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A registered trademark is a guarantee that your brand is protected by law. But to apply for registration, it is necessary to spend a lot of effort, time and money. If Rospatent discovers that similar brands already exist, it will return the application: time and money will be wasted. To prevent this from happening, before submitting documents for registration, check the uniqueness of your trademark.
Why check a trademark before registering it?
A trademark (sometimes in the text we will shorten this phrase to TK) is part of your brand. If a company’s logo or name is registered as a trademark, it receives government protection. No one may use this designation without the owner’s knowledge.
A trademark can be a logo, a slogan, a company name, anything that distinguishes your brand from others. Sberbank has even registered its characteristic green shade. You can get protection for packaging, musical jingle. Or your last name, if it’s weird enough.
To obtain a trademark it is not necessary to be an individual entrepreneur or legal entity. Starting June 29, 2023, self-employed workers will also be able to do so. So, if you bake cakes at home, do tutoring or give, for example, marketing consultations, you can register your last name, the name of a group or a social media account as TK.
The trademark is registered by Rospatent, the Federal Service for Intellectual Property. There you submit an application to obtain the protection of the designation. To register, you need to pay various state fees: in total about 30 thousand rubles.
The application undergoes two examinations. During one of them (substantive examination), Rospatent specialists check whether there are similar marks between already registered trademarks or previously submitted applications for registration. If this turns out to be the case, the documents will be returned to you. It will not be possible to register a trademark and the money paid for the state fee will be lost.
To prevent this from happening, before submitting your application to Rospatent, check the trademark you want to register yourself.
Checking a trademark before registration
How to check a brand yourself
A trademark must have two properties: uniqueness and protectability.
Uniqueness means that nothing like it has ever been recorded before. There are no names, images, sounds, etc. Similar. – depending on the type of technical specification you are registering.
“Uniqueness” is a characteristic of a registered trademark, prescribed by law. But lawyers use the phrase “confusing similarity” to denote this concept. That is, can this brand be confused (mixed) with another?
The mix can be phonetic, graphic and semantic. Because of this, some brands, although seemingly different, may be similar. For example, you are unlikely to receive protection for the name “Puma” if you produce sportswear; After all, there is an internationally renowned PUMA brand occupying the same market niche.
Checklist for trademark verification before registration
Protectability, or distinctiveness, are the striking characteristics that distinguish your designation from most others. This is what characterizes it as something unique.
Advice. Before applying for a trademark, Google its designation. Perhaps there is a company in the market that is already using it and consumers have begun to associate the product or service with it. In this case, registration will be denied for misleading the consumer.
The following cannot be registered as trademarks:
generally accepted words and terms (“Clothing” for a clothing store); words that characterize the product, indicate its type, quality, quantity, etc. (“Ten eggs”); state symbols and signs, for example, coats of arms, flags; names of international and intergovernmental organizations, their coats of arms, flags and other symbols and signs (“UN”, “UNICEF”); words and designations that are contrary to the public interest (for example, the name of the drink “Poison”, the expression “Yoshkin cat”); words and designations that may mislead consumers (for example, “Georgian wine” for a drink produced in Crimea); popular surnames.
Security is a fairly complex concept. Only a specialist, a patent lawyer who deals with trademark registration, can say for sure whether your trademark has this characteristic or not. He can also advise on how to change a trademark if it suddenly turns out that the designation is not distinctive.
Every rule has its exceptions. Guardian patent attorneys can demonstrate distinctiveness before Rospatent, the Patent Disputes Chamber and the Intellectual Property Rights Tribunal.
What services can be used to verify a trademark?
If only lawyers can help with protectability, then you can check the uniqueness of the trademark yourself. There are several services on RuNet that will help you do this. They work on the same principle: you enter the name of the technical task you want to register in the search bar and the algorithms search for something similar in the database. If there is something similar, the service will show it.
The services are differentiated by their functionality and comfort. Some of them are paid, others are completely free. They often search several databases at once: not only Russian, but also international trademarks, domain names and registration applications.
To check a brand as accurately as possible, it is necessary to determine the ICGS class. This is the International Classification of Goods and Services, which contains 45 classes. For example, ICGS 20 – “Furniture, mirrors, picture frames; non-metallic containers for storage or transport; horn, bone, whalebone or mother-of-pearl, raw or partially worked; shells; meerschaum; amber.” In your trademark registration application, you will need to tell the ICGS (or several) in which area you plan to implement your technical specifications. Some services also offer you to enter the ICGS; This way, the signals you are interested in will be found faster and more accurately.
Advice. Online searches can only be performed for word marks. If you want to register a logo or a combined trademark, it is better to contact specialists.
The most common databases to search:
1. FIPS (Federal Institute of Industrial Property) information retrieval system.
It is this department that maintains records of all intellectual property in Russia. You can look up a trademark on the FIPS website using four databases:
But searching on the FIPS website is almost entirely paid: only a portion of the entire trademark database is available for free. To check the technical specifications in the entire database, you need to pay 300 rubles for a search of five queries. It may not seem like much, but it typically takes more than five applications to verify a designation.
To conduct a free search, you must fill out a form on the FIPS website. This form allows you to check the brand as specifically as possible. There is no need to fill out all 27 fields – you can enter the name of the designation in the “Main Application Area”, mark the classes of interest for ICLG and study the result.
