Registration of a trademark: application, cost, terms and procedure

In Russia, registration of a trademark is regulatedSpecial Law No. 3520-1 of September 23, 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 this article we will consider how this procedure is carried out.

general information

Doing business with an authorized bodyis carried out independently or by means of an attorney. For Russians permanently residing abroad, or foreign citizens, cases are conducted only through attorneys. Registration of a trademark takes place in several stages:

1. Preparation of the application.
2. Her filing for registration.
3. Reviewing the question.
4. Directly the registration itself.

When considering an application, a formal andexamination of the designation, after which the question of whether to register or deny the procedure is being decided. Let us dwell on each step in more detail.

Preparation of the application

This stage is held according to special rules,which were approved by the order of Rospatent on March 23, 2003. According to this document, the application for the registration of a trademark includes information:

• an application for registration, indicating the information of the applicant himself, his place of registration and actual residence;
• designation;
• the list of goods for which the procedure is requested: they should be grouped according to the relevant International Classification (ICGS);
• description.

The last point should explain what is the essence of the designation and the parameters of its identification. The characteristic includes the form, the indication of the components, the meaning as a whole and the individual parts.

1. With a verbal designation that does not have a semantic meaningload, it is necessary to indicate how it was invented. If it is used in Russian rarely, then you need to specify what it means. If the name is presented in a foreign language, then transliteration of the Russian alphabet, and also translation, the meaning of the word in Russian (if any) should be provided.
2. With a pictorial designation - full or partial - the meaning is also indicated, if any. If an abstraction is meant, then the symbolism must be explained.
3. In the presence of a light design, these signals, their duration and all other features are characterized and described.
4. In the presence of sound, sounds, frequency diagrams with corresponding phonograms are described.

In addition to the application, a receipt for payment is attachedstate duty and the charter of the collective mark. Then the package of documents is handed over, considered and registered for the trademark. The cost of the procedure for today is 8,500 rubles + 1,500 rubles for the class of the ICGS, which exceeds the first.

Filing an application

The package of documents is submitted in person or can be sent by post. In addition, the application is filed by fax, but with the provision of the original documents in the future. The paper is sent in duplicate.

But the image of the designation is given in fivecopies. If it assumes different colors, except black and white, five color and the same black and white images should be presented. For other documents, one copy is enough.

When the application is received by the authorized body, ita 10-digit number is assigned, where the first 4 digits represent the year, the 5th digit is the industrial property code, and the rest is the serial number. The applicant is notified of this fact. It is no longer possible to return it.

A priority

At the next stage, when the application is considered,first determine the priority. Thus, a convention priority is established if it is filed within six months after the first application of a State party to the Paris Convention.

If the trademark is placed on the officialan exhibition held in one of the member states of the Paris Convention, then within half a year from the opening day the exhibition priority is set. In the latter case, the applicant must:

• to indicate this fact when submitting an application or upon its admission to the Patent Office within 2 months;
• attach documents that confirm the legality of this requirement, or submit them to the authorized body within 3 months.

A separate application can also take place. It is served on the basis of another, presented earlier. Such an application is registered at the date when the original document was filed, in case it was not withdrawn. The allotted application must be submitted even for that variant of the development of events if a dispute arises regarding the list of goods in respect of which registration of the trademark is made.

Then you can get a certificate forother goods. And about those who are in dispute, the question will be decided later. Also, the priority may be the international registration of a trademark, conducted on the basis of agreements between Russia and other countries.

Formal expertise

This type of examination, the second name of which -"Preliminary", is done within a month from the date of submission of documents. At this time, the availability of all documents, their content and compliance with the requirements established by law is checked. Based on its results, the issue of accepting or refusing the application is decided.

Expertise of designation

Verification of the claimed designation takes placeafter a formal examination. Then the application is considered for compliance with Law No. 3520-1. Thus, the probability of identification, the ability to protect, the identity and similarity with other trademarks is determined. Examination is carried out in accordance with the Rules, which are approved by Order of Rospatent No. 32 of March 5, 2003.

