Maria Dvornikova

A trademark (service mark) is an object of intellectual property that allows you to individualize goods/services. Thus, a trademark (service mark) is intended to individualize (distinguish) the goods and services of some manufacturers from homogeneous goods and services of other manufacturers.In order for a trademark to be registered, it must comply with legal requirements. Thus, one of the criteria for determining the possibility of registering a trademark is its compliance with the requirements of paragraph 6 of Article 1483 of the Civil Code of the Russian Federation, namely:“Designations that are identical or confusingly similar to: cannot be registered as trademarks:1) trademarks of other persons applied for registration in relation to similar goods and having an earlier priority, if the application for state registration of a trademark is not withdrawn, is not recognized as withdrawn or a decision has been made to refuse state registration;2) trademarks of other persons protected in the Russian Federation, including in accordance with an international treaty of the Russian Federation, in relation to similar goods and having an earlier priority;3) trademarks of other persons, recognized in the manner prescribed by this Code as well-known trademarks in the Russian Federation, in relation to homogeneous goods from a date earlier than the priority of the declared designation.Registration as a trademark in relation to homogeneous goods of a designation that is confusingly similar to any of the trademarks specified in subparagraphs 1 and 2 of this paragraph, is permitted with the consent of the copyright holder, provided that such registration cannot cause misleading of the consumer. Consent cannot be revoked by the copyright holder.”As you can see, the Civil Code of the Russian Federation contains an exception to this rule: in subparagraph 5 paragraph 6 article 1483 of the Civil Code of the Russian Federation stipulates the possibility of registration with the consent of the copyright holder.Drafting a letter of consentIf, during the examination of the applied designation, a trademark was opposed, which, in the opinion of the examination, is confusingly similar to the applied designation, the examination sends the applicant a notice of the results of the conformity check (preliminary refusal), which indicates the specific mark/signs. The applicant has the right to prepare a reasoned response and send it to the Office within six months. Thus, the applicant has time to develop a strategy to overcome the expert’s arguments.It should be noted that a letter of consent from the owner of the opposing mark is an effective lever for registering a trademark. The option to contact the owner of the opposing mark occurs when proving the dissimilarity of the marks seems difficult. An applicant who wishes to exercise his right and apply for a letter of consent should carefully approach this issue, since drawing up letters of consent, as well as conducting negotiations, require certain knowledge.First of all, you need to understand that when negotiating with the owner of the opposing sign, the following developments are possible:the copyright holder agrees to issue a letter of consent free of charge;the copyright holder agrees to issue a letter of consent for a fee, which is determined by the copyright holder himself;the copyright holder may refuse to issue a letter of consent.Let's consider a situation where agreements have been reached and the copyright holder has expressed agreement in principle to issue such a letter. The next step is to prepare such a letter of consent, and here it is very important that it is correctly drawn up and all requirements are met.Provisions of clause 7.4.2. Guidelines for the implementation of administrative procedures and actions within the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates determine the requirements for documents containing consent for registration. So, we can highlight the following:the letter of consent can be drawn up in any form;the letter of consent is provided in the original. It should be noted that the introduction of an electronic filing system made it possible to interact with the Office in electronic form. Thus, a letter of consent may initially be sent in a scanned form, but the subsequent sending of its original on paper is mandatory.The letter of consent must contain the following information:complete information about the person giving consent to register the applied designation as a trademark, which allows such person to be identified as the copyright holder of the opposing trademark (his name/name, indication of his place of residence or location);full information about the person to whom consent is issued to register the applied designation as a trademark, allowing to identify such person as the applicant for the application (his name, indication of place of residence or location);expression of the consent of the copyright holder to register the applied designation as a trademark, giving the application number, if assigned, and a description of the applied designation for which consent for registration as a trademark is issued with the application of the applied designation;a specific list of goods/services in respect of which the copyright holder does not object to the registration of the applied designation as a trademark;date drawing up the document and the signature of an authorized person, as well as the seal of the organization (if available). The signature of the heads of foreign legal entities is sealed if the legislation of the country where the legal entity is established requires a seal of the legal entity.The document confirming consent (letter of consent) may contain other information.It is important to note that the letter of consent must be provided in Russian or another language. If such a document is submitted in another language, it must be accompanied by a translation into Russian, certified in the prescribed manner.In addition, the letter of consent indicates that it is irrevocable.Thus, a well-executed letter of consent will allow the trademark registration process to continue.Examination of the consent letterIt should be noted that the decision on acceptance/non-acceptance of the letter of consent remains at the discretion of the examination. Here it is important to pay attention to the approach of the examination when considering the issue of accepting letters of consent.As stated in the Recommendations for the application of the provisions of the Civil Code of the Russian Federation regarding the consent of the copyright holder to register a similar trademark, approved. by order of Rospatent dated December 30, 2009 N 190, namely:According to paragraph 5 of the Recommendations, “The information contained in the document confirming consent is taken into account when conducting an examination of the applied designation, taking into account the recommendations below.The consent document does not eliminate the possibility of trademark confusion resulting from their use. The similarity of trademarks to the extent of confusion can lead to misleading the consumer regarding the product.At the same time, the likelihood of confusion and misleading the consumer depends not only on the fact of similarity of two designations (trademarks), but on a number of other circumstances. The likelihood of confusion between the claimed designation and the opposing trademark increases significantly, in particular, if:the applied designation and the opposed trademark have a degree of similarity close to identity;the homogeneity of the goods is not questioned;the opposing trademark is widely known among potential consumers of the product and is associated with a specific manufacturer (for example, if it is recognized as a well-known trademark in the Russian Federation);the opposed trademark is intended for individualization of consumer goods and everyday demand (for example, for cosmetic and hygiene products, food products, wine, vodka and tobacco products);the