In the form, you can choose what type of search you want to perform: logical or fuzzy. For example, enter the phrase “red poodle” in the “Primary Query Area” field. During a logical search, these two words will be connected using the AND operator and the system will search for brands whose names contain both words. During a fuzzy search, the words in the field are automatically connected using the OR operator; In the results you will see trademarks whose names contain the word “red” or the word “poodle.”
When performing a logical search, you can use other operators: for example, “red NOT poodle”; The system will then look for trademarks that have the word “red” in their names, but not “poodle.”
2. Service from the company “Gardium”
The service takes data from Rospatent’s official registry of trademarks and registered applications, from domain name registrars and from the Unified State Register of Legal Entities. If you do not know which ICGS class is best to enter, please indicate your taxpayer identification number and type of activity; Depending on your OKVED, the service will select the classes itself.
Gardium’s service is also easy to use. Evaluates registry risks and makes recommendations on how to improve the application.
3. Brand Search
The service compares the designation with the international and Russian trademark databases, the domain name registry (in the RU, SU and RF zones) and the database of legal entities – about 8 million records in total. Brand databases are updated every 24 hours.
The service is very easy to use: you just need to enter the required word or phrase in the search bar, indicate the ICGS class and click the “Check” button. The site ranks the search results: showing the most similar symbols at the top and assessing the risk of registration denial.
FIPSBrand search”Gardium”ConveniencemediumhighhighRelevancecurrentcurrentcurrentcurrentData volume fullfullHow much does it costfrom 300 rublesfreefree?
What to do if it turns out that there are similar signs.
According to Gardium statistics, most trademarks that customers want to register require modifications. Or they are similar to the designations that already exist, that is, they do not correspond to the uniqueness parameter (confusingly similar). Or they do not have distinctive character (protectability).
If you yourself checked your trademark on any of the listed services and found that similar trademarks already exist, this does not mean that you cannot register. Of course, you can change the name, but this is only possible if you do not incur financial and reputational costs. That is, if you are just starting your business and your company is not known in the market.
If you don’t want to change the name, there are options:
1. Send a letter of consent for registration to the copyright holder of a similar trademark.
If the existence of two marks does not mislead the consumer, the copyright holder of a similar mark may be requested to give permission for its registration. Consent is obtained for a fee or free of charge, as agreed.
The fact is that even if the designations have the same ICGS classes, you and the copyright holder of the technical specifications may have different audiences and therefore not be competitors.
After receiving a letter of consent, you must send the documents for registering a trademark to Rospatent, receive notification of the results of the examination, and then, if necessary, send a response justifying your position and a letter of consent. After this, Rospatent will issue a positive conclusion. If there are doubts about the similarity of the marks, then the opposite can be done: initially submit the documents and request the letter of consent after receiving notification of the results of verification of conformity of the declared designation. You will be given time to respond to this notice. And if you manage to obtain a letter of consent from the copyright holder, you will have the opportunity to submit it to the registration authority.
2. Finalize title with a patent attorney.
For example, you can create a combination brand, that is, add a graphic image.
Gardium specialists helped a well-known blogger, whose last name is among the 500 most common in Russia, to obtain technical specifications; Rospatent would not have registered it as a trademark. Guardian’s lawyers suggested that the blogger receive a combined technical specification: a logo and a name together. This option turned out to work.
3. Accredit the distinctiveness before the Patent Court of First Instance and/or the Intellectual Property Court.
In this case, of course, you will need a lawyer, preferably one who has experience in this area. Choose a specialist carefully, be sure to check if he is registered in the Register of Patent Attorneys Accredited by Rospatent.
Advice. When choosing a patent attorney, ask them not the number of applications they have filed, but how many of them have been successful. Unfortunately, some lawyers behave in bad faith and simply make money by sending many client requests to Rospatent, without caring that the technical assignment is actually registered.
Watch the video and learn how to protect yourself against a complex name change and trademark registration. Proof strategies in guardian attorney cases
With a patent attorney, you can register a trademark that at first glance cannot be protected:
state symbols, names of international and intergovernmental organizations can be included in a trademark with the permission of authorized bodies; lines from songs and books, names of literary characters can be included in a trademark if permission is obtained from the copyright owner; distinctive character of the brands can be seen in the name which are the generally accepted words and terms, etc.
Why you should contact a patent attorney
Unfortunately, a brand’s self-test services do not provide one hundred percent results. But with its help, you can carry out a preliminary check: evaluate the risks and get acquainted with the wide field of Russian brands.
To perform an accurate verification, you need a patent attorney; the most complete databases are closed and, to use them, it is necessary to understand the peculiarities of the legislation of the Russian Federation and legal practice.
Everything that distinguishes a brand in the market can be registered as a trademark: logo, name, color, packaging shape, musical jingle and even the smell. But free services allow you to check only verbal symbols. Many trademarks are combined: they combine both a verbal designation and a graphic designation, or color and graphics; This is also impossible to verify in online services.
A patent attorney will give you recommendations on how to finalize a trademark to be registered by Rospatent. Gardium specialists have extensive and varied experience in this area. The company’s specialists have state registration and a voluminous portfolio of successful cases.
