One of the ways to protect a business and its reputation is to create a trademark. In legal practice, this term refers to the method of individualization of goods or companies and individual entrepreneurs.
The presence of a registered trademark will allow you to prohibit or allow business rivals, as well as partners, to use a similar brand or a similar designation. Unauthorized use of someone else’s trademark can lead to civil, administrative and even criminal liability.
From June 29, 2023, the self-employed, as well as foreigners, will be able to register trademarks without confirming the status of an individual entrepreneur, if they conduct entrepreneurial activities.
Types of trademarks
The most common among trademarks are three types:
- Combined – consisting of verbal and visual elements.
There are other, more rare types of trademarks. They can be animated, sound, three-dimensional. One example of a sound trademark is the 20th Century Studios opening.
The state registration of trademarks is carried out by the Federal Service for Intellectual Property (Rospatent). There are a large number of rules that Rospatent specialists follow when conducting an examination of a trademark applied for registration.
What cannot be registered as a trademark?
The full list of restrictions on trademark registration is fixed in Article 1483 of the Civil Code of the Russian Federation.
For example, it is not possible to register a trademark if a confusingly similar trademark has been previously registered for the corresponding goods and/or services or an application has been filed.
Also, designations that do not have a distinctive ability may not be registered as a trademark, including:
- Those that entered into general use for the designation of goods of a certain type.
- Common symbols and terms.
- Characterizing goods (for example, indicate their type, quality, quantity, property, method of production).
- Representing the forms of goods, which is primarily due to the property or purpose of the goods.
The trademark should also not include:
- False or misleading elements.
- Elements that contradict the norms of morality and humanity (for example, abusive words, or insulting the feelings of religious).
- Official state symbols and signs (government permission is required).
Trademark registration procedure
Stage 1. Inventing a designation.
When a designation for registration is created, it is recommended to check it in the trademark registry for the presence of confusingly similar trademarks or already submitted applications – in other words, to conduct a search.
You can use paid databases and conduct a search yourself, however, in order to reduce the risk of error, it is recommended to contact specialists who provide trademark registration services on a professional basis. They will conduct a full assessment and prepare a report with recommendations.
Stage 2. Preparation of an application.
At this stage, it is important to determine the classes of international classification of goods and services, that is, goods and services in respect of which the trademark will be protected in the future. In total, there are 45 classes of the NCL (Nice Classification, which stands for international classification of goods and services), but it is not necessary to specify them all, since the amount of the fee paid depends on the number of classes, and after three years from the date of registration, any interested person will be able to challenge the registration for those goods and services for which the trademark is not used.
In the future, after submitting the application, it will be impossible to increase the number of classes. You can only exclude those already declared.
Stage 3. Payment of state fee.
To determine the amount of the fee, it is necessary to know the number of classes of the NCL in the application. To calculate the amount of the fee, you can use a special calculator.
Stage 4. Submit an application to the Federal Institute of Industrial Property (FIPS).
This is a subordinate institution of Rospatent. Verification of the application is carried out in two stages – formal examination and substantive examination. The formal examination of the application is carried out within one month and its purpose is to verify the correctness of filling out the application, as well as checking the availability of all necessary documents. As part of the substantive examination, the compliance of the claimed designation with all the requirements established by Article 1483 of the Civil Code of the Russian Federation is checked and carried out within a period of no more than 12 months.
Stage 5. Making a decision on registration.
In case of a positive decision, the applicant is issued a trademark certificate. If the examination believes that the registration of a trademark is impossible in full or in relation to part of the goods/services, then a notification with the position of the examination is sent to the applicant. The applicant is given 6 months to prepare arguments in favor of the possibility of trademark registration.
The exclusive right to a trademark is valid for 10 years with the right to extend an unlimited number of times.
Advantages of trademark registration
- Growth of the company’s profit and revenue.
- The brand becomes recognizable among customers.
- Profit from the use of the trademark under license by other persons.
- The ability to sell the franchise worldwide.
- Receiving compensation from violators who want to copy the sign in whole or in part.
- The opportunity to start working with large companies.
- Increase in brand value.
It is important to keep in mind that it is not necessary to register a trademark. However, such a procedure allows an entrepreneur to be confident in the safety of the business and a stable income.
Issues related to trademark registration have their own specifics, which are difficult for a non-specialist to understand, so it is recommended to seek the help of patent attorneys. VALEN’s lawyers assist in trademark registration and provide the necessary advice.