Register your trademark if you do something or your successful business with a unique style. This applies to any companies and IP. About what can and what can not be registered as a trademark - in our article.
Step 1. Check your trademark on uniqueness.
Cost: from 4 130 € to 49,440 ₽ in one class of ICTU Time: from 1 to 15 days
If there is already a trademark with your title, it does not mean that you can not use it. Check for how classes of international classification of goods and services (ICTU), it refers is indicated in the certificate of trademark. If someone registered Korobeyniki trademark for building materials, and you have food or office, you can use it. The main thing is that one trademark is not used for the same goods and types of business (Art. 1481 of the Civil Code of the Russian Federation).
Massandra company, which produces wines, sued the Massandra trading house for violation of exclusive rights to trademark No. 270653 - Company name. In the description of the trademark of the wine manufacturer, it is said that it is used for any alcohol, except beer. In an extract, the transportation house is said that he is leased. The court rejected the lawsuit because companies are engaged in various business.
Court decision number 83-1213 / 2018
It happens, goods and services need to be checked at once in several classes of ICTU. The fact is that some of the same type of goods are in different classes, for example, "Electrical Juicers" - Grade 7, and "Household Non-Electric Juices" - 21 classification classification. Before you check your trademark, decide on classes.
International classification of goods and services
There are three ways to check the trademark: with patent attorney, through the FIPS or independently.
Method 1. With patent attorney. Patent attorney can be found and check through the site of the Rospatent. The specialist will help properly prepare documents and check your trademark - as far as it is unique and does not violate the law. If the name of your trademark still coincides with the already registered, the patent attorney will help you change it.
We learned the prices and terms in several law firms. We promised to check the trademark on time from 1 to 15 days and asked for it from 7200 ₽. The price depends on how many classes of the ICTU you want to check the trademark.
Method 2. Through the FIPS. The Federal Institute of Industrial Property maintains official databases of intellectual property, including trademarks. Checking the trademark in the FIPS for one class of the ICTU will cost:
|Test term||Sliver trademark||Pictimated trademark||Combined (name + image)|
|For 20 days||4 130 ₽.||8 260 ₽.||12 390 ₽.|
|For 10 days||8 260 ₽.||16 520 ₽.||24 780 ₽|
|For 5 days||12 390 ₽.||24 780 ₽||37 170 ₽.|
|In 3 days||24 780 ₽||49 560 ₽||74 340 ₽.|
|For 1 day||49 560 ₽||99 120 ₽||148 680|
|For 20 days|
|4 130 ₽.|
|8 260 ₽.|
|Combined (name + image)|
|12 390 ₽.|
|For 10 days|
|8 260 ₽.|
|16 520 ₽.|
|Combined (name + image)|
|24 780 ₽|
|For 5 days|
|12 390 ₽.|
|24 780 ₽|
|Combined (name + image)|
|37 170 ₽.|
|In 3 days|
|24 780 ₽|
|49 560 ₽|
|Combined (name + image)|
|74 340 ₽.|
|For 1 day|
|49 560 ₽|
|99 120 ₽|
|Combined (name + image)|
Method 3. Alone. Sites of law firms propose to check the trademark check for free and instantly - it is worth only to drive a name in the search string. But so you only check out the already registered trademarks, and you need to take into account applications.
Base applications for commercial signs paid - from 500 ₽.
When you make sure your trademark is free, there are two options:
- First, pay the state duty, and then fill out an application for commercial sign.
- First, fill out the application, and then pay the state duty.
We go to the first option.
Step 2. Pay state duty for checking documents
Cost: from 10 500 ₽. If you provide an application via the Internet, the duty will cost you 30% cheaper (paragraph 7 of the Patent and Other Fees). Time: 1 day
|For what||Fixed amount||When submitting an electronic application||For each additional class of the ICTU||Point of Positions on Fees|
|Reception of applications||3500||2 450 ₽||1000 ₽ if in a statement more than five classes of ICTU||2.1|
|Expertise||11 500 ₽.||8 050₽||2500 ₽ if in a statement more than one class of the ICTU||2.4.|
|Reception of applications|
|When submitting an electronic application|
|2 450 ₽|
|For each additional class of the ICTU|
|1000 ₽ if in a statement more than five classes of ICTU|
|Point of Positions on Fees|
|11 500 ₽.|
|When submitting an electronic application|
|8 050 ₽.|
|For each additional class of the ICTU|
|2500 ₽ if in a statement more than one class of the ICTU|
|Point of Positions on Fees|
You can get a receipt in a bank or form on the Rospatent website.
In the "Type of Object" field, indicate the "Application for a trademark" or "Examination of an application for a trademark". In the "Object Number" field, specify a brief description of the trademark and company name, and if you have already filed a statement - the application number that you have appropriated:
Click "Send". In the browser window, a completed application will appear - it can be printed and go to the bank:
Details for the payment of state duty
Step 3. Prepare Documents
Cost: up to 30 000 ₽ Time: 1 - 3 days
You need to submit to Rospatent:
- Application for commercial signage.
- Consent to the processing of personal data.
- A copy of a notarized power of attorney, if the application submits your assistant or attorney (Art. 185.1 of the Civil Code of the Russian Federation).
Documents can be submitted in paper or on the Internet: through public services or the site FIPS.
Download application application and consent to the processing of personal data
In the application, specify:
1. Address for correspondence. Specify your postal address or address of your representative - the Rospatent will send the results of the verification of documents. Do not forget to specify email and phone.
2. Information about the applicant:
- Familia, name and patronymic of an individual entrepreneur or the full name of the legal entity.
- The address in which an individual entrepreneur or company is registered.
- OGRNIP, INN and CAT for an individual entrepreneur or OGRN, INN and CAT for the company.
- The country code according to WIPO Standard St.3, for Russia - RU.
3. Information about the representative. If you submit documents through the representative, specify:
- surname, first name and patronymic of the representative;
- the address;
- Telephone, email address and fax.
Mark who your representative. If you are a patent attorney, specify its registration number:
4. Image and description of the trademark. In the square below code 540 Insert the image or name you want to register as a trademark. It must be exactly the way you want to register and use it. If the image is color, you can not add a black and white pattern. It should be in that color, in what you want to register it.
You can insert a picture on the computer or glue a photo, typographic print. If the image is pasted, it should be on dense paper with a size of 8 × 8 centimeters.
In the description, specify:
- Type of trademark - verbal, vector image or combined;
- If the name is rarely used in Russian or this term is its explanation;
- If the name in a foreign language is its transliteration and translation, if there is;
- If the name does not matter - the method of its formation (abbreviation, fictional word, initial syllables of words);
- If the image is abstract - its semantic value;
- Semantic value of all image elements.
