As registered trademark

What is a trademark and why you need it

Trademark - a designation that allows almost infallibly distinguish products from a specific manufacturer counterparts. For example, if you see a round tickAbout trademarks "NIKE International Affiliates, Ltd.".You without any words you know, it's Nike. A lily with three strips - that's for sure AdidasAbout trademarks of Adidas AG.

The trademark helps to highlight the products on the market to link it to a specific manufacturer, to attract the attention of consumers and not only.

To specify that a trademark has the right holder, next to him or put R ® Civil Code, Article 1485. Sign trademark protection. You can also write a series of "trademark" or "registered trademark."

What to do to register a trademark

Note that to register a trade mark may only

Civil Code, Article 1478. Owner of an exclusive right to a trademark entrepreneur or legal entity. So maybe we should start with the legalization business. If this is all right, you need to carry out preparatory work.

Decide how you want your trademark

He might beCivil Code, Article 1482. Types of trademarks verbal (just the name), in fine, three-dimensional (original packaging, the shape of the product), combined (for example, word and image).

Think about all the details, because the trademark is protected by law in the extent that it is registered.

Check mark on plagiarism and compliance with the law

There are some restrictions that do not allowCivil Code, Article 1483. Grounds for refusal to register a trademark registered trademark. So, you can not use:

• state symbols and signs;
• abbreviated or full names of international and intergovernmental organizations, their signs and symbols;
• official control, guarantee or hallmarks, seals, awards and other elements of the differences;
• official names and images of especially valuable objects of cultural heritage;
• the names of well-known works, the names of specific people, aliases;
• conventional symbols and conventions;
• Items marked goods which have entered into general use;
• characteristics of the goods, indicating their kind, quality, quantity, properties, purpose, value;
• information, introducing consumer confusion;
• elements that are contrary to public interests, principles of humanity and morality;
• designation similar to the trademarks of others.

The last point raises the most questions. After all, in order to avoid errors, you need to check all the already registered trademarks.

Anastasia Poustovit advised to use for this premium base Federal Institute of Industrial Property or other paid services that have access to data FIPS. Lawyer Dmitry Zatsarinsky also recommends the following services and databases:

• ​«Znakoved»;
• ​«Search for signs»;
• ​Unified State Register of Legal Entities.

Compare your trademark with other three types of similarities:

1. Phonetic. A trademark is similar to the other at the hearing, for example, Dixie - Dixi - Dixy - «Dixie."
2. Graphic. Trademark like another visually: the general visual impression, mind font, The nature of the letters, their location in relation to each other, color or combination of colors.
3. Semantic. A trademark is similar to the other within the meaning of: the idea ( "sleep Melody" - "Sleep Music" or "Fragrant Melody» - Aromatic Melody), coincidence element, which falls logical stress, the opposite of the concepts included in the title ( "My Family" - "Your family").

Keep in mind that the specialists of Rospatent may have a different opinion on the similarity of your trademark with the already existing ones. So be prepared for failure, and rapid introduction of edits to make a noticeable difference.

Select the trademark will be used for public goods and services

A trademark can not be registered for the entire time. You need to select the list of goods and services, but not at random, but according to the International ClassificationInternational classification for the registration of marks for goods and services (Nice Classification 11). In her 45 classes, you need to identify suitable to your products and services. For example, shote clothing - choose the 25 th grade.

Where and how to apply

For trademark registration should apply to Rospatent. Documents can be submitted in several ways:

1. The electronic form through site Federal Institute of Industrial Property. From the pros: all correspondence conducted electronically, you can pay the registration fee with a discount of 30%. But the application will sign the electronic qualified signature is necessary, and to work with the service need to at You installed crypto plugin "CryptoPro EDS Browser», a personal certificate and its chain certificates.
2. The electronic form through the "Public services». Please note that you must be logged in as a SP or an employee, or functionality will be available to you. Pros are the same and when they apply through the FIPS reinforced qualified electronic signature is also required.
3. Personally, in the Rospatent office located at the address: Moscow, Berezhkovskaya nab., D. 30, Bldg. 1. Note that the notification of completion of registration department will send you an ordinary letter.
4. Mail. Send correspondence to: Rospatent, Berezhkovskaya nab., D. 30, Bldg. 1, Moscow, G-59, GSP-3, Russian Federation, 125993. If you want to beat the competition, you can send documents by fax: +7 (495) 531-63-18, but originals will have to hand in these still.

