, the copyright holder has an obligation to use the mark in relation to those goods and services for which it is registered. If it is not used (impossibility to confirm use), the mark may be canceled by the interested party; 2) after submitting an application, you cannot add goods or services to the list; 3) if registration in relation to some items of the declared classes is refused by the examination, the list can be limited.8. Why is the procedure for registering a mark so long? Is it possible to speed it up?As a general rule, the standard period for registering a trademark is 8-10 months. At the same time, Rospatent provides an option for official acceleration. The essence of the procedure is to order an accelerated search from FIPS, the results of which are then used during the substantive examination, reducing it to 2 months.It is important to keep in mind that accelerating the process of reviewing an application allows you to quickly obtain the results of the examination, but does not affect them, that is, the likelihood of receiving a notification on the application, and not a decision on registering a mark, is the same as with the standard period for reviewing the application.9. What to do if, as a result of the substantive examination, a notification is received regarding the application?The main thing is not to panic! Currently, receiving notifications on an application is not at all uncommon, given the extensive database of already registered marks. According to Rospatent statistics, more than 100 thousand applications were submitted in 2023 alone.After receiving the notice, the applicant is given 6 months to respond to it. In this case, this is the applicant’s right, not an obligation. Response options vary depending on the grounds on which the notification was issued: you can limit the declared list, prove dissimilarity with opposing marks, cancel them due to non-use, request letters of consent from copyright holders, prove the distinctiveness of the mark, and so on. Depending on the situation, methods for overcoming obstacles to registration are selected by the specialist individually.10. What is the certification stage?The procedure for registering a trademark does not end with a positive decision on registration. Once the decision to register has been made, the stage of obtaining a certificate begins. At this stage, you must submit an application and pay a fee for registering a trademark and issuing a certificate for it. In this case, there is an option to choose the medium: you can receive the certificate in the form of an electronic document or in paper form.Thus, we have tried to answer the most frequently asked questions from clients related to trademark registration. We hope that this information has given a general idea of this procedure and has been useful as such!