If the trademark is color - in the 591 field list it:
5. List of goods and services. In the application, specify the number of the ICTU class and the name of the goods and services that correspond to it:
6. Trademark priority by date. Here check the box next to the item under the code 320. The remaining items concern international registration, exhibitions and the case when you allocate another application. We will write a separate article about it.
Skip the next point - he is about the same case when you allocate another application. Go directly to the state duty.
7. Payment of state duty. Put the checkboxes in paragraph 2.1 (for receiving the application) and 2.4 (for examination). Specify the payer.
8. List of documents. Check the checkboxes next to the documents you apply to the application:
9. Applications. Applications can be two:
1. The image of a trademark is a mandatory application. It should be exactly the same as in the application. If you feed the documents on paper, print it to the entire sheet. If you give documents via the Internet, the image must be:
- in TIF or Doc format;
- without compression, no more than 5 MB;
- with a resolution of at least 300 dpi;
- on an opaque background.
It turns out that the image of a trademark is served in two copies: one thing - in the application, the second is in the appendix to this application.
2. Continuation of the list of goods and services. If you register a trademark for several ICTU classes and the application did not have enough space to list them, continue in the application.
If you feed documents on paper, sign an application from hand if you send on the Internet - put an electronic signature.
Step 4. Submit documents to Rospatent
Cost: 0 ₽. Time: 1 day
There are five ways to submit documents:
- Send through state services.
- Send via FIPS website.
- Attributed to the office of Rospatent: Moscow, Berezhkovskaya Nab., D. 30, Corp. one.
- Send by mail: Rospatent, Berezhkovskaya Nab., 30, Corp. 1, Moscow, Mr., GSP-3, 125993.
- Submit by fax: +7 495 531-63-18.
If you submit documents via the Internet, put an electronic signature on them.
Step 5. Wait for Rospatent
Cost: 0 ₽. Time: up to 13.5 months
|How much wait, maximum||What will check||How to find out the result|
|Two weeks||That you paid the state duty||If you have not paid for state duty, you will send a notice of this. Pay state duty needed within two months from the date of sending notice|
|+ Month from the end of the previous stage||The correctness of the paperwork: Rospatent may request additional materials. They must be sent within three months. If this is not done, your application is recognized with the withdrawn - you will have to collect and submit documents again||You will send one of the four decisions: - On acceptance of the application, - on refusal to accept the application, - about recognizing an application withdrawn, - on satisfaction of the application for recognizing the application withdrawn|
|+ 12 months from the end of the previous stage||Trademark itself: will conduct an examination of your trademark||You will send a decision on the registration of a trademark|
|How much wait, maximum|
|What will check|
|That you paid the state duty|
|How to find out the result|
|If you have not paid for state duty, you will send a notice of this. Pay state duty needed within two months from the date of sending notice|
|How much wait, maximum|
|+ Month from the end of the previous stage|
|What will check|
|The correctness of the paperwork: Rospatent may request additional materials. They must be sent within three months. If this is not done, your application is recognized with the withdrawn - you will have to collect and submit documents again|
|How to find out the result|
|You will send one of the four decisions: - On acceptance of the application, - on refusal to accept the application, - about recognizing an application withdrawn, - on satisfaction of the application for recognizing the application withdrawn|
|How much wait, maximum|
|+ 12 months from the end of the previous stage|
|What will check|
|Trademark itself: will conduct an examination of your trademark|
|How to find out the result|
|You will send a decision on registration of a trademark|
If you change your mind before the Rospatent registered your trademark, you can withdraw the application. To do this, apply.
Step 6. Pay the state duty for registration of a trademark
Cost: From 12 600 ₽ if you provide an application via the Internet, the duty will cost you 30% cheaper (paragraph 7 of the provisions on patent and other duties). Time: 1 day
|For what||Fixed amount||When submitting an electronic application||For each additional class of the ICTU||State duty provisions|
|Registration of a trademark||16 000 ₽||11 200 ₽||1000 ₽ if in a statement more than five classes of ICTU||2.11|
|Certificate for a trademark||2000 ₽.||1 400 ₽.||—||2.14.|
|Registration of a trademark|
|16 000 ₽|
|When submitting an electronic application|
|11 200 ₽|
|For each additional class of the ICTU|
|1000 ₽ if in a statement more than five classes of ICTU|
|State duty provisions|
|Certificate for a trademark|
|When submitting an electronic application|
|1 400 ₽.|
|For each additional class of the ICTU|
|State duty provisions|
How to fill the receipt
You can get a receipt in a bank or form on the reparter website.
In the field "Type of object" write "Registration of a trademark" or "Certificate for a trademark". In the "Object Room" field write the application number:
Details for the payment of state duty
Step 7. Get a certificate for a trademark - send it by mail
Cost: 0 ₽. Time: from 15 minutes to 6 days
You will be sent a certificate by registered mail - it goes to 6 days depending on the distance. If you do not want to wait, you can get a certificate personally in Rospatent in 15 minutes. Do not forget to take a passport with you (clause 6 of the order of Rospatent dated 24.07. 2018 No. 128).
On the registration of the trademark will take at least 30 000 ₽ and a maximum of 13 months
To register a trademark:
- Check it on uniqueness.
- Pay for state duty for checking the trademark.
- Fill out the application and send it to Rospatent.
- Wait for the answer.
- Pay the state duty for registration of a trademark.
- Get a certificate of registration of a trademark.
The registration of the trademark will take a maximum of 13 months. Usually everything happens faster - for 7-8 months.
On advertising rights
Vasily opens his business in Moscow. Registers a company in tax. Makes all according to the rules. But it receives a fine of 500 thousand rubles. For choosing a name similar to a brand from another city. Without working and years, immediately climbs into debts.
There are many such situations in the practice of our company. And every year the number grows. Therefore, let's understand what a trademark is and what comes logging in.
The trademark in the Civil Code of the Russian Federation is the designation with which other people distinguish your company from competitors. Slogan, logo, melody - all, thanks to which buyers will recognize you. Registration of a trademark is a guarantee that your branded name no one except you will use.
Guarantees that comes in coming sign
The most important thing is that the company receives when registering a trademark is a security guarantee for its money. Each entrepreneur puts funds to the promotion of his brand. Pays advertising, promotion in search engines and social networks, develops packaging and orders advertising materials in printing house. The brand becomes recognizable.
If the brand is not registered, anyone can register a trademark on itself. And we are not only about competitors and firms from other regions. There are so-called patent trolls: these are people who are looking for unregistered brands, register them on themselves and demand from business owners money for the ability to continue to use a trademark - their own name.