opposed trademark is a collective one or, on the contrary, the designation is applied for registration as a collective mark (in relation to similar goods).The confusing similarity of the applied designation and the opposing trademark can lead to undesirable and even dangerous social consequences, in particular, if the opposing trademark is intended to individualize medicinal products.In connection with the above explanations, a document confirming consent should be considered only as one of the circumstances that must be taken into account when checking the protectability of the applied for designation. In order to eliminate the possibility of misleading the consumer during the examination of the declared designation, it is proposed to take into account the circumstances that contribute to the likelihood of confusion, as well as contributing to the emergence of other socially undesirable or even dangerous consequences, and, accordingly, depending on such circumstances, consider the possibility of taking into account a document confirming agreement."Paragraph 7 of the Recommendations indicates the homogeneity of goods, which is also a key factor.Thus, “when establishing the homogeneity of goods, the fundamental possibility of the consumer having the idea that these goods belong to one manufacturer is determined... The higher the degree of homogeneity of goods, i.e. The more signs of homogeneity of goods that can confirm the homogeneity of the goods in respect of which a designation is applied and an opposing, confusingly similar trademark is registered, the higher the predicted probability of confusion can be.The homogeneity of goods is a separate factor, which, together with other factors, should be taken into account when deciding on the issue of granting legal protection to the declared designation in the presence of a document confirming consent.In this regard, it is advisable to take into account the following. The consent of the copyright holder to register a confusingly similar trademark can be taken into account when providing legal protection in a situation where the issue of the homogeneity of goods is debatable and the copyright holder believes that the possibility of confusion when using trademarks for the relevant goods is excluded.At the same time, even if the homogeneity of the goods is questioned, and the copyright holder presents a document confirming consent, legal protection for the applied designation cannot be provided if the opposing trademark:is widely known among potential consumers of the product and is associated with a specific manufacturer (for example, if it is recognized as a well-known trademark in the Russian Federation);designed for individualization of consumer goods and everyday demand;is collective or, conversely, the designation is applied for registration as a collective mark (in relation to homogeneous goods);intended for individualization of medicinal products."Summarizing the above, we can conclude that a letter of consent is an effective tool for registering a trademark and is widely used in practice. At the same time, the received letter of consent does not provide explicit guarantees for registering a trademark, since there are certain requirements both for the execution of the letter of consent and for its consideration by an expert, at the discretion of which its acceptance remains.Sources:Civil Code of the Russian Federation (part four) dated December 18, 2006 N 230-FZ (as amended on June 13, 2023) (as amended and supplemented, entered into force on June 29, 2023)Guidelines for the implementation of administrative procedures and actions within the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates , approved by order of the Federal State Budgetary Institution FIPS dated January 20, 2020 N 12 (as amended on March 25, 2022)Recommendations on the application of the provisions of the Civil Code of the Russian Federation regarding the consent of the copyright holder to register a similar trademark, approved. by order of Rospatent dated December 30, 2009 N 190.

The Chamber for Patent Disputes of Rospatent is a structural unit of the Federal Institute of Industrial Property (FIPS), which, in turn, carries out all necessary actions related to the registration of intellectual property.In this article we will focus on the main functions of the Chamber of Rospatent, as well as its activities using various examples.In accordance with paragraph 2 of Article 1248 of the Civil Code of the Russian Federation, “In the cases provided for by this Code, the protection of intellectual rights in relations related to the filing and consideration of applications for patents for inventions, utility models, industrial samples, selection achievements, trademarks, service marks, geographical indications and names of places of origin of goods, with state registration of these results of intellectual activity and means of individualization, with the issuance of relevant title documents, with challenging the provision of these results and means of legal protection or with its termination, carried out in an administrative manner (clause 2 of Article 11), respectively, by the federal executive body for intellectual property and the federal executive body for selection achievements, and in cases provided for in Articles 1401 - 1405 of this Code, by the federal executive body authorized by the Government of the Russian Federation (clause 2 Article 1401). The decisions of these bodies come into force from the date of adoption. They can be challenged in court in accordance with the procedure established by law."Thus, it is necessary to comply with the mandatory administrative procedure, i.e., for example, to challenge a decision to refuse state registration of a trademark or to challenge the registration of a trademark, it is necessary to contact the Chamber with an appropriate objection.Let us dwell in more detail on the two above examples: challenging a decision to refuse registration of a trademark and invalidating the granting of legal protection to a trademark, and below we will analyze the steps and key points when filing and considering objections.Challenging the decision to refuse registration of a trademarkIf, during the examination of a trademark application, a decision was made to refuse registration, the applicant has the right to file an objection within 4 months from the date of such a decision (Article 1500 of the Civil Code of the Russian Federation). Additionally, it should be noted that this period for challenging can be extended by 6 months - for this, it is necessary, simultaneously with filing an objection, to submit a petition to restore the deadline for filing an objection (Article 1501 of the Civil Code of the Russian Federation). This petition must indicate valid reasons why the deadline was missed.Thus, this objection is submitted directly by the applicant (his representative).Invalidation of the provision of legal protection to a trademarkIn contrast to the case discussed above, when a decision to refuse registration of a trademark is contested and an objection is filed by the applicant (his representative) within four months, filing an objection against granting legal protection to a trademark has a number of differences.First of all, it should be noted that the objection is filed by an interested person - interest must be proven when filing an objection (Article 1513 of the Civil Code of the Russian Federation).Regarding the period within which an objection can be filed, you must pay attention to the following. The period for challenging directly depends on the grounds on which the trademark is challenged. Thus, according to Article 1512 of the Civil Code of the Russian Federation, filing objections to challenge the granting of legal protection to a trademark is possible:fully or partially during the entire validity period of the trademark (if legal protection was granted to it in violation of the requirements of paragraphs 1-5, 8 and 9 of Article 1483 of the Civil Code of the Russian