Decision-making

Even before the decision is made, the applicant is sentnotification of what result of the audit was received. Together with him, it is proposed to give reasons for the reasons given in the notice. This will also be taken into account when a decision is made. However, the arguments must be submitted no later than six months from the time the applicant received the referral. State registration of the right to a trademark and the corresponding decision may be reviewed by the authorized body in the following cases:

• if an application has been received with an earlier priority for a trademark for similar goods;
• their name designation of the place of passage is similar to the declared one;
• a document with an identical trademark has been identified;
• a petition was filed and satisfied about the changes that led to the possibility of misleading the consumer.

Trademark Registration

If the examination of the claimed designationcompleted successfully, it remains to pay the state duty. Currently, the state registration of a trademark costs 10,000 rubles. A collective mark and a certificate will cost 15,000 rubles. If the receipt of payment of state duty is not provided, then the application is withdrawn.

The certificate is issued by an authorized body within a month from the date on which the trademark was registered (at Rospatent, such services were provided earlier, now FIPS is engaged in this).

Information relating to this procedure and entered into the Register is published by the authorized body in a special edition - the newsletter for six months.

So, we looked at what constitutessuch a procedure as registration of a trademark (in Rospatent or in FIPS is not important). And how long can a patent be used? It is valid for ten years. It should not be forgotten that the countdown is counted from the moment of filing the application, and not from the day of receipt of the certificate. The term of registration of a trademark, however, may be extended on the basis of the application of the copyright holder alone. Such a document may be submitted every ten years.

Normative base

The documents that govern the registration process are the following legal acts.

1. Law No. 3520-1 of September 23, 1992.
2. Rules that were approved by Rospatent, No. 32 of March 5, 2003.
3. MKTU.

Without the assistance of experts

If it is decided that an independent registration of a trademark will be carried out, the owner should be aware that for its implementation it is necessary to be able to answer a number of questions. We list them:

1. Can a designation be registered as a trademark?
2. Who will own the rights to it? The rightholder may be an individual or legal entity.
3. What exactly is included in the list of goods or services? (The list is compiled according to ICGS).

Next, you should perform a series of actions.

First, you need to check onidentity with currently registered symbols and signs. They must be original, not similar to those already used. When using specialized databases for such work can take about 3-5 days.

Secondly, it is necessary to decide how to carry out registration, taking into account similar existing designations and the possibility of manufacturing counterfeit products.

Thirdly, pay the state duty for filing documents, and then for the examination.

Fourth, if they refuse to register you, make a motivated response.

Fifth, pay the state duty for issuing a certificate.

Help of specialists

Self-registration of a trademark -The procedure is quite acceptable, but difficult. Therefore, many companies prefer to seek help from specialized organizations. Specialists offer the following services:

• carry out 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 may be provided to protecttrademark from unfair competition. If you decide to contact a specialized company, you should first inquire about it. If the organization has a wealth of experience, it will significantly protect your business project. After all, novice patent attorneys and lawyers may not bring the matter to a positive result.
In a proven organization, besides security,up to 3 weeks time will be saved. They are highly valued by their own reputation. Therefore, the staff 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, according to the procedure of the Madrid Protocol and Agreement. Such a system has several advantages. Consider them.

1. One application can be submitted for all countries where trademark registration is required.
2. The cost to the applicant will significantly decrease (until payment for the services of attorneys and international duty).
3. In the future, there is the possibility of including other countries, for which you will need to pay only a fee.
4. There is a simplified scheme for renewing or making changes to registration. It lies in the fact that the statement is the same for different actions.
5. The term of consideration of this type of registration is about eighteen months.

How is it produced?

Let us consider briefly what is the procedure for registering a trademark in Russia.

1. The application is submitted to the WIPO IB through the Patent Office of Russia.
2. Depending on the countries for which registration is required, the document is submitted in the form of a basic or national application.
3. After receiving it, an examination is carried out onthe subject of whether the goods comply with the International Classification, registration events are made, and the certificate is sent to the owner.
4. Further, the relevant documents are transmitted to the national departments of the countries for which it was applied for, and there they are already conducting their own examination for compliance with national legislation.
5. After that, a decision is made to grant registration or to refuse it.
6. If the decision is negative, the WIPO IB contributesnecessary records of failures and sends them to the owner. If there is no response from the Departmental country in the term indicated in the document, the international registration is recognized as valid.
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