IP Olenin Egor Nikolaevich registered a brand "Siger". Rospatent approved the registration of the trademark, and Olenin appealed to the court demanding to recover 5 million rubles. With the Chinese company "UNIDENT" - the only Russian representative of the dental giant Zhuhai Siger Medical Equipment CO, which has long and conscientiously uses its name, but did not register a trademark in Russia.
The court of first instance did not take into account the arguments of the defendant and recognized the Olenina right: the representative of Zhuhai Siger Medical Equipment Co. obliged to pay 500 thousand rubles. In favor of the plaintiff.
The representative of the Chinese manufacturer and the manufacturer himself challenged the lawsuit. They managed to prove that Olenin registered the brand only to prevent their activities. At the time of filing the application for the registration of the trademark of Olenin, he knew that the market of medical goods and services operates and the brand "Siger" and the manufacturer of Zhuhai Siger Medical Equipment Co. operates and is widely known.
The purpose of Olenin was not the individualization of its goods, but the presentation of claims in court. Therefore, the appellate court canceled the first decision. Pay a fine of 500 thousand rubles. Chinese brand this time did not have to.
Companies that have registered a brand can be confident that no one will make them change their name tomorrow. No one presents claims to 5 million rubles. No one can produce the same products under their brand. You can safely invest money in brand promotion.
Registration of a trademark gives a number of advantages:
- The company's profit is growing when the brand becomes recognizable;
- She can receive royalty from the use of a trademark under license;
- can sell franchise;
- Through the court may receive compensation from violators (believe me, they will be found over time);
- There is an opportunity to start working with large networks: "Auchan", "Lamody" and the like;
- The brand can be made by an intangible asset of the company, it will increase its cost.
By law, the trademark is not necessary. But without registration, business owners cannot be confident that the brand will belong to them and tomorrow and that all the money invested in the promotion and promotion will not go to competitors or patent trolls.
Factory "Red October" produces chocolate "Alenka". The factory "Slavyanka" introduced the chocolate "Alina" chocolate, the packaging of which was very similar to "Alenka".
"Red October" appealed to the court to recover from "Slavs" 313.5 million rubles. Compensation for using a trademark. As a result, the company came to the settlement agreement: "Slavyanka" paid 20 million rubles. And stopped the release of chocolate under the brand "Alina".
Trademark, brand, trademark - Is there a difference?
Brand is how consumers know your company. In the tax you can be registered as you like: LLC "Kolosok", IP Vasilyev, but produce products under a different name. This name is your brand name.
If you registered on the documents to the tax name "Kolosok", this does not guarantee that the name is enshrined for you and other firms cannot use it. The name of the legal entity can use any. In Russia, there may be 1000 companies in Kolosok LLC, but only the one who registered this name as a trademark is safely entitled to produce products under such name.
One legal entity can have any brands. For example, if "Kolosok" LLC produces the milk "cow", sour cream "Burenka" and goat cottage cheese, each brand needs to be registered separately. But Jurliso can remain one.
The trademark and trademark differ only in the fact that the trademark (TradeMark) is the name accepted abroad, and the trademark is a law term in Russia. That is, in fact there is no difference, but in Russia it is correct to say "trademark".
Designations of registered intellectual property:
© - Registered Copyright Object: Song, Text Book, Computer Program, Article on the site, drawing, photo - anything created by the author or team of authors. The author does not have to be a legal entity. You created a work: wrote quatrains or made sketches of a picture on a napkin - this is an object of your copyright.
® - registered trademark: logo, slogan, smell, name, packaging form - anything, thanks to which users find out your products and distinguish it from competitors' products.
™ - Brand. The same as a trademark, only abroad: in the USA, Great Britain, the EU and other countries. If you register a brand abroad, you will have a brand. In Russia - a trademark.
Types of trademarks
The company can register any information by which users distinguish it from competitors. Modes of trademarks Seven:
Sliver trademark - This is the name. It can be written using or without branded font. Even if you register your brand written by branded font, another company will not be able to register it by writing another color or letters of another form.
Pictimated trademark - These are company emblems. Images for which you will know. If you have registered an image as a trademark, no one can place it on its products.
Combined trademark - This is usually logos. Images with letters. A good option for those who always use the name together with the emblem. You can register a combined sign and save on a separate registration of the visual and verbal trademark.
Volumetric trademark Most often - packaging. Companies that have come up with a unique design for packaging their products register it that competitors cannot release products in boxes, bottles and bottles of the same form.
Color trademark: If the firm has developed a unique color for its products, it can also be registered.
Tangible trademark Registered firms that produce products for the blind and write the name and slogan in the braille font.
Sound trademark - These are any melodies for which buyers recognize the brand.
If you have registered your trademark, another company has no right to use the same name or similar.
Name as a trademark
If you are promoting your personal brand, you can register your name as a trademark. Then no one can carry out entrepreneurial activities under the same name. That is, if people are called the name of you, they will continue to live under their own name. But to provide services in the direction in which you already work, you will have to take a pseudonym.
For example, a psychologist registers its name "Galina Ivanova" as a trademark. Since then, all the other Galina Ivanov can live with this name, even to work by hired psychologists. But they will not be able to conduct private practice or blog on social networks as psychologists, because they will receive a fine up to 5 million rubles. from the copyright holder.
Olga Seriabkin, Philip Kirkorov, Nikolay Baskov, Oleg Miami and many other celebrities registered their names. Also, if you look at the issuance of Rospatent, there is a large number of registered names of lawyers, designers, coaching and other specialists who develop a personal brand.
Today, every specialist who plans to do is, before starting work, it is worth checking if his name is free. Because if someone has already registered his name as a brand - a specialist will get a fine up to 5 million rubles, when it starts to use it for business activities.
All clear! What is needed to register a trademark?
The instruction is simple. Let's start with formalities. All major legal aspects that relate to the patenting of intellectual property in Russia are described in the Civil Code of the Russian Federation. All registered objects are stored in the Intellectual Property Register. Everyone can check whether his symbolism is free.
Register the trademark on itself can only Jurlso or an individual entrepreneur. Self-employed, not issued by IP, or individuals register a trademark cannot. Perhaps in 2021 this rule will be canceled and individuals will also be able to become copyright holders of intellectual property. But while it is not for sure.
The only exception for 2020 is: if self-employed does not pay insurance premiums for itself, but IP on the NAP opened. Then he can register a trademark.
Trademarks are registered in certain classes of international classification of goods and services (ICTU). There are 45 classes for different activities. If you register the brand "Natasha" in the 25th grade (this is clothing), more brands of clothing with the name "Natashenka" will not be. But companies that work with goods or services in other classes (tissues, baby food, toys) can open a company with the same name and register a brand in its class.