Federation).fully or partially within five years from the date of publication of information about state registration in the state register (if legal protection was provided to it in violation of the requirements of paragraphs 6, 7 and 10 of Article 1483 of the Civil Code of the Russian Federation).completely during the entire period of validity of legal protection (if legal protection was provided to a trademark with a later priority in relation to a recognized well-known registered trademark of another person, the legal protection of which is carried out in accordance with clause 3 of Article 1508 of this Civil Code of the Russian Federation).fully or partially during the entire period of validity of legal protection (if the actions of the copyright holder related to the provision of legal protection to a trademark or another trademark confusingly similar to it are recognized in the prescribed manner as abuse of rights or unfair competition);fully or partially during the entire period of validity of legal protection (if it is provided in violation of the requirements of paragraph 3 of Article 1496 of the Civil Code of the Russian Federation).Thus, when filing an objection, you must carefully pay attention to the period during which it is possible to challenge the validity of a trademark.Preparing and filing an objection It should be noted that a state fee is provided for consideration of an objection (in accordance with paragraph 2.28 of Appendix No. 1 to the Regulations on Duties). This fee must be paid and the payment order must be attached to the objection materials. If a petition is submitted to restore the missed deadline (for example, to challenge a decision to refuse registration), it is also necessary to pay a fee (in accordance with paragraph 2.8.2 of Appendix No. 1 to the Regulations on Fees) and attach it to the petition.In addition, an electronic medium (disk, flash drive) must be attached to the objection materials, on which the objection and all attachments should be recorded.Further, after filing an objection, the applicant (the person who filed the objection) is sent a notification within approximately 1.5-2.5 weeks that the objection has been accepted for consideration. This notification informs the applicant that the objection has been accepted for consideration and the date for scheduling the meeting (the date and time of the meeting, the office are reported, and the person responsible for considering the objection is indicated). The notice also indicates a unique identifier through which opposition materials can be downloaded. Then, using the specified identifier, you can track all materials that are included during the consideration of the objection. Thus, knowing the unique identifier, you can always access the opposition materials.If an objection is filed against granting legal protection to a trademark, then in addition to the applicant (the person who filed the objection), a similar notification is sent to the copyright holder. This notice informs that an objection has been filed, also indicates information about the meeting, and the copyright holder is invited to send his response based on the objection.It should be noted that the review and additional materials must be sent to the teaching staff of Rospatent in advance (no later than ten working days before the date of the board meeting) so that the members of the colleague, as well as the other party, can familiarize themselves with the documents. Failure to send feedback/ additional materials in advance will result in the meeting being postponed to a later date.Working session and powers of the participantsAs for the general process of how the meeting takes place, the following should be noted.At the appointed date and time of the meeting, you must appear at the Chamber for Patent Disputes of Rospatent. Entry is strictly based on a pass, for which you must present an identification document to the pass office, as well as a notice of the appointment of a meeting - based on these documents, a pass is issued.If it is not possible to attend the meeting in person, participation via video conferencing is available. To do this, it is necessary to submit a corresponding petition (simultaneously with the objection or after filing the objection, but no less than 15 working days before the date of the board meeting).It should be noted that your authority at the meeting must be confirmed by a power of attorney - its original is required, which should be presented to the members of the board of the Chamber.An objection to the Chamber is considered collegially - the board must have at least three members, including the chairman.During the meeting, the parties to the dispute are given the floor. During the meeting, questions may be asked by the board. After the presentation is completed and no questions/clarifications arise from the board, the board members retire to the deliberation room to make a decision. Based on the results, the board makes a decision - to postpone the meeting, satisfy the objection or refuse to satisfy it.During the meeting, a protocol is kept, which records information about who takes part in the meeting, what documents were presented at the meeting (if they were included during the meeting). If the meeting is postponed, a corresponding note is made about this. If a decision was made based on the results of the meeting, then it is written down in the operative part of the board’s conclusion.If a decision is made at the meeting (to satisfy the objection/refuse to satisfy), within up to 2 months from the date of the meeting of the board at which its conclusion was formed, the head of Rospatent or a person authorized by him, based on the results of consideration of the dispute, makes one of the following decisions:to satisfy the objection in whole or in part;refusal to satisfy the objection.The conclusion of the board is attached to the decision of the head of Rospatent or a person authorized by him and is an integral part of it.The decision comes into force on the date of its approval.On the Chamber's website you can find a decision on a specific case - to do this, you should use the search form, where you must specify the application/certificate number or the name of the intellectual property object to search.Challenging the decision of the ChamberIn accordance with paragraph 2 of Art. 1248 of the Civil Code of the Russian Federation, decisions of Rospatent adopted based on the results of consideration of disputes can be challenged in court in the manner prescribed by law. The decision of the Chamber can be appealed by filing an application with the Intellectual Property Rights Court. The deadline for filing an application is 3 months from the date of approval of the decision.Thus, evidence for consideration of the Chamber case should be prepared assuming possible subsequent consideration in court. In this regard, you should carefully approach the formation of the evidence base in order to use it in court, if necessary.Summarizing the above, it is obvious that, due to its specificity, preparing an objection and participating in meetings of the board for consideration of objections requires certain knowledge, skills and careful preparation. Compliance with all requirements and having a well-structured strategy will allow you to achieve success. Sources:Civil Code of the Russian Federation (part four) dated December 18, 2006 N 230-FZ (as amended on June 13, 2023) (as amended and supplemented, entered into force on June 29, 2023)Order of the Ministry of Education and Science of Russia and the Ministry of Economic Development of Russia dated April 30, 2020 No. 644/261 “On approval of the rules for the consideration and resolution of administrative disputes by the federal executive body for intellectual property”Regulations on patent and other fees for carrying out legally significant actions, approved. Decree of the Government of the Russian Federation dated December 10, 2008 N 941, as amended on September 19, 2022) (as amended on June 29, 2023).

