PROTECT YOUR INDIVIDUALITY -
REGISTER YOUR TRADEMARK

Trademark

Any commercial activity which goods or services we consume in our everyday life is toughly connected with trademarks. Being ordinary consumers we deal with tradenames constantly and everywhere. In the wide diversity of goods and services each of us has to make a regular or a single choice. Anyway our choice is primarily determined by brand names or logos or tradenames or generally – by trademarks. This is the very term employed by IP experts. Indeed, the main purpose of a trademark is to enable free differentiation of goods and services by consumers.

For the other side of the market – the producers - it is very important to make their goods distinguished. Trademarks individualize goods – and this is another goal of registering trademarks. Hence a trademark is a means of individualization.  Comprehensive approach to selection of a proper designation may guarantee success in business. Along with circumspect adoption of a designation one should feel confident about its registrability. That is why involvement of IP experts – trademark attorneys – is essential when you start to work out your future means of individualization. Attendance of trademark attorneys will save you a lot of time and efforts on finding proper designation and will minimize the risk of refusal.

The task of the trademark attorney is to explore TM registration criteria.

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Not any invented designation may be finally registered as a trademark. There are certain restrictions set forth in national trademark legislation.

The following types of designations can be protected as trademarks: words; images; combinations of words and images; labels;  three-dimensional desigantions, light, sound, taste and other types of designations.

Russian patent office does not grant protection to  designations if they totally lack distinctiveness and never acquired it and if they do not meet the requirements of article 1483 of the Civil Code.

 
Notes for freshmen
  • Individual entrepreneurs and legal entities may appeal for trademark registration.

  • Designations should be claimed in the same form and design in which they will be further applied to the goods or services.

  • Upon filing of the application no essential amendments can be made into the claimed designation.

  • Upon filing of the application the list of indicated goods or services can not be enlarged.

  • In course of trademark examination the name and address of the Applicant can be amended at 4900Rub official fee.

  • In course of trademark  examination the application  may be assigned to another person.

NON-DISTINCTIVE are:

  • simple geometric objects, lines, numerals;
  • separate letters;
  • common names;
  • realistic or schemed image of the claimed goods;
  • information characterizing the goods or their producers etc.

Breaking REQUIREMENTS OF ARTICLE 1482 OF THE CIVIL CODE are:

  • terms and symbols common for the sphere to which the claimed goods may be rendered;
  • common terms and symbols;
  • designations generally used to identify particular goods;
  • designations describing goods;
  • designations expressing false or misleading information;
  • immoral designations;
  • designations similar with names or images of cultural heritage;
  • designations coinciding with names of regions from where originate the names of alcoholic beverages;
  • designations reproducing famous names or titles or portraits etc.

Establishing novelty of the trademark is the other task tackled by the attorney.  Novelty signifies absence of very  similar or identical trademarks protected in the name of third parties, that no exclusive rights have been already fixed in regard to such designations by other producers. Comparative analyses is rather complicated – it should be centered around goods or services meant for identification by similar trademarks of separate producers. Determining similarity of designations or homogeneity of goods requires profound practical skills. Neglecting attendance of a competent trademark attorney may deprive you of your trademark or worse bring you into the list of unfair competitors.

After a long way of choosing a reliable designation the application can be filed with the patent office. It can go smoothly unless the list of goods and services is already determined. The list of goods sets the boundaries of protection – the designation will be examined / registered / used within these boundaries. The List is drafted in scopes of the International Classification of Goods and Services which consists of 34 categories of goods and 11 categories of services. Drafting of a relevant list of related goods and services precisely reflecting the applicant’s profile requires experience worked out through diverse permanent practice.

Examination procedures may last from 1,2 to 1,8 years depending on the number of office actions provided by the examiner thus this term directly depends on the profoundness of preliminary analyses of the designation. Grant decision requires payment of the registration fee.

The Owner obtains exclusive right on the trademark only upon its registration. Further on he may make use of  his right in any form he likes without infringing the law. Basic forms are licensing and assignment. All types of agreements involving use of rights on the trademark undergo obligatory registration in the Patent Office. Russian legislation sets forth strict requirements to such agreements and the information contained therein as well as to the registration procedures.

The lifespan of the trademark is restricted by 10 years. This term can be extended unlimited number of times. The Trademark Owner or his reliable representatives  have to be in control of all these terms.

Russian Patent Office grants protection only on the territory of Russian Federation. Extending protection to other countries can be effectuated through filing of separate national trademark applications or one single international application via (a) World Intellectual Property Organization (WIPO) (b) European Union Intellectual Property Organization (EUIPO). No doubts that such registrations are time and money consuming. Qualified experts will appoint optimal scheme of multinational registration to reduce Client’s expenses and long standing rooted international relations of attorneys accord reasonable discounts abroad.

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