TNT television company in Moscow could not register the trademark "Univer" in relation to food. It turned out that the other company has long been working under this brand: produces canned food in Volgograd. Their brand is registered.
In the end, TNT could not prove the possibility of protecting the brand "university" and produce foods under this name.
Exception - well-known signs. If the brand is recognizable everywhere, the firm may apply for the registration of a well-known trademark. If Rospatent recognize that the brand is known to a large number of people across the country - he is recognized as well-known and no longer any company in any class can use the same name.
How to register the brand?
Companies can register a trademark independently or contact the patent attorney.
Patent attorneys are lawyers who specialize in issues related to intellectual property. To become a patent attorney, you need:
- have higher education;
- have a minimum of 4 years of practice related to the registration of intellectual property: to be in the position of the workman or a lawyer on IP without the status of the attorney;
- Pass the exam and confirm the qualifications in Rospatent.
Thus, patent attorneys are specialists who are better than any other lawyer understand the registration of trademarks, inventions, useful models and other types of intellectual property. Understand, by what algorithms, Rospatent specialists make a decision on registration and which strategy to choose to register a brand or challenge the refusal to register a trademark.
Each attorney is assigned its number. Check if the lawyer is a patent attorney, you can on the website of the Rospatent.
The signage of the sign lasts about a year from the moment the application is submitted to Rospatent. Trademark registration algorithm:
Check your trademark
on uniqueness for free.
Get a report for 15 minutesFill out the application
Before submitting an application, you check the trademark on Rospatent registries. It happens to check for already registered signs and by those that are only filed. If you came up with a new word for the name of your company, there is no such word, it is possible to do with the check on the already registered signs. But if you use ordinary words, not fictional, it is better to order a complete check in patent attorneys.
Selection of ICTU classes.
As a rule, for each business requires registration of a trademark in several classes. For example, shops need to register a brand in all classes of products that they trade. Products for sewing, food products and many others are also separated in several classes - you will have to register in all. If you still do not carry out some kind of activity, but you plan to register this class of ICT in advance.
Payment of the first part of the state duty.
3500 rub. For accounting for registration of a trademark in grades. For each additional class + 1000 rubles.
11 500 rubles. For examination, which will show if you can register your trademark in one class. For each additional class + 2500 rubles.
Applying for a trademark in electronic form will cost 30% cheaper than a written application. But to get a discount, you will have to make an electronic qualified signature on the FIPS portal (ECP).
On the day, when you submit an application for registration of a trademark, you will have the right to priority. That is, if tomorrow another company will apply for the registration of the same brand - they will refuse them.
Specialists of the Rospatent check the sign on identity and similarity with other brands that sent the application earlier than you, and with registered trademarks. The procedure lasts about a year. You can speed up, register a sign for 1-2 months from the date of application. The cost of the service acceleration check for 2020 - 94 400 rubles. For verbal designation. If the Rospatent finds similar signs - the money will not return.
Payment of the second part of the state duty.
16 thousand rubles. It is paid if the Rospatent approved you registration. The price includes registration of a sign in grade 5. For each additional class + 1000 rubles.
Registration of your trademark by Rospatent: For the issuance of a certificate of registration, 4,000 rubles must be paid.
If there are no similar brands during the inspection, the trademark independently register is quite real. The main thing is to correctly determine all the ICTU classes for your type of activity, fill out the documents and pay the state duty.
It must be remembered that if you are submitting an application for registration of a trademark in 3 classes right away, it will cost one amount. And if the company first submitted an application for registration in two classes, and a month later I decided to register the brand in one thing - you will have to pay twice, since it is impossible to expand the classes. We will have to submit an application and pay for the procedure again:
Sign registration immediately in 3 classes
Registration of a sign in two classes, then in one
The first part of the state duty:
An additional class, which is registered separately:
11 500 rubles.
11 500 rubles.
11 500 rub.
Second part of the state duty:
An additional class, which is registered separately:
16 000 rubles.
16 000 rubles.
16 000 rubles.
Third part of the state duty:
An additional class, which is registered separately:
4 000 rub.
4 000 rub.
4 000 rub.
40 000 rubles.
72 500 rub.
If the Rospatent found brands similar to your degree of mixing, the application for a trademark will be rejected, and the money paid for state duty will not be returned.
As a rule, it is for such an aid to the company and appeal to patent attire:
- Carefully check the trademark before registration;
- help choose the desired classes and do not overpay the state duty;
- Completely fill out and send documents.
If a failure came, the patent attorney will try to challenge him. In the practice of our company there are many precedents when Rospatent's refusal turned into a certificate for a trademark. Alone, not knowing the regulatory framework of the Rospatent, it is almost impossible to challenge the refusal.
Real estate agency "Floors" owned by LLC "Floors" received a refusal to register a trademark. He opposed the registered brand "shopping center", belonging to LLC "Capital Nizhny".
Specialists of the company "Gardium" managed to prove that LLC "Floors" led the activities under the same brand before the "capital of Nizhny" filed an application for registration of a trademark. Prove the exclusive right to the trademark in court had to be more than a year.
The advantages of working with patent attorneys are obvious: he already has a connected ECP on the FIPS portal and the state duty will cost 30% cheaper.
Trademark check: paid and free
The main condition required to register a trademark is to be free and complies with the requirements of the law. Therefore, before applying, it is necessary to check whether the trademark is free. Immediately it is worth a reservation: the check does not give 100% guarantee that the brand is not busy. If you have sent an application for registration on May 14, and your competitor wanted to register the same brand and sent an application on May 13, the trademark will belong to him. Who is the first to apply, to the trademark.
But you need to check anyway. There is a chance that right now someone will send an application for registration of the same brand, at least. And if you pay the state duty and it turns out that the trademark is already busy, the money will not return.
Checks are paid and free. You can check the freight sign on the Internet. There are many sites that carry out checks on open bases. If you have a verbal sign, you will see if there are similar to your name. If you want to register an image, smell and anything else is not verbal - it will not work for free.
To check the brand on the basis of registered and submitted trademarks of the Federal Institute of Industrial Property (FIPS), it is necessary to pay 4130 rubles. for grade 1 and another 1062 rubles. - Service cost for each additional class. You will show all the signs similar to the one you want to register. The result will be presented in the form of a huge list of brands, where it is not clear who actually threatens registration, and who is not. The opposition risks will have to evaluate independently, to build a protection strategy - also.
Check your trademark
on uniqueness for free.
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In addition, there is a list of words for each class, which cannot be recorded as a trademark. They are called "unguarded elements." As a rule, these are words, terms, images and expressions that people are used to designate goods of this class.