The priority of a trademark is the date that fixes the primacy of the trademark. It plays an important role in the paperwork of the application as part of the examination and in the subsequent use of the trademark.Thus, in accordance with Article 1494 of the Civil Code of the Russian Federation, “The priority of a trademark is established by the date of filing the application for a trademark with the federal executive body for intellectual property” - i.e. typically, priority is established by the filing date of the application (automatically). It is confirmed by the notification of acceptance and registration of the application. However, it is possible to claim priority earlier than the filing date of the application. The types, features and key points of trademark priorities will be discussed in this article.Priority for a separated application (clause 2 of Article 1494 of the Civil Code of the Russian Federation)First of all, it should be noted that an earlier priority can only be established with appropriate documentary evidence, i.e. the priority date must be documented in accordance with established requirements. The priority date is established by the date of the original application from which it is separated. An important criterion is that, on the date of filing of the divisional application, the original application has not been withdrawn or called for withdrawal, and the divisional application has been filed before a decision has been made on the original one. A divisional application is submitted for the same designation as in the original application; the divisional application must not contain similar goods to those remaining in the list of the original application.As for the allocation procedure, it should be noted that the allocation of an application allows you to “restart” the examination. Thus, for clarity of application of this tool, let us consider the following possible situation as an example: an application was filed for several classes of the ICGS – 14 and 35, and during the examination for class 14 a trademark was opposed due to its confusing similarity (based on clause 6 of Art. .1483 of the Civil Code of the Russian Federation), no obstacles were identified for class 35. The applicant enters into negotiations with the owner of the opposed mark to obtain a letter of consent, but the negotiations are delayed, and the applicant does not have time to complete them before the deadline for responding to the notification (the period for responding to the notification is 6 months from the date of the notification, its extension is not provided). In this case, you can use the selection option - submit a separate application for the “problematic” class 14, and for class 35 continue office work within the framework of the initial application and continue registering the mark. For grade 14, the examination begins again within the framework of the allocated application, i.e. it "restarts". These actions will allow you to maintain priority, because it will be established by the date of the initial application, complete negotiations with the required amount of time, and having received a letter of consent to continue the paperwork and register the trademark in class 14, while in another class, the paperwork will continue within the framework of the initial application and as a result the applicant will receive two trademarks sign for classes 14 and 35 with the same priority.It should be noted that it is very important to maintain priority, since applications are submitted to Rospatent every day and there is a risk that an application for a confusingly similar trademark may be filed.Conventional priority of a trademark (clause 1 of Article 1495 of the Civil Code of the Russian Federation)As follows from the provisions of this article, “The priority of a trademark can be established by the date of filing the first application for a trademark in a state party to the Paris Convention for the Protection of Industrial Property (convention priority), if the application for a trademark is filed with the federal executive body for intellectual property property within six months from the specified date." In this case, it is necessary to document the priority date - attach the corresponding document (a copy of the first application filed in a state party to the Paris Convention for the Protection of Industrial Property). Documents can be attached to the application both upon filing and within three months from the date of filing the application.After the applicant declares his desire to take advantage of the convention priority, the Office will begin checking compliance with legally established deadlines and documents, as well as compliance with the declared designation (must be identical to the first application) and the list of goods/services (the list must be either exactly the same as in the first application or narrower, the list cannot be expanded).If these conditions are not met, then the establishment of conventional priority will be refused, priority will be established by the date of filing the application. In this regard, it is very important to approach this procedure competently and prepare the necessary documents and submit them within the established time frame so that priority is successfully established.The above types of priorities are most often encountered in practice.The exhibition priority of a trademark (clause 2 of Article 1495 of the Civil Code of the Russian Federation)As follows from the provisions of clause 2 of Article 1495 of the Civil Code of the Russian Federation, “The priority of a trademark placed on exhibits of official or officially recognized international exhibitions organized on the territory of one of the member states of the Paris Convention for the Protection of Industrial Property may be established by the start date of public display exhibit at an exhibition (exhibition priority), if the trademark application is filed with the federal executive body for intellectual property within six months from the specified date.»Here it is also necessary to focus on the deadlines - they are similar to the deadlines for conventional priority.Regarding the conditions for establishing exhibition priority, they are as follows: the exhibition must be international or officially recognized as international, it takes place in one of the countries that is a party to the Paris Convention.To establish exhibition priority, the Office checks documents that confirm the establishment of priority, checks the deadline for filing an application, and analyzes the designation and the sign that was placed on exhibits of internationally recognized exhibitions.The international priority of a trademark (clause 4 of Article 1495 of the Civil Code of the Russian Federation)Thus, in accordance with the provisions of this article, “The priority of a trademark may be established by the date of international registration of a trademark in accordance with international treaties of the Russian Federation.”Such priority is established by the date of international registration (entry of the mark into the International Register) in accordance with the Madrid