How to register a trademark

2024 Author: Malcolm Clapton | [email protected]. Last modified: 2023-12-17 03:44

The procedure will take an average of one and a half years and will cost at least 33 thousand rubles.

What is a trademark and why is it needed

A trademark is a designation that allows you to almost accurately distinguish the products of a particular manufacturer from analogues. For example, if you see a rounded check mark, you know without additional words that it is Nike. And the lily with three stripes is definitely Adidas.

A trademark helps to distinguish products on the market, associate them with a specific manufacturer, attract the attention of consumers and more.

Oksana Gruzdeva Lawyer at the Guardium Patent Law Office

Registration of designations as a trademark allows you to protect products from counterfeiting, import of counterfeit products, use them for business development, for example, when selling franchises.

To indicate that the trademark has a copyright holder, R or ® is placed next to it. You can also write “trademark” or “registered trademark” next to it.

What to do before registering a trademark

Please note that only an entrepreneur or legal entity can register a trademark. Therefore, it might be worth starting by legalizing your business. If everything is in order with this, you need to do some preparatory work.

Decide how you want your trademark to appear

It can be verbal (just a name), pictorial, voluminous (original packaging, product shape), combined (for example, a word and an image).

Think over all the little things, since a trademark is protected by law to the extent that it is registered.

Anastasia Pustovit Managing Partner of ANP Law Firm and Intellectual Property Specialist

If you register a graphic trademark, and then decide to radically change its design, then the new version will no longer be protected - the rights to it will have to be reissued. This rule does not apply to minor adjustments, such as small changes to font and colors.

Check trademark for plagiarism and legal compliance

There are several restrictions that will prevent you from registering a trademark. So, you cannot use:

• state symbols and signs;
• abbreviated or full names of international and intergovernmental organizations, their symbols and signs;
• official control, guarantee or assay marks, seals, awards and other elements of distinction;
• official names and images of especially valuable objects of cultural heritage;
• names of famous works, names of specific people, pseudonyms;
• generally accepted symbols and designations;
• elements of the designation of goods that have come into general use;
• characteristics of goods indicating their type, quality, quantity, property, purpose, value;
• information misleading the consumer;
• elements contrary to public interest, principles of humanity and morality;
• designations similar to the trademarks of others.

The last point raises the most questions. After all, in order to avoid mistakes, you need to check all already registered trademarks.

Anastasia Pustovit advises using paid databases or other paid services that have access to FIPS data for this. Lawyer Dmitry Zatsarinsky also recommends the following services and databases:

• «»;
• «»;
• .

Compare your trademark with others based on three types of similarities:

1. Phonetic. A trademark is similar to another by ear, for example, Dixie - Dixi - Dixy - "Dixie".
2. Graphic. A trademark is visually similar to another: in terms of the general visual impression, type of font, character of letters, their position in relation to each other, color or combination of shades.
3. Semantic. The trademark is similar to the other in meaning: the idea ("Melody of a dream" - "Music of a dream" or "Fragrant melody" - Aromatic Melody), the coincidence of the element on which the logical emphasis falls, the opposite of the concepts included in the name ("My family" - "Your family").

Keep in mind that Rospatent specialists may have a different opinion about the similarity of your trademark with existing ones. Therefore, be prepared to reject and promptly make edits to make the difference more noticeable.

Choose for which goods and services the trademark will be used

A trademark cannot be registered for all at once. You need to choose a list of goods and services, but not at random, but in accordance with the International Classification. There are 45 classes in it, you need to determine the right products and services for you. For example, you sew clothes - choose the 25th grade.

Where and how to submit documents

To register a trademark, you need to contact Rospatent. Documents can be submitted in several ways:

1. Electronic form through the Federal Institute of Industrial Property. From the pros: all correspondence is conducted electronically, state fees can be paid with a 30% discount. But the application will need to be signed with an electronic qualified signature, and to work with the service, it will be required that a crypto provider, the CryptoPro EDS Browser plug-in, a personal certificate and its certificate chain are installed on the computer.
2. In electronic form through "". Please note that you must be authorized as an individual entrepreneur or an employee of the organization, otherwise the functionality will not be available to you. The advantages are the same as when submitting documents through the FIPS, an enhanced qualified electronic signature will also be required.
3. In person at the office of Rospatent, located at the address: Moscow, Berezhkovskaya nab., 30, bldg. 1. Please note that the Office will send you notifications of registration by regular letters.
4. By mail. Send your correspondence to the address: Rospatent, Berezhkovskaya emb., 30, bldg. 1, Moscow, G-59, GSP-3, Russian Federation, 125993. If you want to get ahead of the competition, you can fax the documents to +7 (495) 531-63-18, but you still have to send the originals.