For example, you cannot register the word "shoes" or "boots" as a trademark in the class of shoes. And in another class can. But combinations with the word "shoes" register in the class of shoes can be: "favorite shoes", "pink shoe". In conclusion it will be written that the trademark consists of a protected element "Pink" and unguarded element "Shoe".
How to apply for commercial sign
Independently an application for registration of a trademark can be served in three ways:
- Send an electronic application for a trademark through the FIPS website;
- prepare a package of documents and send by mail or bring personally;
- Send an application for a trademark through the website of the State Service.
An electronic application that reduces state duty by 30% can only be submitted through the FIPS website. To do this, you must have a personal account there and get an enhanced qualifying signature. Obtaining an electronic qualified signature (ECP) stands around 5000 rubles. Signature You need to connect and configure all certificates. It will take several weeks.
It is more convenient to place an application through state services. But such a submission of the application is not equal to the electronic. We have to pay the full cost of registration. To apply, you need to be registered on the portal as a legal entity or an individual entrepreneur and follow the system prompts. Templates of all documents are on the page describing the service.
You can download document templates from the Public Services portal and send by mail or bring to Rospatent personally.
If the Rospatent sent a refusal
Rospatent during the inspection relies on three main factor:
- Phonetic similarity: signs can have a different writing and value, but if the pronunciation is similar - refusal is possible;
- Visual similarity: if one brand is visually similar to another to the degree of mixing, that is, if the buyer can take one brand after another and by mistake it is not that;
- Semantic similarity: if the designations in meaning are too similar to each other.
Refuse to register a trademark in several cases:
- If your brand copies or very similar to the already registered trademark in the right class or a well-known trademark;
- consists only of unguarded elements;
- contains descriptive terms;
- misleading in relation to the nature, quality or place of origin of the goods;
- Contains flags, emblems, emblems of states and international organizations.
Krymbythim worked on the territory of Ukraine and owned the trademark "Dichlofos". After the joining of Crimea to Russia, Crimebythim registered the brand on the territory of the Russian Federation and tried to bring other firms to responsibility, which produce poison for insects under this brand.
The problem is that in Russia the word "dichlofos" entered into universal use for drugs of this type and became more likely to be the name than the title. Therefore, Gardium specialists managed to prove the impossibility of registration of the Dichlofos brand in the territory of the Russian Federation. The registration of the trademark was canceled.
If you refused to register a brand because of the similarity with an already registered sign, this is not a sentence. There are several ways to obtain a testimony or permission and the right to a trademark.
- If you sent a sign as opposed to you, not quite identical to yours, you can write a letter to the Rospatent with explanations and prove that there are different signs.
- You can contact the copyright of the opposite trademark and receive a letter from him. If the copyright holder signs the agreement so that your brand looks like it, you will receive permission. As a rule, such situations are possible if businesses work in different regions. Service cost Each company will evaluate independently: someone will provide a letter for free, someone will ask for a reward.
There may be other options:
- To sign an agreement with the copyright holder so that he allowed to work under his brand under the license agreement. But the company will not have their own trademark - it will have to use a stranger.
- Change design or brand name is insignificant: so that customers do not notice major changes, but the opportunity to prove to Rospatent the possibility of registration.
- Fully change the proprietary designation.
In the second and third case, the application will have to be renovated, and therefore the cost of the service, the state duty to pay too.
Chips that will help turn failure to approve and register your trademark:
- Phonetically. Come up with an option similar to sound, but a different name for writing the name. For example, not "Natasha", but "Natalushenka". Not "Mrs. Marple", but "Miss Starpl".
- Visually. Change part of the image so that it stops to be similar to the opposed sign. For example, replace flowers on the laurel wreath, the cat is on the fish.
- Change the view of the trademark. For example, if a failure has come to register a verbal trademark "Violetta", you can replace the letters "TT" on the image of birds in the form of the letter "T". Rospatent nothing will be opposed when registering a combined trademark "Viola A". But the letters "TT" in the form of birds will become the mandatory attribute of your brand.
Similarly, you can change any other letters to graphic images and register not the original brand name, and fictional words.
The most famous example is when due to semantic similarity refused to register - brands Skype and Sky.
Brand "Skype" filed a request for registration after "Sky". In registration, refused due to the fact that the designations are similar on sound and writing, and the cloud in the Skype logo can be taken for the symbol of the sky.
As a result, Corporation agreed with each other, but the Skype logo has not yet been registered.
When the sign is approved
If the Rospatent approved registration, you need to pay the last state dresses and obtain a certificate for a trademark in one of three ways:
- by mail;
- through a representative.
Remember that the term of the protection of the trademark is 10 years. Extension of registration takes about the year. Therefore, after 9 years, you need to apply for the extension of trademark protection.
Termination of trademark protection
Legal protection of a trademark stops automatically if the company has not submitted an application for extending or if a legal entity for which the brand is registered, closed. If the company plans to close Jurlso or IP, but wants to preserve his intellectual property, you need to first transfer all the objects to another legal entity or IP, then close.
If the copyright holder does not use a trademark for three years, it is possible to cancel his legal protection through the court and register a brand on themselves or enter the right holder and redeem a trademark.
International Trademarks and National Registration
Firms that plan to enter the international level register trademarks in the Madrid system or in each country separately. In the Madrid registration system of signs includes 119 countries. There is an application to a foreign company centrally through WIPO (World Intellectual Property Organization). But not immediately at all 119 countries, but only in those that need.
In other countries, their national registration protocol. In order for a foreign company to obtain a certificate, you will have to study the regulatory framework for each state.
The prerequisite for registering foreign businesses in the Madrid system is that the brand is registered in the country of registration of the copyright holder. That is, even if the Russian firm does not plan to work in Russia, register a brand here and pay the full price will have to.
Now you know about trademarks enough to make a decision on registration:
- Register a trademark and obtain a certificate is desirable, but not necessarily. It should be borne in mind that if someone else register your brand on yourself - it will have to give up and pay a fine. Plus, if you do not register, the company will have many restrictions: it will not be possible to start working with large stores of stores, sell a franchise, to increase the cost of the brand at the expense of the trademark as an intangible asset.
- You can register a trademark independently or through a patent attorney. Patent attorney will help reduce the risk of refusal to a minimum and save 30% for state duty.
- Registration of any kind of trademark lasts about a year, most of this time, the Rospatent checks whether the trademark is free. The company receives the right to priority from the date of submission.
- Rospatent may refuse to register a trademark. In this case, the state duty returns. But the decision can be attempted to challenge and ensure that the certificate for a trademark becomes yours using the services of patent attorneys.