Agreement Concerning the International Registration of Marks. Based on paragraph 4 of Article 3 of this agreement, the registration date is the date of filing the application for international registration in the country of origin, provided that the International Bureau of WIPO received the application within two months from the date of this filing.Summarizing the above, it is necessary to note the importance of priority, since it is on it that the emphasis is placed and the countdown of its validity period begins (if the mark is registered). The earlier the priority of a trademark, the greater the power and advantage it will have in relation to a confusingly similar mark in the event of controversial situations. It is important to emphasize that the exclusive right to a trademark arises after its registration.It is also necessary to note that only one type of priority can be claimed; the establishment of multiple priorities is not provided. In this case, if possible, it is better to choose the priority that will allow you to set the earliest priority date.Sources:Civil Code of the Russian Federation (part four) dated December 18, 2006 N 230-FZ (as amended on June 13, 2023) (as amended and supplemented, entered into force on June 29, 2023)Rules for the preparation, submission and consideration of documents that are the basis for performing legally significant actions for the state registration of trademarks, service marks, collective marks, approved. By Order of the Ministry of Economic Development of Russia dated July 20, 2015 N 482 (as amended on March 1, 2023)Madrid Agreement Concerning the International Registration of Marks of April 14, 1891 (revised in Brussels on December 14, 1900, in Washington on June 2, 1911, in The Hague on November 6, 1925, in London on June 2, 1934, in Nice June 15, 1957 and in Stockholm July 14, 1967)Paris Convention for the Protection of Industrial Property (as amended on September 28, 1979)

Originally published in Trademark Lawyer MagazineA collective trademark is a rather rare type of trademark. A main characteristic is its ownership by an association of persons, as well as its use in relation to goods that have common characteristics. This type of trademark is registered and used in civil circulation the least, and has a number of features that will be discussed below.In accordance with Article 1510 of the Civil Code of the Russian Federation, an association of persons, the creation and activities of which do not contradict the legislation of the state, has the right to register a collective mark in the Russian Federation. A collective mark is a trademark intended to designate goods produced or sold by persons belonging to a given association and having uniform characteristics of their quality or other common characteristics.It should be noted that the purpose of using such a means of individualization as a collective trademark does not differ from a regular trademark. Its main purpose is the individualization of goods and their identification from other manufacturers. The main difference is who the copyright holder is (association of persons).Due to the fact that the copyright holder of a collective mark is an association of persons that is a legal entity, it has a number of documents that regulate its activities. That’s why it is necessary to establish the procedure for using the collective mark, requirements for the characteristics of goods marked with such a mark, the procedure for its use, the procedure for monitoring its use, as well as liability for violations of established rules. Such requirements are established by the association in the Charter of a collective mark. The preparation and submission of the Charter to Rospatent is necessary at the stage of filing an application for registration of a designation as a collective mark. In addition to the requirements for the use of a collective mark, the Charter of a collective mark also lists those persons who are members of the association and have the right to use it, as well as a description of the mark itself and the purposes of its registration.Thus, in accordance with Article 1511 of the Civil Code, the Charter of a collective trademark must contain:name of the association authorized to register the mark in its name (copyright holder)list of persons entitled to use this markpurpose of registering a marklist and uniform quality characteristics or other general characteristics of goods that will be designated by the signterms of use of the markprovisions on the procedure for monitoring the use of a markprovisions on liability for violation of the СharterIt should be noted that if changes are made to the Charter, Rospatent must be notified accordingly. Additionally, information about the participants of the association is entered into the State Register of Trademarks and the certificate for a collective mark. Data are entered into the general State Register of Trademarks and Service Marks of the Russian Federation, and this information is published on the official website of the Federal Institute of Industrial Property (FIPS).Summarizing the above, we can highlight the following mandatory conditions for registration of a collective mark:the copyright holder may be an association of persons;the designation must be intended to identify goods produced or sold by members of the association;goods must have uniform characteristics;in addition to the standard documents for registration of a trademark, the Charter of the collective mark must be attached in the application for registration. For its part, it contains the rules for the use of the collective mark, control over its placement, a list of persons who have the right to use the collective mark, and the procedure for bringing to responsibility. Another feature of a collective mark is the possibility of its transformation into a (ordinary) trademark, which is possible both at the application stage and after registration. Conversion can be carried out either from a collective trademark/collective mark application to a trademark/trademark application, or vice versa.When converting an application for registration of a collective mark into an application for registration of a trademark, several conditions must be met:submission of consent to the transformation of the application by persons of the association;submitting an application before a decision is made on the converted application;the application is signed by an authorized person of the association of persons;an application for state registration of a trademark (service mark) is attached to the application for transformation of the application;the state fee for registering a trademark (service mark) has been paid.It should be noted that the applicant must be a person who was part of the association (the applicant for the converted application). Based on the results of consideration of the application, Rospatent makes a decision in the form of a notification of approval or refusal of the application. The priority and filing date of the application are retained when the application is converted.Another feature of the legal regime of a collective mark in Russia is