What documents are needed to register a trademark

To the application (filling in) for registration that you submit to Rospatent, you must attach:

1. Your trademark designation.
2. Free-form description of the designation. The main thing is to take into account all the nuances.
3. The list of goods and / or services for which you will use the trademark, in accordance with the International Classification of Goods and Services for the Registration of Marks.
4. consent to the processing of personal data.

If it is expected that the mark will be used by several persons, the charter of the collective mark must be attached to the application. It contains a list of persons entitled to use the mark, the purpose of its registration, terms of use, provisions on liability for violation of the charter.

How is the registration of a trademark going?

This process is slow and consists of several stages:

1. You are applying for trademark registration with Rospatent.
2. Rospatent publishes information about the submitted application in the official gazette.
3. Rospatent checks whether you have paid state fees (registration of the application and making a decision based on the results of examinations), and conducts a formal examination of the application: specialists check whether all the documents are available and whether they are filled out correctly. A month is allotted for a formal examination. If the agency has questions, you will be sent a notification asking for more information. You will have three months for this.
4. Rospatent conducts a detailed examination: it checks a trademark for similarity with existing ones and for compliance with legislative norms. If Rospatent employees consider that it is impossible to register a mark, they will send you an official notification and offer to present their arguments in this regard. You have six months to answer. Rospatent will consider your arguments no more than two months. If they do not convince the specialists, you will be officially denied registration of the trademark.
5. If the substantive examination was successful, you pay the state fee for registration and issuance of a trademark certificate.
6. Rospatent checks whether you have paid the state fee for registering a trademark and obtaining a certificate.
7. Rospatent registers a trademark, publishes information about it and issues a corresponding certificate. A month is given for registration, the same amount will be required for the issuance of a certificate.

Refusal to register a trademark can be challenged in the Chamber for Patent Disputes within four months from the date of sending you the corresponding decision.

According to lawyer Oksana Gruzdeva, most often they refuse because of similarities with other designations or trademarks of third parties and because of misleading about the product or its manufacturer.

How long does it take to register a trademark

Dmitry Zatsarinsky attorney

In total, the procedure takes 18 months and two weeks, but the time frame can be increased if errors or violations of the law are detected. The examination of the claimed image is the longest stage, it takes from 12 to 15 months.

However, a trademark can be registered within a year, but all documents must be completed ideally, duties must be paid on time, and the mark itself must be so unique that no one doubts its dissimilarity to the existing designations.

How much will it cost to register a trademark

You will have to pay several state fees:

1. For registration of an application and making a decision based on the results of a formal examination - 3,500 rubles. If the application contains more than five classes of MKTU, you will have to pay 1,000 rubles for each additional class.
2. For conducting an examination on the merits and making a decision on its results - 11,500 rubles. The state duty includes only one class of the MKTU, for each additional one you need to pay 2,500 rubles.
3. For registration of a trademark - 16,000 rubles plus 1,000 rubles for each of the classes of the ICGT for which registration is requested, if there are more than five of them.
4. For the issuance of a certificate for a trademark - 2,000 rubles.

The minimum costs are estimated at 33 thousand rubles.

Fees for registration of the application and the passage of the examination are paid in a lump sum before or after the filing of the application in two different payments; for the registration and issuance of a trademark - if a positive response is received based on the results of the substantive examination.

Anastasia Pustovit Managing Partner of ANP Law Firm and Intellectual Property Specialist

In addition, if you made a mistake at some stage or want to challenge the refusal to register a trademark, additional expenses will be required.

It is possible to make changes and amendments to the application and the submitted documents by paying 4,900 rubles, and to correct an already registered mark - 2,050 rubles. It will be possible to appeal the refusal for 13,500 rubles.

Dmitry Zatsarinsky attorney

What to do after submitting documents

Track correspondence from Rospatent

This will help you to respond promptly to notifications from the department and provide clarifying documents.

Pay state fees on time

If it turns out that the state fee has not been paid, the process will be suspended.

What to do after obtaining a trademark certificate

You can place a trademark on goods, service names, advertisements, documentation, domain name and so on, transfer the right to use the mark to someone.

The exclusive right to a trademark is valid for 10 years from the date of filing an application for state registration and can subsequently be renewed at the request of the rightholder an unlimited number of times.

Oksana Gruzdeva Lawyer at the Guardium Patent Law Office

If you will not use a trademark for more than three years, your right to it may be challenged by persons interested in the same trademark.