How to save money when registering a trademark

A trademark, also known as a trademark or brand, is words or images registered with Rospatent. The names of companies and individual products, slogans and logos are registered as trademarks. This is necessary in order to secure the sole right to use the brand in business. A registered trademark is valid, Civil Code of the Russian Federation, Article 1491. The period of validity of the exclusive right to a trademark is 10 years throughout the country.

If someone uses your trademark or a similar designation without permission, then they are an infringer, regardless of whether they know about it or not. In such a situation, the Civil Code of the Russian Federation can be charged Article 1515. Liability for illegal use of a trademark from the offender, compensation, force him to withdraw from circulation and destroy counterfeit goods, remove the mark from all advertising and even change the name of the company. In addition to protecting the brand, the trademark gives the right to sell franchises, use the ® label and display goods on the windows of giant aggregators like Wildberries or Lamoda.

With all the advantages that a trademark gives, entrepreneurs often postpone registration until later. And they return to this question when problems arise: a claim comes from the copyright holder, the shopping center does not allow hanging a sign without a certificate, or the franchise buyer refuses to buy an unregistered brand. It may turn out that the name under which the entrepreneur works has long been registered by another company. Then a conscientious entrepreneur suddenly becomes a violator and receives a subpoena, where he becomes a defendant in the case of illegal use of someone else's trademark.

Over the past three years, more than a thousand trademarks have passed through me, and more than half of them were registered by start-up entrepreneurs and small companies. In my experience, one of the main reasons for endless delays is the cost of registration. On average, it is about 50-70 thousand rubles, of which one half is spent on state fees, and the other - to pay for the services of a specialized lawyer. The entrepreneur thinks that it is better to spend this money on more "hot" issues: the purchase of products, salaries of employees or rent. But working without a trademark in the end is often much more expensive than registering it.

Therefore, I would advise you to think about registering a sign, even if you are a small startup in a garage, and in order to pull its cost, try to save money. Here's how to do it.

1. Register the name and logo in one application

Some lawyers suggest registering the name and logo in separate applications. The fact is that a trademark is an intangible asset, it can be valued and put on the company's balance sheet. Two trademarks will make a company more valuable than one.

In fact, only relatively large companies are interested in capitalization. Aspiring entrepreneurs and small businesses find it more profitable to register the name and logo together in one application. Thus, you can not pay for the registration of two elements and fit everything into one combined sign. This will help save 50-60 thousand rubles.

Opponents of the combined signs believe that they protect the copyright holder worse: if a competitor borrows only the name and draws its own logo, then the court may not recognize the violation. But the fact is that the court's decision in a particular case depends on a number of other circumstances and the judge's opinion: there is no law or clear-cut judicial practice on this issue. Therefore, although two signs are better than one, but for a young company this is an excessive prudence, the price of which will be higher than the value.

In my opinion, if a lawyer persuades to register two marks, but you do not understand why you personally need it, then it is better to save money.

2. Register a mark with one spelling variant

If you use a name in Latin and Cyrillic, a lawyer may suggest registering a separate trademark for each spelling variant. As in the situation with graphics and title, by and large it only makes sense before going public or for increased protection of the company's brand. For a small business, the benefits of such an action will be questionable.

The fact is that Rospatent and the courts compare trademarks not only in writing, but also in sound and even in meaning. For example, if you register the “Flower” trademark for children's centers, then no one will be able to use the name Cvetok or “Color'ok” for such organizations, because they sound too much like yours, even if they are spelled differently. Even the registration of the word Flower will be a very big question.

Accordingly, if someone uses such names without registration, he will violate your rights. Through the court, you will be able to recover the Civil Code of the Russian Federation Article 1515. Liability for illegal use of a trademark from the offender compensation up to 5 million rubles. In fact, such an amount is rarely collected in full, but 500-700 thousand is a common situation. For example, in one of the cases, the salon Decision of February 1, 2016 in case No. A45-15826 / 2015 "Manicure in 4 hands" was ordered to pay 600,000 rubles to the copyright holder of the 4hands trademark: the similarities between the names were found in the translation.

3. Apply electronically

To register a trademark, you need to pay a fee for consideration of the application, examination and registration of the mark. The amount of the fee depends on how many types of activities the trademark is valid for. The exact amount can be calculated using the FIPS calculator. If the application is on paper, on average, all fees in total will cost about 33-35 thousand rubles.

Since 2017, a new Regulation on Patent Fees has been in effect. It provides a 30% discount for those who apply electronically. Thus, the duty of 35 thousand is reduced to 22-23 thousand: the savings are 12-13 thousand rubles.

In order to apply this privilege, an application for registration of a trademark must be submitted through the “Registrar” software module in the personal account on the Rospatent website with certification with an electronic digital signature. Typically, trademark lawyers and patent attorneys have access to this service.

4. Get an installment plan

The cost of registering a mark consists of the fee and the services of a lawyer. All this can be divided into several payments - you get a kind of installment plan.

The fee consists of three parts: for filing an application, conducting an examination and registering a mark. If you register a trademark with the use of benefits and only for one type of activity, then these fees will amount to 2,450 rubles, 8,050 rubles and 11,200 rubles.

With the maximum installment plan, the payment of the fee looks like this: 2,450 rubles before filing the application, 8,050 rubles in two months for the examination and 11,200 rubles in six months for registering the mark. This scheme is usually used by start-up entrepreneurs who need to open a point in a shopping center or place a product in a large online store. Without a priority trademark certificate, they are not allowed to start work, but at the same time they do not yet know whether the business will take off or not, so they want to stretch payments as much as possible.

Lawyers can also meet halfway and split the payment into several parts. Usually they are divided into two: the first half when concluding a contract, the second after submitting an application and receiving a priority certificate.

5. Ask for a discount

A sore spot for trademark lawyers is clients who constantly leave to "think". The reasons are different: there is no time, the director is on vacation, the accountant is on a business trip. Even if everything grows together, the signing of the contract is delayed for two or three weeks.

If you promise to sign the contract today and pay in exchange for a discount, it is quite possible to gain 3-4 thousand rubles. The lawyer understands that he will earn more for the time saved.

6. Register yourself

In theory, an entrepreneur can register a trademark himself. For this you need:

Download a sample application on the FIPS official website.
Fill it out in accordance with the requirements for the application.
Make a list of goods and services according to the current classes of the MKTU.
Calculate the fees for registering a mark.
Submit a mark for registration in accordance with the filing rules.
When requests come from FIPS, respond to them, relying on the registration guide.

At first glance, it seems that this is no more difficult than registering an individual entrepreneur or LLC: a technical procedure that you can carry out yourself if you sit for a couple of evenings on the Internet. In fact, there are many subjective concepts in the registration of trademarks that can be learned to interpret correctly only after appropriate training and several years of daily work with marks. Otherwise, it is possible to disagree with Rospatent and receive a refusal to register or inadvertently violate someone else's rights to a mark.

Many pitfalls lie in the details: in checking a trademark, similarities between marks, calculating duties, selecting classes according to the International Classification of Goods and Services. If you make a mistake, then you will be denied registration, the fee will not be returned, and the application will "burn out". This means that at this time another entrepreneur can register such a mark if his lawyers do everything right.

In general, you can register a trademark yourself, but for this you first need to become a trademark lawyer yourself. If you want to save money without sacrificing the result, I would suggest using the first five methods from this article, you can do everything at once: