Trademark: how to register with Rospatent without unnecessary problems Why register a trademark and how to do it without unnecessary problems

What is a trademark

A trademark, also sometimes referred to as a trademark, is the logo and the name registered in Rospatent and now legally protected from misuse. That is, after registration, only the rightful owner of the trademark has the right to use it.

You can register as a trademark the name, logo and their combination. It can be either the name of a company, website, product, or a surname or a name as a personal brand.

Pictures, that is logos, can also be patented: the design is considered an artistic element. However, businesses usually seek to register the name and logo as a trademark and obtain the appropriate certificate from Rospatent in order to achieve maximum legal protection.

Why register a trademark

First of all, to protect the company from competitors and not run into lawsuits. And after the registration of a trademark, new business opportunities appear.

Protect your business from unscrupulous competitors

This is the main task. If someone is illegal used the company name or logo on the packaging or on a sign in a store, the trademark owner can take legal action. Violators will be forced to withdraw goods from circulation and destroy them, and remove the sign. Additionally, compensation of up to five million rubles can be paid.

Similarly, companies will be able to protect their brand on the Internet. For example, advertising platforms Google Ads And "Yandex Direct» remove ads that violate exclusive rights. The main thing is that the owner proves that the logo or name belongs to him. The organization even has the right, through the courts, to select a domain with a name that repeats its trademark or is similar to it.

Finally, the trademark owner can contribute it to a special register to prohibit the transport counterfeit goods through customs. From now on, only importers who have received permission will be able to pass the control.

Start a Franchise

You can't do this without your own brand: impossible to provide the right to use what you do not own. And the logo and name are important elements franchises.

Start selling products on marketplaces

Trading platforms do not want to take risks because they can be fined for trademark infringement and require to show evidence of it.

In the contract for suppliers, there is often a clause on pre-trial reimbursement of costs in case of violation of intellectual rights. This means that if the site receives claims for compensation, it will pay them, but then the seller will be obliged to reimburse the costs on demand, and not after a court decision. But the registered trademark gives the platform the opportunity to justify refusal of payments and confirms the seller's good faith.

Get a new intangible asset

A trademark is not just a unique name or logo, but also a full-fledged asset of the company. A cool and recognizable sign is highly valued by ordinary buyers and investors.

It is no coincidence that the dispute between Apple Computer (now called Apple Inc. and manufactures the iPhone) and Apple Corps lasted over 25 years old. Steve Jobs and the company paid fines many times until the parties came to an agreement - everything to save famous logo. In turn, a successful rebranding of Facebook* led to an increase in the value of the company's shares.

A trademark is also considered property, so it can be pledged to get a loan, or even rented out.

What does a trademark need to be in order to be registered?

Eat a few basic requirements.

unique

It must not repeat already registered trademarks. This applies to both appearance and sound.

For example, Cristal and Crystal may be the subject of a dispute. Although the names are spelled differently, they sound the same. It is also unlikely that it will be possible to register the Pumba logo, which retains the characteristic outlines of the brand of a well-known sportswear manufacturer.

recognizable

The trademark should not use commonly used concepts or generally accepted terms and meanings that characterize the quality of the product. The logo cannot follow the shape of the product.

This means that it will not be possible to register “Automobiles” as the name of an automaker company or to patent a logo with the image of specific candies in the package.

not misleading

Usually this requirement concerns geographical names. Yes, the logo guilt, which is produced in the Crimea, Georgia should not be mentioned. However, for the same reason, they may refuse to register the name "Best Pens" for a pencil manufacturer.

Offending no one

Without obscene language, as well as offensive or inhumane phrases and images.

In practice, however, it is not always clear how decisions are made. So, the Yobidoyobi trademark was registered, and Yoshkin Kota was denied trademark registration three times. From the point of view of the department, the Japanese expression, written in Russian transliteration, is not abusive, but “Yoshkin’s cat” is an offensive phrase.

Consisting not only of abbreviations

Rospatent will not register a random combination of letters. But if the abbreviation is a unique composition, it can be registered as a brand. For example, the logos of different TV channels are suitable for the requirement.

Without elements of official symbols

And this applies not only to the flag or coat of arms of Russia, but also, for example, the symbols of international organizations.

No mention of cultural heritage sites

That is, you can not use everything that is included in the register of cultural heritage. So it will not work to name the flower shop "Bouquet & Kremlin" or use St. Isaac's Cathedral as an element of the logo.

Where to check the uniqueness of the trademark

You can do it yourself with the help of several free services.

1. Official register of Rospatent.Check only the names will turn out, but the system immediately analyzes the versions in Cyrillic and Latin. There are free and paid versions. The database of the first includes only already registered marks, and the second includes those that are also undergoing registration. The site also you can see all trademark information, such as transfer history.
2. brand search. Free service, with the help of which it will be possible to check trademarks, names of legal entities, domains. The search goes through the entire database of Rospatent, including its paid part. Another advantage of Brand Search is the automatic selection of classes of the Nice Classification (International Classification of Goods and Services) and the calculation of the probability of registering a trademark.
3. linkmark. Its feature is image search. Website allows you to check not only the names, but also the logos. Pictures are selected based on international classification codes, so it can be difficult for a beginner to figure it out. Unfortunately, the free version only analyzes registered trademarks and image searches are limited to the first 12 results.

How to register a trademark

Trademark registration is engaged Rospatent, or rather, its subsidiary - the Federal Institute of Industrial Property (FIPS). Its main office is located in Moscow, but there are also regional offices in St. Petersburg and Novosibirsk.

Typically, the trademark registration procedure takes three to eight months. An accelerated procedure for three months is possible only if you pay a special tariff of Rospatent for 94 thousand rubles.

The procedure for registering a brand looks like this.

1. Development of the name and logo. It is necessary that the trademark be unique and meet all other requirements of Rospatent. It is also worth preparing a description, which will also need to be included in the application.
2. Selection of classes of the Nice Classification. Goods and services can belong to different classes, so it is important to determine the appropriate one. There are 45 categories in total, they can be viewed at FIPS website or pick up using the Brand Search service.
3. Payment of state duty. Trademark registration fee is about 30 thousand rubles, 30% less when submitting an electronic application - 23 thousand. Fees for consideration and examination depend on the number of classes of the Nice Classification. Fees can be calculated using tables on the website of Rospatent.
4. Preparing and submitting an application. On agency portal There is a form and a completed example with the necessary information. The document must indicate the owner of the mark, the applicant, describe the mark, as well as indicate the classes of the Nice Classification and the list of goods and services. The application must be accompanied by a trademark, receipts for payment of state duties and documents proving priority and uniqueness. When everything is ready, you need to submit the entire package through "public services" or Personal Area Rospatent.
5. Response to expert inquiries. After accepting the application, the specialists of the department carry out formal examination and substantive examination. During the first, payment of state duty and compliance with laws are checked. During the second, compliance with the requirements for the uniqueness of the logo, and so on. If the experts of Rospatent want to clarify something or have doubts about the protection of the mark, they send a corresponding request. It must be answered within six months.
6. Obtaining a certificate. If the examination was carried out without problems or the applicant managed to refute the arguments of the experts, the commodity the mark is entered into the register of Rospatent, and the brand owner receives a certificate of trade registration stamps.

If you can’t figure out the requirements of Rospatent on your own or you want to save time, you can contact a patent attorney. The latter will help prepare documents, draft or amend an application, and respond to expert requests. The qualifications of a specialist can be checked through special register Rospatent.

What to do if the trademark is already taken

There are several options, from the simpler ones to the really difficult ones.

Change the classes of the Nice Classification or remove unnecessary ones

This is the easiest way, and it can work: it is quite possible to register similar trademarks, but in different classes. For example, Rospatent refused to register the Dobraya Khozyaushka brand for an apron factory, because this trademark is already in the 25th class (clothes). Then the company can try to register the "Good Hostess" in the 24th (fabric and textile products that do not belong to other classes) or 26th class (lace and embroidered products).

Another working method is to reduce the number of classes of the Nice Classification and leave only the goods or services that are really needed, and not all the goods in the class. People often choose categories in reserve or even an entire class of products - naturally, in this case, the likelihood of coincidences increases. It is worth considering what exactly you are selling now and leave only this.

Refine the logo or name

It is necessary to make them unique and get rid of the similarity with the competitor's version.

To fix the logo, you should contact designer: You need to add distinctive properties and original elements. For example, add a new element to the image or change the style of the text part.

In the case of names, lawyers usually rely on the decisions of the Intellectual Property Court. Specific changes depend on the type of similarity.

1. Phonetic. How similar are the brands in terms of sound. Let's say Fenix ​​and Phoenix are spelled differently, but read about the same.
2. Semantic. The difference in the meaning of the words is evaluated. So, igood and beGood were recognized as similar in terms of semantics, but Canti and Cantinero were considered different.
3. Graphic. visual similarity. Often found when using Latin names. For example, Globo and Globe. This requirement can be circumvented by changing the font and adding some special elements to the word.

Obtain written consent from the owner of a similar trademark

Then Rospatent can register a trademark even in the same class.

However, if Rospatent considers that the use of a trademark confuse consumer, it may refuse to register a brand, despite written consent.

Prove that someone else's trademark is not being used

In this case, you will have to go to court. The latter must be convinced that the trademark has not been used for more than three years. If this succeeds, the logo or name will be canceled and their legal protection terminated. And you can register your brand.

Prove that the trademark was recognizable prior to registration

If Rospatent refused to register a trademark because it considered the name unprotectable, for example, because of commonly used concepts, then it will be very difficult to convince the office. You need to prove that the trademark has long been known to consumers and they associate it with your company.

So, the transformer plant "Volkhov" refused in the registration of a trademark, because "NTZ Volkhov" consists only of an abbreviation and a geographical name. To convince Rospatent, lawyers collected evidence that the name has been used for a long time and is well known to clients. As a result, the trademark was registered.

*Activities of Meta Platforms Inc. and its social networks Facebook and Instagram are prohibited in the territory of the Russian Federation.