- When the logging of a trademark was successful, the firm can use it for any products in its class of ICTU, selling a franchise at a bargain price, to receive royalty, penalties from violators, work with large store networks, make a trademark intangible asset and a lot more.
- If the company does not use its trademark for more than 3 years, another company may apply to court and register this trademark on itself.
- Firms that want to work internationally register international trademarks (trademarks). You can use Madrid registration or receive a certificate in each country separately. It is worth remembering that if the company from the Russian Federation wants to use Madrid registration - it must be registered trademark in Russia.
- Duration of the certificate for a trademark - 10 years. 9 years after registration, it is necessary to apply for the extension of the legal protection of the brand.
Read about the protection of volumetric trademarks and 3D models in the material of Margarita Sazonova.
Gardium Patent and Advice Bureau is one of the leaders of intellectual property protection since 2004. Among the 12000+ clients - PIC GK, Russian Railways, UAZ, Knauf, Laktalis. We enter the leading law ratings "Right-300", "Kommersant" and Best Lawyers.
Every year more and more businessmen in Russia register their trademarks or service signs. Why do such registration need? How much will it cost? How to register a trademark yourself? These and other important questions you will find answers in our publication.
What is a trademark and why he need
Successful manufacturers of goods have always sought to fix their authorship on produced products. For this, each copy was put on a special mark - stigma, which argued that the product is original. Most often, such designations can be found on ceramic and porcelain products.
Even in the Soviet Union, where the economy was planned, almost all plants and factories producing ceramics and porcelain, used special designations on their products.
Some manufacturers retained their sign unchanged for many years, while others changed it quite often. For example, the imperial porcelain factory, also known as Lomonosovsky or Leningrad, has been working in Russia for 275 years. This is how it changed its stamp over time.
Of course, a trademark is not only a stigma on the product itself. Article 1477 of the Civil Code of the Russian Federation defines it as a designation that serves to individualize goods of legal entities or individual entrepreneurs. TZ is located on the goods, its packages and labels, on signs, used in business documents, advertising, ads, etc.
Commercial designation, brand, trademark and logo can be called close synonyms of the trademark. But if we talk about the legal concept, enshrined in the laws, then this is only a trademark and service sign (registered when providing services or performance).
A registered trademark performs several important functions:
- Protects the exclusive right of the owner of the TK on its use;
- guarantees consumers high quality goods or service standard declared by the manufacturer (Contractor);
- Forms brand awareness and loyal to it, buyers and customers;
- Allows you to use a unique designation as intellectual property that you can sell or enable to use for a specific remuneration.
If you are interested in how to register a trademark in Russia, our fierce instruction will help you.
How to register a trademark
Step 1. Sign Development
Most trademarks look for consumer, as verbal (sometimes letter) or graphic designation. Often there is a combination of their combination, that is, in the TK at the same time there are some letters and a small picture or symbol.
But besides, there are light, sound and even olfactory trademarks. Of course, such varieties of signs are rare, because they should still be conveyed to the consumer. After all, with the help of advertising on paper, it is impossible to transfer no sound or light, only graphic characters and letters. You can transmit the smell on paper, but it must be borne in mind that it will disperse, and fix it is more difficult for the examination. But three-dimensional models of trademarks are used for a long time. As an example, you can bring the famous design of the bottle of Coca-Cola.
Develop a unique and directly related to the product Sign is very difficult, so this can be consistent with specialized agencies. And the final version should be unique, because it will still be checked.
Read also: What are the types of trademarks?
Step 2. Check the TK on uniqueness
Before you register a trademark yourself, you need to check it on uniqueness. Each fourth applicant, Rospatent refuses precisely because of the fact that the proposed designation in one way or another repeats the already registered.
To do this, there are different resources, including free. But it is most reliable to seek finding the FIPS (Federal Institute of Industrial Property). The search is paid, but you can be confident in its accuracy.
The minimum rate is charged for a search for one verbal designation of one class of the ICTU - 4 130 rubles. For each class beyond that - 1,062 rubles. If the check is carried out in all classes, then the amount will be 47,200 rubles. Standard search is carried out within 20 working days. The term can be reduced to one day, but also cost such a service will be 12 times more expensive.
The problem is that the final report will contain the parameters of the registered signs, which in one way or another similar to the declared designation. But recommendations on whether it is possible to register this sign, it will not be here. The conclusion about such an opportunity should be done by the applicant itself, so if the decision is made difficult, it is worth contacting the patent attorney.
Special attention in the registration of TK is paid to ensuring that the designation does not include state official symbols and names of international organizations. Read more about other requirements for the claimed signs, you can learn from the leadership of the Rospatent.
Step 3. Submit an application for commercial sign up
Registration of intellectual property in Russia is engaged in Rospatent. You can submit an application in person personally, by mail or by fax. If the applicant has an electronic signature, then you can contact the FIPS website or the public service portal.
Please note that only individual entrepreneurs and legal entities are entitled to register a trademark and service sign. Regular individuals such a government service is not provided, because they are not entities of business activities.
The application is served on a special form (download), it indicates the following data:
- proprietary name of the organization or the full name of the IP, as well as the official location (legal address or regulation of the entrepreneur);
- Representative data if it is (usually this is a patent attorney);
- The image and description of the proposed designation, as well as its characteristics (verbal, vector, light, volume, changing, etc.). If the designation cannot be configured in the reserved field, then it is attached with a separate document;
- classic classifier ICTU and product name or service;
- the basis for setting the date of the trademark priority;
- confirmation of payment of duty;
- List of attached documents.
Application for registration of TK will not be considered if the state duty is not paid. In 2020, it is:
- 3,500 rubles for registration of the application and the implementation of formal examination, as well as 1,000 rubles for each additional class of the ICTU, if there are more than five;
- 11 500 rubles for the examination of the designation and decision on its results plus 2,500 rubles for each class of the ICTU, if more than one.
If documents are submitted in electronic form with the EDS of the applicant, the duty will be lower by 30%.
Step 4. Get the results of expertise
Now it remains only to wait. In accordance with the Regulations approved by the Order of the Ministry of Economic Development of the Russian Federation of July 20, 2015 N 483, the timing of the examinations is:
- One month for a formal examination, in the process of which the application is verified for compliance with the requirements for filling and paying fees;
- Twelve months for expertise on the merits, during which the aligned marriage designation is already checked.
In the process, expertise in the department may arise questions both to the applicant and the verified designation. For example, an error was detected in the address specifying or additional documents are required. You must respond to requests on the specified time limit, otherwise the TK registration procedure will be interrupted.
If the examination is completed successfully, the applicant is sent to the decision on the State Registration. But if the Rospatent decides that the designation is not unique or does not meet other requirements, then a decision will be made to refuse registration. Duties are not returned at the same time, because they were visible only for the consideration of documents, and not the fact of registration of the trademark.
Step 5. Obtaining a certificate for a trademark
In practice, more than half of the applicants receive a positive decision. Therefore, the next step is for them - payment of the state duty for making a trademark into the state registry.
The duty consists of two amounts:
- 16,000 rubles (plus 1,000 rubles for each class of the ICTU, if more than five) for registration of TK or service sign;
- 2,000 rubles for issuing a certificate for a trademark.
Pay duties need no later than two months after receiving a positive solution. If this period is broken, but does not exceed six months, then pay 50% more.
What will happen if the applicant does not pay the final fee? His application is recognized by the renewal, which will send the Rospatent to send a corresponding notice. No protection will not receive the declared designation in this case.
And those who have passed the procedure to the end, is issued a certificate for a trademark on the prescribed form. It protects the registered designation for 10 years, after which it can be repeatedly renewed for the same period.
Step 6. Publication in the Official Bulletin
Within a month after making a registered sign in the State Register and issuing a certificate, it is published in the Rospatent Bulletin "Trademarks, Service Signs and Names of the Origin of Goods". This registration procedure ends.
The procedure for registering trademarks and maintenance signs in Russia is long and quite expensive. Only the minimum size of all state duties is 33,000 rubles. And if you add here the costs of a paid search and service of the patent attorney, then the costs may exceed 100,000 rubles. Therefore, those producers who intend to promote a qualitative and unique product are usually solved for this step.
By itself, a registered trademark alone is a product of intellectual property, which can be sold, will not be interesting to anyone if nothing is worth it.
But also to start a business under some unregistered designation, if you basically want to use it, it is also not worth it. After all, the unscrupulous competitor can take advantage of this, as happened to LLC "Sphere". True, specifically in this case everything ended well, but it does not always happen.
You opened an online store and invented a name for him with a branded logo. You can stay on this and leave everything as it is, but it is better to get copyright and register a brand in the form of a trademark. A trifle, at first glance, it can get rid of big problems. How to do it yourself is our new article.
What is a trademark
The trademark is a letter, graphic or combined image of a corporate sign, a logo or name registered in the Rospatent organs. Direct duty to register a trademark by law is not provided for, However, without this, you will not have any rights to use it. "Well, and that" you say - "No one forbids." Yes, it does not forbid, but not only to you. It turns out that you can use your name and any other. If copyright is received on the name, you can use it and only you.
Important: The trademark is assigned to companies engaged in the production of material values, more simply speaking products that can be touched by hands. If you do not produce anything, but only resell or provide services, then your logo will not be called a trademark, but a service sign.
What can happen if you do not register a trademark:
- At any time you can call and inform: "Dear! You illegally use your name. The fact is that my company is also called, but the other day we received documents on the state registration of the trademark. No one but me cannot work under this brand. " The further will be offered to voluntarily change the name. If you refuse - after a couple of months a court decision will come and it will make it forcibly. Do you understand what it threatens? Rebranding, the cost of developing a new logo, not to mention the cost of advertising: The new brand will need to be promoted with almost zero;
- confusion may occur. Suppose, several organizations work under the same name. Ironically, they sell about identical goods - clothes and shoes. And now imagine yourself at the site of the client, who is looking for your online store through search engines. It dials the name of the store in the search bar and the system gives him ten stores with the same name. Which one is your customer is incomprehensible;
- You can write off other people's negative reviews. The same client is gaining the name of your online store in Yandex and wants to read customer reviews about his work. And finds them in excess - everything is completely negative. Of course, the potential buyer immediately will change his mind to something in your store. Only here the trouble is that the store is not yours, but one of the competitors running the sleeves. He dripping - reputational losses you carry;
- Registered trademark can be sold. If the brand is not registered, it will be impossible to do it. And the promoted trademarks are expensive and wishing to buy them always enough;
- Someone can start fake your product or service. We remind you: While you do not have rights to a trademark, someone can use it . If you spin the brand and make it recognizable and popular, you can find a wishing to make cream for you. There were cases when competitors recorded a trademark before his creator, who after that did not remain. Formally it is legal.
Stages of development and registration of trademark
Stage First - Design Development
A number of requirements are presented to the design. It is forbidden to mention the name of goods or services, call on to buy or enter a buyer to delusion. But the most important thing is uniqueness. The trademark should not be similar to other, already existing ones. It may disrupt the rights of competitors and may refuse such a logo in registering.
The sign may consist of letters in any language, numbers, graphics or pattern. For development, you need to refer to the designer or to the agency. There they will develop a corporate font for you, pick up the color gamut and so on. Before ordering the development of a trademark, prepare a detailed technical task. Madely explain in detail by the Contractor as you want to see the symbol of your company. Better if you give examples of how you see it yourself.
The trademark must be allocated from the total mass and be memorable. Have you heard the concept of "screaming name"? This is just about trademarks. In addition to the visual logo, you can register and branded melody. You know the hymn "MegaFon", Nokia or Samsung melody? All this is also specifically developed and registered.
Stage Second - Checking the uniqueness of the trademark
Bare forward and tell how to register in Rospatent. You are inventing a trademark, pay the state dresses, collect documents, give it all into the registering authority and wait. If, when checking, it will be revealed that your logo is similar to one of the already registered, then in registration will refuse. And the duties that you paid will not be returned. We will tell about the rates a little later, but we assure: they are not small. therefore It is better to immediately check your freshly developed trademark for coincidences with other . For this there are several ways:
- Check with free services. The most unreliable view of the search for coincidences. He breaks the trademark only on the basis of the brands already registered in the state registry. Applications on consideration, as well as international trademarks, the system does not take into account. However, you should not neglect such services. They allow for free to mention the nonsense options at the initial stage. That is, this is a kind of first level of control. If the free service shows the lack of uniqueness, then the trademark must be redone. Everything is in order - moving on.
- Check on paid services. Such services provide organizations engaged in copyright protection and other intellectual property. Unlike online checks, such services are guaranteed to try the brand in all existing bases and give you a report on the absence or presence of coincidences. The report will be said whether the registration of the trademark is possible or not.
- Check through the Federal Institute of Industrial Property - FIPS. The most reliable and proven method. By the way, here you can leave an application for registration of a trademark.
If your trademark has been checking on the presence of coincidence and is recognized as services suitable for registration, then you can go to the next step.
Stage Third - Choice of class ICTU
It is easier to contact for example. Remember how you have opened up or registered as an individual entrepreneur? In a statement to state registration, it was necessary to specify the codes of activity on the OKVED classifier. So here ICTU is also a classifier of goods and services, only international .
