Trademark registration

What is happening

A company has traded under its own name for years, moves onto a marketplace and is asked to prove its rights to the brand. Only then does it emerge that nobody ever registered the mark and that a similar one has already been filed by someone else.

A new venture is choosing a name and does not want to invest in packaging and advertising for a mark it will later have to change. A check before launch takes days; rebranding after a claim letter takes months.

The Rospatent examiner has issued a notice that the mark cannot be registered because it is descriptive or similar to someone else's. There is a time limit to respond, and the arguments decide whether the company gets protection at least in some classes.

What the law says

• The exclusive right to a trademark arises on registration with Rospatent; the grounds and procedure are set out in Part Four of the Civil Code.
• A mark is registered for specific goods and services grouped into the classes of the International (Nice) Classification. The list in the application defines the scope of future protection and cannot be extended after filing.
• The examiner checks the mark on absolute grounds, such as descriptiveness or a tendency to mislead, and for confusing similarity with earlier applications and registrations.
• Priority is generally determined by the filing date: of two similar marks, the one filed earlier prevails, so delaying the application is risky.
• Registration lasts ten years from the filing date and may be renewed for further ten-year periods without limit.
• A mark not used for three consecutive years after registration may be cancelled early on the application of an interested party, and a registration that breaches the Civil Code may be challenged by an opposition before Rospatent.

What we do

• We assess the mark against the requirements of the Civil Code and search for similar marks and applications.
• We choose the Nice classes and word the list of goods and services around your current business and plans for the next few years.
• We prepare and file the application with Rospatent, with a request for expedited examination where needed.
• We answer the examiner's requests and objections, prepare arguments and, where necessary, obtain letters of consent from owners of similar marks.
• We challenge refusals before Rospatent and in the Intellectual Property Court.
• After registration we explain how to use the mark and keep evidence of use, to protect it against early cancellation.

What we will need from you

• The mark as it is or will be used: word, figurative or combined, in colour or not.
• The goods and services the company offers now and plans to offer.
• The applicant's details: a legal entity or an individual entrepreneur.
• When and where the mark has been used so far.
• A power of attorney to handle the application.