In Russia, the registration of a trademark is regulated by special law No. 3520-1 of September twenty-third, 1992. The procedure is carried out by the Federal Service for Intellectual Property, Patents and Trademarks (hereinafter referred to as the authorized body). Previously, this function was performed by Rospatent. In the article we will consider how this procedure is carried out.
general information
Conducting business with the authorized body is carried out independently or through an attorney. For Russians permanently residing abroad or foreign citizens, business is done only through attorneys. Registration of a trademark takes place in several stages:
- Application preparation.
- Her submission for registration.
- Reviewing the question.
- Directly registration itself.
When considering the application, a formal and examination of the designation is carried out, after which the question of whether to register or refuse to conduct the procedure is decided. Let us dwell on each step in more detail.
Application preparation
This stage is held in accordance with special rules, which were approved by order of Rospatent on March 23, 2003. According to this document, the application for registration of a trademark includes information:
- application for registration indicating the data of the applicant himself, his place of registration and actual residence;
- designation;
- The list of goods for which the procedure is requested: they must be grouped according to the relevant International Classification (IKTU);
- description.
The last paragraph should explain what the essence of the notation and the parameters of its identification are. The characteristic includes a view, an indication of the components, the meaning as a whole and in parts.
- With a verbal designation that does not have a semantic load, it is necessary to indicate how it was invented. If it is rarely used in Russian, then you need to indicate what it means. If the name is presented in a foreign language, then the transliteration of the Russian alphabet, as well as the translation, the meaning of the word in Russian (if any) should be given.
- With a pictorial designation - full or partial - the meaning, if any, is also indicated. If some abstraction is implied, then symbolism must be explained.
- If there is a light designation, these signals are characterized and described, their duration and all other features.
- If there is sound accompaniment, sounds are described, frequency diagrams with corresponding phonograms.
In addition to the application, a receipt for the payment of state duty and the charter of the collective mark are attached. Further, the package of documents is submitted, considered and registration of the trademark is carried out. The cost of the procedure today is 8,500 rubles + 1,500 rubles per class of MKTU, exceeding the first.
Filing an application
The package of documents is submitted in person or can be sent by mail. In addition, the application is submitted by fax, but with the provision of the original documents in the future. The papers are sent in duplicate.
But the image of the designation is served in five copies. If it involves different colors besides black and white, then five color and the same number of black and white pictures should be presented. For other documents, one copy is enough.
When the application is received by the authorized body, it is awarded a 10-digit number, where the first 4 digits indicate the year, the 5th is the code for industrial affiliation, and the rest is the serial number. The applicant is notified of this fact. It is already impossible to return it.
A priority
At the next stage, when the application is considered, first of all, they determine the priority. So, the convention priority is established if it is filed within six months after the first application of the state that is a party to the Paris Convention.
If the trademark is placed at an official exhibition held in one of the member states of the Paris Convention, then within six months from the date of opening of the show, exhibition priority is established. In the latter case, the applicant must:
- indicate this fact when applying or when it is received by the Patent Office within 2 months;
- attach documents that confirm the legitimacy of this requirement, or submit them to the authorized body within 3 months.
A highlighted application may also occur. It is served on the basis of another presented earlier. Such an application shall be registered at the date when the original document was submitted, in case it was not withdrawn. A highlighted application must be submitted even for that scenario, if a dispute arises regarding the list of goods in respect of which a trademark is being registered.
Then it will be possible to obtain a certificate for other goods. And about those that are in dispute, the issue will be resolved later. Another priority may be the international registration of a trademark, carried out on the basis of Russian agreements with other countries.
Formal examination
This type of examination, the second name of which is “preliminary”, is done within a month from the date of submission of documents. At this time, the availability of all documents, their contents and compliance with the requirements established by law are checked. Based on its results, the issue of acceptance or rejection of the application is decided.
Examination designations
Verification of the claimed designation takes place after a formal examination. Then the application is examined for compliance with law No. 3520-1. Thus, the probability of identification, the ability of protection is determined, the identity and similarity with other trademarks is checked. The examination is carried out in accordance with the Rules, which are approved by the Order of Rospatent No. 32 dated March 5, 2003.