the presence of restrictions on the disposal of rights to it. Thus, Article 1510 of the Civil Code establishes a direct ban on the alienation of rights to a collective trademark and the conclusion of licensing agreements.It is also important to note that a person belonging to an association that has registered a collective mark has the right to use its trademark along with the collective one.Taking into account the specifics of this means of individualization, a collective mark is not the most popular type of trademark, as evidenced by the small number of registered objects. The following are examples of collective signs:trademark “Borjomi” No. 899664, registered for goods of class 32 ICGS, copyright holder Non-entrepreneurial (non-commercial) legal entity Georgian Glass and Mineral Waters Association, Georgia (GE);trademark “Solingen” No. 312608, registered for goods of class 08 ICTU, copyright holder Industry-und Handelskammer Vuppertal-. Solingen-Remsheid, Germany (DE);trademark “Derevenkino” No. 712363, registered for goods of class 29 of the ICTU, copyright holder Association of Peasant (Farm) Farms and Agricultural Cooperatives of the Tambov Region, Russia (RU);trademark “Aleksandrovskaya products” No. 324484, registered for goods of class 30 of the ICTU, copyright holder Association Aleksandrovskaya, Russia (RU);trademark “Silver of Russia” No. 484309, registered for goods and services of classes 14, 35 of the ICTU, copyright holder Jewelry and production company "Silver of Russia", Russia (RU).The list is not exhaustive.Among these marks, such marks as: “Aleksandrovskaya products” No. 324484, “Silver of Russia” No. 484309 were transformed, which can be traced in the chronology of publications of information in open registers.The small number of registered collective marks and their low popularity can be explained by the fact that registering a collective mark is a rather labor-intensive procedure that requires certain preparation of documents and information. At the same time, such a trademark helps consumers to easily identify goods produced only by members of the association and be confident in their quality, which in turn increases the reputation of the manufacturer.

As follows from the provisions of Article 1481 of the Civil Code of the Russian Federation, “A trademark certificate certifies the owner’s exclusive right to the trademark in relation to the goods and services specified in the certificate”. That is, it is obvious that the exclusive right is certified by only one document.Consequently, the above legislative norms do not provide for the possibility of recognizing multiple exclusive rights for the same scope of legal protection of a mark, since this would contradict the absolute nature of the exclusive right and would entail the impossibility of isolating a trademark as an object of civil rights and the exclusive right to it, i.e. would lead to so-called “double registration”.Thus, state registration as a trademark of a designation identical to a registered trademark in the name of the same copyright holder in relation to a matching list of goods and services is contrary to the nature of the exclusive right; therefore, such registration will be contrary to public interests and, accordingly, violate the provisions of paragraph 3 of Art. 1483 of Civil Code of the Russian Federation.It should be noted that in order to avoid refusal due to “double registration”, trademarks must have differences, which may include the following:the declared designation must have a difference, which can be expressed in color combination, compositional arrangement of elements, font design, or the addition of new elements. It is important to note that the addition of the element “®” (trademark protection sign) cannot be regarded as a difference that allows one to avoid receiving a refusal on this basis.the list of goods and services must be different, i.e. Items of goods/services that are available in early registration should be excluded.Thus, when filing an application for registration of a new mark, it is necessary to conduct a detailed analysis of a previously registered mark, focusing on key points. This will avoid receiving notifications from the examination and delaying the paperwork.It is important to remember that from the point of view of legislation in the field of intellectual property, it is unacceptable when the same scope of legal protection is certified by two certificates, since this contradicts the nature of the exclusive right.For clarity, let us turn to the practice of such cases.According to the Guidelines for the implementation of administrative procedures and actions within the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates, approved by order of the Federal State Budgetary Institution FIPS dated January 20, 2020 N 12 (as amended on March 25, 2022), according to the section 4.2.1. Designations contrary to the public interest: Designations that are contrary to public interests include designations that are identical (with minor differences) to a trademark registered in the name of the same person.These provisions are confirmed by court decisions. Thus, the IP's court request to invalidate the decision of Rospatent to refuse state registration of a trademark under application No. 2014712526 was denied. Rospatent made a decision to refuse state registration of the designation “SOUTH GARDEN”, applied for registration as a trademark under application No. 2014712526 in the name of the applicant due to the fact that the applicant at the time of filing the application was already the copyright holder of the trademark “SOUTH GARDEN” under certificate No. 517703 (Resolution of the Presidium of the SIP dated May 2, 2017 in case No. SIP-711/2016).At the same time, in the considered resolution of the Presidium of the IP Court, a reference was made to the provisions of the review of judicial practice, according to which “a series of trademarks are trademarks of one right holder, dependent on each other, interconnected by the presence of the same dominant verbal or figurative element, having phonetic and semantic similarity, as well as insignificant graphic differences that do not change the essence of the trademarks.” At the same time, in the resolution of the Presidium, in disclosing the above provisions, it is also established that “trademarks in which the existing differences are so insignificant that the consumer may not notice them cannot be qualified as a series of trademarks.”At the same time, with regard to the above designation under application No. 2014712526, which was the subject of consideration, it was established “that the senior trademark and the designation on the junior application are identical, and the fact that the designation on the junior application is made in a bolder font than the senior trademark is not influences the perception of the compared trademarks as identical.”It is also noted that “based on the provisions of the law, there cannot be two or three exclusive rights, identical in content, to the same means of individualization, since in this case the right ceases to be exclusive.” In the considered resolution of