The 21st century is the era of brands. Each company tries to present its product as a unique and original brand with a number of identifiers (novel design, original shape of the package etc.). In order to protect its brand against unfair competition a company usually registers these identifiers as trademarks. In Russia, an enterprise also uses the registration system of trademarks as the basis for the protection of brands. In order to obtain the rights in the trademark, an applicant should just file an application to the Patent Office of Russia and wait for some time until the Office expert conducts the examination of the mark and makes the decision on the registration. However, being so easy at first sight, the registration procedure maybe rather tricky and incomprehensible at some points. In this article, we will discuss the "underwater rocks" of the registration process that are most commonly noticed in the legal practice.
First, as it was said, an applicant should prepare an application for the registration of the trademark. In the application, he should describe the trademark that is filed for registration. The description of the mark is very essential for the future owner of the mark because it actually determines what the trademark protects in the applicant's brand and what is the purpose of its registration. For instance, if an applicant writes down that the trademark protects "the location of the colored ribbon on the package of the product", then the trademark is distinctive, and its aim is to preserve the original design of the trademark owner's goods. However, if you just put that "the trademark is the colored ribbon that the trademark owner puts on the package of its goods", the Patent Office of Russia may probably say that the mark has do distinctiveness and cannot be registered.
Besides, an applicant should list the goods that the trademark protects. According to the Russian Civil Code, the list of the products shall be grouped in classes of the International Classification of Goods and Services for the Registration of Marks (Nice classes). Grouping the goods in Nice classes maybe sometimes rather intricate. For example, if an applicant describes that the trademark is registered for "dairy produce, meaning cheese and cottage cheese", the Patent Office will conclude that the trademark protects only cheese and cottage cheese and no other dairy. However, if a trademark owner puts down that the trademark protects "dairy produce, including without limitation cheese, cottage cheese, and other dairy", the trademark will secure any dairy produced by the trademark owner. Moreover, an applicant may include in the application the products that are not specifically prescribed in the Nice classification (because the Classification cannot take into account all the goods produced or created by merchants). However, an applicant should consider the limitations established by the Classification. For instance, if a trademark owner created a new drink for medical purposes, he cannot designate it in Class 32 Nice classification (which provides the list of non-alcohol drinks and beer) since the drink should be put in the 5th class for pharmaceutical products.
Filing an application itself can be a challenging issue for the future trademark owner. The Civil Code of Russia provides that the date of filing an application is the date when the Patent Office received all the documents of the application (meaning a statement on the state registration, the claimed mark, and the list of the goods the trademark protects). If these documents are sent to the Patent Office at different points of time, the date of filing the application will be the date when the Office received the last document. It means that, for instance, you filed an application with the claimed mark on 1 October, 2018, but provided the list of the goods only on 1 November, 2018, the 1st November will be the date of filing an application. The date of an application can be very crucial for the trademark owner because this date determines the priority of the trademark. Therefore, if someone filed an application for the registration of an identical trademark between 1 October and 1 November, you will not be able to register your own mark.
Once the application is filed, a Patent Office employee will conduct the examination of the trademark. There are two types of examination of the trademark in Russia: formal examination and substantive examination. During the formal examination the examiner checks whether the application contains all the necessary documents and whether they meet the formal requirements. During the substantive examination the Patent Office examiner determines whether the trademark has distinctiveness, whether it is similar to other trademarks that has been previously filed for registration or registered, whether it deceives the customers or contradicts the principles of morality, and whether other legislative provisions have been violated by filing the application for the trademark registration. The substantive examination of the trademark is the most essential part of the whole registration process. In fact, at this stage the examiner determines the fate of the trademark. It is important to mention that during the trademark examination an applicant can amend and complement the application. However, he cannot modify the list of the goods grouped in the Nice classes and substantially change the claimed mark itself. These changes can be brought only as a separate application.
There are some significant issues that should be taken into account at the stage of substantive examination. First, if a trademark contains commonly used words, the examiner can probably say that the trademark lacks distinctiveness (even if there are other elements of the trademark which make it unique and original). In this case, an applicant should, first, provide the Patent Office with the evidence that the trademark contains a number of original elements that allow the trademark to be registered. If, for instance, an applicant wants to register a trademark that contains the word "burger", he should present to the examiner other elements of the trademark that make it distinctive: the writing style of the word, the existence of additional symbols etc.Second, the trademark owner should show that the trademark has obtained the additional distinctiveness during the long use by the trademark owner in his business activity. In the last case, all the possible evidence can be presented to prove that an applicant actively uses the trademark: sales references, newspapers extracts, photos and videos from public events, advertisement materials, catalogues etc. In this case, it is better to provide as much evidence as possible.
Moreover, if the trademark contains words or symbols that are popular in the market, the Patent Office examiner will probably find a number of the registered trademarks that resemble the claimed mark. In the examiner's opinion, it will preclude the registration of the trademark. In order to overcome such an objection of the examiner, an applicant should compare his trademark with the contrasted trademarks and prove that each of them is not confusingly similar to the claimed mark. The trademark owner should make a focus on original elements of its own trademark that make it novel: the graphic elements, the original font, the existence of the words that are not in the contrasted trademark – all these factors influence the distinctiveness of the claimed trademark. Besides, the semantic context of the trademark can be taken into account: if the claimed mark and the contrasted trademark are used for identifying different types of goods, then no confusion exists, and the claimed mark can be registered. Furthermore, some contrasted trademarks that are only simple words are often registered by the so-called "patent trolls" – the companies which business activity is to register popular trademarks and then request bona fide merchants to pay them money for the use of this trademark. In this case, an applicant may claim that the owner of the contrasted trademark acts in bad faith because he does not use the registered mark and only registered it as a tool of commercial blackmail.
It can also be the case that the trademark is registered by a legal entity that is a member of the group of companies. In this case, the Patent Office examiner may find that the claimed marked resembles a number of other trademarks that are owned by the group of companies' members. This issue is especially important for the international holdings such as McDonalds or H & M. In this case, an applicant should not only file the written consent of the trademark owners that an applicant may register the claimed mark, but also prove that all these companies are the single holding, and therefore the customers will not be misled bythe registration of the claimed mark. An applicant should take into account the economic and corporate relationships between the group members while stating that they are the parties of one corporation.
Another practical issue concerns the use of portraits in the trademark. If an applicant does not want to hire a designer to draw a person in graphics and just take a picture in the Internet, the Patent Office will probably refuse registration because the trademark owner failed to obtain consent from a person whose picture was taken. This case may occur even if you download the photo from the public stock which allows the use of the photos in such a way.
If both the formal and substantive examinations are successful, the Patent Office makes the decision on the registration. At this stage of the registration proceedings, it is necessary to remember that an applicant shall pay the fee for the registration of the trademark. If he does not do it within the prescribed term, the Patent Office will deem the application withdrawn. Therefore, the great work made by the applicant during the long registration process will go to hell.
The issue of patent fees is essential during the whole registration procedure. Besides the registration fee, an applicant should also pay the application fee, the fee for examination of the trademark, and the fee for issuing the certificate of registration.
If the applicant complies with all the legislative requirements, he obtains the registration of the trademark and receives the certificate of registration. Therefore, he becomes the exclusive owner of the trademark and can protect his brand against unfair competition.