Decision-making
Even before a decision is made, a notification is sent to the applicant about the result of the audit. Together with him, it is proposed to provide arguments regarding those motives that are given in the notification. This will also be taken into account when a decision is made. However, the arguments must be provided no later than six months from the moment the specified direction is received by the applicant. The state registration of the right to a trademark and the corresponding decision may be revised by the authorized body in the following cases:
- if an application with an earlier priority for a trademark for similar goods has been received;
- their name of the designation of the place of passage is similar to that declared;
- a document with an identical trademark was identified;
- the applicant’s application for changes was submitted and satisfied, which led to the possibility of misleading the consumer.
Trademark Registration
If the examination of the claimed designation was completed successfully, it remains to pay the state fee. Currently, state registration of a trademark costs 10,000 rubles. A collective mark and certificate for it will cost 15,000 rubles. If a receipt for the payment of state duty is not provided, then the application is withdrawn.
The certificate is issued by the authorized body within a month from the date the trademark was registered (in Rospatent such services were provided earlier, now FIPS does this).
Information that relates to this procedure and is entered into the Register is published by the authorized body in a special publication - a bulletin within six months.
So, we examined what a procedure such as trademark registration is (in Rospatent or FIPS - it doesn’t matter). And for how long can I use a patent? It is valid for ten years. You should not forget that the countdown is considered from the moment of filing the application, and not from the date of receipt of the certificate. The term for registration of a trademark, however, may be extended on the basis of only the application of the copyright holder. Such a document may be submitted every ten years.
Normative base
The documents that guide the registration process are the following legal acts.
- Law No. 3520-1 of September 23, 1992.
- The rules, which were approved by Rospatent, No. 32 dated March 5, 2003.
- IKTU.
Without the assistance of specialists
If it is decided that an independent registration of a trademark will be carried out, the owner should know that for its implementation it is necessary to be able to answer a number of questions. We list them:
- Can a designation be registered as a trademark?
- Who will own the rights to it? The copyright holder may be an individual entrepreneur or legal entity.
- What exactly is included in the list of goods or services? (The list is compiled according to the ICG).
Then a number of actions should be performed.
Firstly, it is necessary to conduct an identity check with the currently registered signs and signs. They must be original, not similar to those already in use. When using specialized databases, such work can take about 3-5 days.
Secondly, you need to decide how to register, given the similar designations available and the possibility of manufacturing counterfeit products.
Thirdly, to pay the state fee for filing documents, and then for the examination.
Fourth, if you are denied registration, make a reasoned response.
Fifth, pay a state fee for issuing a certificate.
Specialists help
Self-registration of a trademark is a quite acceptable procedure, but complicated. Therefore, many companies prefer to seek help from specialized organizations. Specialists offer the following services:
- conduct detailed consultations;
- analyze the situation and, if necessary, bring the activity in line with the international classifier;
- prepare all documents and submit an application;
- independently conduct a dialogue with experts.
In addition, assistance can be provided in protecting the trademark from unfair competition. If you decide to contact a specialized company, then you should first inquire about it. If the organization has a wealth of experience, this will significantly protect your business project. Indeed, novice patent attorneys and lawyers may not bring the matter to a positive result.
In a proven organization, in addition to security, time will be saved up to 3 weeks. They highly value their own reputation. Therefore, employees will do everything they can and the chances of success of the event will increase significantly.
International Trademark Registration
Documents may be filed, for example, under the procedures of the Madrid Protocol and the Agreement. Such a system has several advantages. Consider them.
- One application may be submitted for all countries where trademark registration is required.
- The cost for the applicant will decrease significantly (before paying the services of attorneys and the international duty).
- In the future, there is the possibility of including other countries, for which it will only be necessary to pay a fee.
- There is a simplified scheme for renewing or amending registration. It lies in the fact that the statement is the same for different actions.
- The term for consideration of this type of registration is about eighteen months.
How is it made?
Let us briefly consider the procedure for registering a trademark in Russia.
- The application is filed with WIPO MB through the Patent Office of Russia.
- Depending on which countries need registration, the document is submitted in the form of a basic or national application.
- After receiving it, an examination is carried out to determine whether the goods comply with the International Classification, registration activities are carried out, and the corresponding certificate is sent to the owner.
- Further, the relevant documents are transferred to the national departments of the countries for which it was requested, and their own expertise is already carried out there for compliance with national legislation.
- After that, a decision is made to provide registration or to refuse it.
- If the decision is no, WIPO IB makes the necessary entries about the refusals and sends them to the owner. If no response is received from the Departmental country within the time period indicated in the document, then the international registration is recognized as valid.