the Presidium of the Council of IPs, it is established that in the provisions of the legislation the list of cases when state registration of a trademark may be contrary to public interests is not exhaustive, and in a similar situation, when a designation has been applied for in the name of the same applicant, which has minor differences from the registered trademark, registration of such a designation is contrary to public interests (clause 3 of Article 1483 of the Civil Code of the Russian Federation).As noted above, in order to avoid refusal due to “double registration”, a trademark may have a difference, including in color combination, i.e. the list of goods and services for two marks of the same copyright holder will be similar, but the marks must be made in different colors.As a rule, this practice is used by large companies that have a large package of trademarks in their portfolio. Thus, a series of trademarks are registered in various color combinations - mainly a designation in a corporate style and in black and white.Examples include the following trademarks:trademarks "Russian Railways" No. 341333 and No. 341334 (copyright holder OJSC "Russian Railways", 107174, Moscow, Novaya Basmannaya str., 2/1, building 1 (RU);trademarks “MTS” No. 327460 and No. 311393 (copyright holder PJSC Mobile TeleSystems, 109147, Moscow, Marxistskaya St. , 4 (RU);trademarks “Megafon” No. 544687 and No. 544688 (copyright holder OJSC MegaFon, 115035, Moscow, Kadashevskaya embankment, 30 (RU).As you can see, these marks are made in color and black and white, as well as in different colors - they are registered in the name of one copyright holder in relation to a matching list of goods and services. Thus, in the cases under consideration, the examination quite rightly registered the indicated trademarks for a matching list of goods and services, since it considered them to be a continuation of a series of marks.Thus, when preparing to register a trademark, it is necessary to take into account all the above criteria in distinguishing the designations in order to avoid receiving a notification due to “double registration”. It is important to remember that each trademark is unique and it can only be one; another is not provided for by the current legislation. It is the individuality of a trademark that determines its exclusive right.Sources:Civil Code of the Russian Federation (part four) dated December 18, 2006 N 230-FZ (as amended on June 13, 2023) (as amended and supplemented, entered into force on June 29, 2023)Rules for the preparation, submission and consideration of documents that are the basis for performing legally significant actions for the state registration of trademarks, service marks, collective marks, approved. By Order of the Ministry of Economic Development of Russia dated July 20, 2015 N 482 (as amended on March 1, 2023)Guidelines for the implementation of administrative procedures and actions within the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates, approved by Order of the Federal State Budgetary Institution FIPS dated January 20, 2020 N 12 ( ed. dated March 25, 2022)

The creation of any business begins with the development of the concept of the company, its name, trademark. It is on the name that the main emphasis is placed, because it is not in vain that they say: “whatever you call a ship, so it will sail” (the phrase belongs to Captain Vrungel, the hero of the popular Soviet animated series “The Adventures of Captain Vrungel”). The success of the enterprise and the business as a whole depends on what emotional coloring the name will bear, what associations it will evoke, and, consequently, consumer confidence in it is formed.Let us analyze in more detail such means of individualization as a trade name, commercial designation and trademark and service mark and clash of rights to them.Trademark and service markAccording to Art. 1477 of the Civil Code of the Russian Federation “ A trademark (service mark) is a designation that serves to individualize goods, work performed or services provided. »Registration of a trademark is carried out in the federal executive body for intellectual property (Rospatent). A trademark is recognized as an exclusive right certified by a certificate.The person in whose name the trademark is registered (right holder) has the exclusive right to use the trademark in accordance with Article 1229 of the Civil Code of the Russian Federation in any way that does not contradict the law (exclusive right to the trademark).The term of the trademark is 10 years, renewable an unlimited number of times, each time for 10 years.Brand nameAccording to paragraph 2 of Art. 1473 of the Civil Code of the Russian Federation “ The company name of a legal entity must contain an indication of its organizational and legal form and the actual name of the legal entity, which cannot consist only of words denoting the type of activity."Thus, the company name consists of two parts: an indication of the organizational and legal form + the name of the legal entity, it is subject to mandatory registration in the Unified State Register of Legal Entities (EGRLE).A legal entity whose company name is registered in the established manner has the exclusive right to use such name in any not prohibited way, and also has the right to demand the termination of the illegal (without its consent) use of such name by other legal entities and compensation for losses caused by such use.The company name is protected indefinitely (as long as the legal entity operates and is registered in the Unified State Register of Legal Entities).Commercial designationAccording to Art. 1538 of the Civil Code of the Russian Federation “Legal entities engaged in entrepreneurial activities (including non-profit organizations that are granted the right to carry out such activities in accordance with the law by their constituent documents), as well as individual entrepreneurs, can use for the individualization of their trade, industrial and other enterprises ( article 132 of the Civil Code of the Russian Federation) are commercial designations that are not company names and are not subject to mandatory inclusion in the constituent documents and the unified state register of legal entities. A commercial designation can be used by the right holder to individualize one or more enterprises. For the individualization of one enterprise, two or more commercial designations cannot be used at the same time.Thus, legal entities and individual entrepreneurs can be owners of a commercial designation.A feature of a commercial designation is that it is not included in the constituent documents and the unified state register of legal entities; its special registration is not required. It should be noted that the exclusive right to a commercial designation arises from the moment of its actual use. A commercial designation is protected indefinitely, but it is important to note that the exclusive right to a commercial designation is terminated if the right holder does not use it continuously for one year. Thus, the basis for the termination of the exclusive right to a commercial designation is the fact