What documents are needed to register a trademark

The application (sample filling) for the registration, you are filing with Rospatent, you must enclose:

1. Designation of your trademark.
2. Description designations in free form. Most importantly, consider all the nuances.
3. The list of goods and / or services for which you will use the trade mark, in accordance with the International Classification for the registration of marks for goods and services.
4. the confirmation consent to the processing of personal data.

If it is assumed that the designation will be used by several persons, to the application must include the charter of a collective mark. It specifies a list of persons entitled to use the mark, the purpose of registration, terms of use, provisions on liability for violation of the statute.

How does the registration of a trademark

This slow process consists of several stages:

1. You are applying for trademark registration in Rospatent.
2. Rospatent published in the Official Gazette of the application as filed.
3. Rospatent check whether you paid the registration fee (registration application and a decision on the results of examinations), and It is conducting a formal examination of the application: experts look whether all documents are available and whether they are correctly filled. On preliminary examination will have one monthCivil Code, Article 1498. The formal examination of the application for the trademark. If departments have questions, send you a notification requesting additional information. On it you will have three months.
4. Rospatent carries out a detailed examination: check mark on the similarity with existing and compliance regulatory compliance. If Rospatent employees consider that it is impossible to register the mark, they will send you a formal notice and offered to submit their arguments on the subject. A response is given to youNGC RF, article 1499. Examination designations as claimed trademark six months. Rospatent considered your arguments will not be more than two months. If they do not convince the experts, you will officially refuse to register a trade mark.
5. If the substantive examination is successful, you pay a state fee for registration and issuance of a certificate for the trademark.
6. Rospatent checks to see if you have paid the state duty for registration of a trademark and a certificate.
7. Rospatent registers trademark and publishes information about this and issues a certificate. Registration will have one month, the same is required to issue the certificate.

Refusal to register a trade mark can be challenged in the Chamber for Patent Disputes within four months from the date of sending you the appropriate solutions.

According to the lawyer Oksana Gruzdev, likely to be refused because of the similarity with other symbols or trademarks of third parties because of the misleading about the goods or his manufacturer.

How long does the trademark registration

However, a trademark can be registered and for the year, but all documents should be made perfect, duty - paid time, and the sign - be so unique that no one had any doubt as to his dissimilarity to existing designations.

How much will it cost the trademark registration

You have to pay more state duties:

1. For the registration of the application and the decision on the results of the formal examination - 3500 rubles. If the application for more than five classes of the Nice Classification, will have to pay on 1000 rubles for each additional class.
2. For examination on the merits and a decision on its results - 11 500 rubles. State duty includes only one class of the Nice Classification, for each additional need to pay 2500 rubles.
3. For registration of a trademark - 16 000 plus 1 000 for each of the classes of the Nice Classification, for which registration is requested, if more than five.
4. For the issuance of the certificate of trademark - 2000 rubles.

Minimum cost is estimated at 33 thousand rubles.

The fees for the registration of an application and pass the examination shall be paid a lump sum before or after the filing of the application in two different installments; for registration and issuance of a trademark - in the case of a positive response on the results of substantive examination.

Anastasia Pustovit, managing partner of the law firm and the ANP Law Firm for Intellectual Property Specialist

In addition, if you are at some point you make a mistake or want to challenge the refusal to register a trade mark, would require additional spending.

To make changes and amendments to the declaration and the documents submitted may be paying 4900 rubles, and to correct an already registered mark - 2050 rubles. Appeal the denial will be for 13,500 rubles.

Dmitry Zatsarinsky lawyer

What to do after filing

Watch out for correspondence from Rospatent

This will help you to quickly respond to the notice from the department and provide clarifying documents.

Time to pay the registration fee

If it turns out that the stamp duty is not paid, it suspends the process.

What to do after receiving the certificate of trademark

You can place a trademark on goods, service names, advertising, documentation, domain name and so on, to pass someone the right to use the mark.

The exclusive right to a trademark is valid for 10 years from the filing date of the state registration and it may subsequently be extended upon application owner an unlimited number of time.

Gruzdev Oksana, lawyer patent law office "Gardium"

If you do not use the trademark for more than three years, your right it can challenge interested in the same trademark face.