of its non-use.Often, a commercial designation is confused with a brand name, however, these are different means of individualization that have their own characteristics.Article 1541 of the Civil Code of the Russian Federation determines the correlation of the right to a commercial designation with the rights to a trade name and trademark:“1. The exclusive right to a commercial designation, including the trade name of the right holder or its individual elements, arises and operates independently of the exclusive right to the trade name.2. A commercial designation or individual elements of this name may be used by the right holder in a trademark belonging to him. A commercial designation included in a trademark is protected independently of the protection of the trademark.Disputes very often arise when a company considers that a third-party trademark containing a distinctive part of its company name violates its rights, and can file an objection to the registration of this mark with the Chamber for Patent Disputes of Rospatent on the basis of its inconsistency with the provisions of paragraph 3 of this Article. 8 art. 1483 of the Civil Code of the Russian Federation. Here it is important to keep in mind the importance of a commercial designation, which can serve as a weighty argument even if the right to a trade name arose before the priority date of the challenged mark.In accordance with paragraph 8 of Article 1483 of the Civil Code of the Russian Federation, “Designs that are identical or confusingly similar to a trade name or commercial designation protected in the Russian Federation (separate elements of such a name or designation) cannot be registered as trademarks in relation to homogeneous goods, or with the name of the selection achievement registered in the State Register of Protected Selection Achievements, the rights to which in the Russian Federation Federations arose with other persons before the priority date of the registered trademark.In accordance with paragraph 6 of Article 1252 of the Civil Code of the Russian Federation “If various means of individualization (company name, trademark, service mark, commercial designation) turn out to be identical or similar to the degree of confusion, and as a result of such identity or similarity, consumers and (or ) contractors, the priority is given to the means of individualization, the exclusive right to which arose earlier, or in cases of establishing a convention or exhibition priority, the means of individualization, which has an earlier priority .According to Art. 1225 of the Civil Code of the Russian Federation, a commercial designation is the result of intellectual activity and equivalent means of individualization of legal entities, goods, works, services and enterprises that are granted legal protection.When considering the issue concerning the clash between a trade name and a trademark, it is important to note that the owner of the disputed mark has older rights to such a means of individualization as a commercial designation. So, as noted above, in accordance with clause 6 of Article 1252 of the Civil Code of the Russian Federation, in the event of a collision of confusingly similar means of individualization, the advantage is given to the means of individualization, the exclusive right to which arose earlier.In this regard, it is important to note that if a company conducts business under its commercial name continuously and uses it for a long period of time (long before the registration of the trade name of the person trying to challenge the trademark), then it has a priority right over its trade name.Since a commercial designation, unlike a trade name and a trademark, is not subject to registration, the fact of the existence of an exclusive right to it can be established on the basis of documents confirming its actual use.It should be noted that determining the degree of popularity of a commercial designation in a certain territory is an important factor in determining the moment of the emergence of the right to it, and it is very important to competently approach the collection of such documents.In accordance with the position of the IP Court, reflected in the decision of the Court for Intellectual Property Rights dated May 23, 2017 in case No. SIP-81/2017, the circumstances of the long-term and (or) intensive use of the designation in a certain territory, the costs incurred for advertising , significant volumes of sales of goods and provision of services under this designation, the results of a survey of consumers of goods on the issue of the popularity of the designation in a certain territory.Thus, in order to prove the fact of the use of a commercial name, it is necessary to provide documents on its continuous use - it is important that they be dated earlier than the date of registration of the trade name of the company acting as an opponent in the dispute.Thus, it is necessary to provide evidence that confirms that the company continuously uses its commercial designation in relation to the goods and services listed in the registration, the products have long been present on the Russian market and during this time have gained a certain reputation and fame among consumers. A commercial designation can be used by the right holder to identify his enterprise, including by indicating on goods or their packaging, waybills, contracts, signs, in announcements and advertisements, in invoices, materials on participation in exhibitions and in other documents.The priority of a commercial designation is a weighty argument, and it is necessary to prove that the right to a commercial designation arose earlier than the right to a trade name and became known in a certain territory earlier than the date of registration of the opponent's trade name.Thus, a well-assembled package of documents will make it possible to prove that the commercial designation arose much earlier than the date of registration of the company name of the company acting as an opponent in contesting the trademark, and will allow the trademark to remain valid.Sources:1.Civil Code of the Russian Federation (Part Four) dated December 18, 2006 N 230-FZ (as amended on June 13, 2023) (as amended and supplemented, effective from June 29, 2023)2.Rules for the preparation, submission and consideration of documents that are the basis for the performance of legally significant actions for the state registration of trademarks, service marks, collective marks, approved. By order of the Ministry of Economic Development of Russia of July 20, 2015 N 482 (as amended on November 23, 2020)3.Guidelines for the implementation of administrative procedures and actions in the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates, approved. Order of FGBU FIPS dated January 20, 2020 N 12 (as amended on March 25, 2022)4.Information message “On checking the compliance of signs applied for registration as trademarks with the requirements of paragraph 8 (in terms of trade names and commercial designations) of Article 1483 of the Civil Code of the Russian Federation”5.Judgment of the Intellectual Property Rights Court dated May 23, 2017 in case No. SIP-81/2017