The ICTU contains 8638 items of goods and services combined in 45 classes. Use the classifier is quite simple: Find your product or service in the list and see what class they include . The 35 classes of the document are assigned to the goods and 10 - under the types of services. You can download the actual classifier on the official website all the same FSA.
The selected class on the ICTU will need to be specified in the application for registration of a trademark (maintenance sign)
Stage Fourth - Applying for Registration
Application for a trademark is submitted to Rospatent. The document is drawn up on a special form of the established sample. Flow methods:
- personally in the branches of Rospatent;
- Through a legal representative. This will require a notarial power of attorney written to an individual;
- in electronic form through the site of the Rospatent. To apply over the Internet, you need a reinforced electronic signature.
The application contains 8 copies of the trademark, copies of the constituent documents of the IP or the receipt LLC on the payment of state duties.
Attention: Register a trademark or a service sign can only individual entrepreneurs or legal entities. Individuals of this right are deprived. They can only act as trusted persons when submitting documents to the registering authorities.
Stage Fifth - Check Documents
Rospatent checks the papers in two right. At the first stage The agency studies the documents themselves for the correctness of the filling and loyalty of the information specified in them. . If an error is detected - the entire package is returned to eliminate inaccuracies. Everything is in order - the application is considered accepted. From now on, you get a priority by applying the application.
If someone else tries to register a similar or the same trademark in the afternoon later, he will not succeed. Also, your application will fall into the FSA base and will be taken into account when checking the uniqueness of the brands of other entrepreneurs.
Now you can check the status of your application here. After receiving documents, your case will be assigned an individual number - it must be entered in the search window on the website of the FSA.
The second stage is the expertise of a trademark. This is a rather long process: according to the law, the Rospatent has the right to check until 18 months. True, this is usually happening faster: the average expertise term is six months a year.
At this stage, the similarity of your service sign with other registered logos is checked. If coincidences are found, the trademark will not register. In this case, you can give time to eliminate similarities. In motivated refusal, the reason to be eliminated will be eliminated, after which the modified documents can be passed again.
Stage Six - Obtaining a Certificate of Registration of the Trademark
In the case when all previous steps are successfully completed, you will be called to the Rospatent for issuing a certificate of registration. At this stage, you need to pay the state duty for issuing a document. The certificate is applied insert with additional information.
Congratulations, now you are the sole owner of your sign and can use it without restrictions, and most importantly, someone else will start working under the brand.
The size of the state duty that you need to pay when registering a trademark
Immediately let's notify - this pleasure is not cheap. Here is the size of duties that will have to pay for registration in 2019:
- Apply for registration in Rospatent: 2700 rubles;
- Checking the trademark or service sign for coincidences - 11,500 rubles;
- for checking for each additional group of ICTU - 2050 rubles;
- issuance of a certificate of registration of a trademark - 16,200 rubles;
- Amendments to documents - 4900 rubles;
- Restoration of documents - 8100 rubles.
Certificate of registration of the trademark is issued for 10 years. After that, it needs to be renewed. If it is established that the trademark is not used for 3 years, then its registration may be canceled.
Do yourself or contact the specialists?
In the market of services, there are plenty of those who want to register a trademark for you. The cost of their work begins with 50 thousand rubles for turnkey registration. That is, if you do everything yourself, you can save at least 20 thousand. However, it will be longer, and you can do errors by inexperience.
In any case, losses from an unregistered trademark may be much more than the cost of obtaining it. Therefore, in order to not find one day that someone completely legally began to work under your brand, patented the branded name earlier Start deciding this question right now. . Good luck!
In the previous series, we chose the name for business, the trademark was recorded and dealt with trademark disputes. Now we go to the international level.
The trademark is valid only in the country where he was registered: Some The worldwide certificate for a trademark does not exist. To lead business somewhere Even, the signs of the company or the goods themselves will have to register again. If this is not done, it may turn out that you violate a trademark Some one local company.
The consequences will be unpleasant. The imported goods recognize counterfeit, and the importer is a violator. The counterfeit is confiscated and destroyed, and from the violator they collect compensation. If the violator does not pay compensation, then its property in this country will arrest. The entrance to the local market will close: the copyright holder will make a trademark to the local customs register, and the customs will stop passing the goods with the appropriate labeling.
The process of registration of the sign abroad is highly dependent on the country. Somewhere This can be done in semi-automatic mode in the Madrid Agreement, somewhere It is necessary to undergo a national procedure. In some countries will have to attract local lawyers.
Tell me how it all arranged.
"I only check!"
Foreign trademarks are more expensive than Russian, so often Russian entrepreneurs are trying to first check how trade will go in another country - and then already something There to register. But it is dangerous.
In most countries where Russian entrepreneurs are trying to export the goods, the question of legal safety is even more flirting than we. According to the statistics of the World Intellectual Property Organization for 2017, about 60 thousand trademarks are registered in Russia every year, and in China - more than 5 million. US companies and Japan are submitted annually 500-600 thousand applications, almost 400 thousand falls on "all-union" signs - this is not counting 100-150 thousand There are signs that each EU country registers. In total, 9 million new signs appear in the world every year.
In addition, in other countries, copyright holders are actively protecting their rights. In Russia, it's good if the company has a trademark in general. And that, it often happens when there are Some Problems: A pre-trial complaint comes, a shopping center refuses to place a signboard, the online store does not accept the goods for implementation. After registering the sign, the name is protected, and the company calms down.
But one sign of the sign is not enough. It is necessary to verify that competitors do not violate it - and besides the right holder, no one will do this.
In the European Union, USA and many other countries, even a small business takes care that the market does not appear brands that are too similar to their own. Monitoring applications for trademarks, opposition, protests, claims - all this is a familiar routine. Therefore, appear there with an unregistered name, even if you are going only to check your business for competitiveness, - the idea is very risky.
Registration of the Sign of National Procedure
There are two ways to register a sign in another country: according to the standard national procedure or on the international system provided for by the Madrid Agreement.
The national registration process in general is similar to the Russian. Let me remind you the main steps:
- Search for bases of signs and applications to find out Lee is busy sign.
- Preparation of applicant documentation, payment of state duty and submit an application to the Patent Office.
- Formal examination - it checks, is it right Filled documents I. Lie paid duties.
- The main expertise - the sign itself is checked on it. As a result, the Patent Office decides whether to register it or not.
- If the experts of the Patent Office send a preliminary refusal, lawyers argue with him and seek registration.
- If everything is in order, the applicant receives a certificate for a trademark.
Somewhere The procedure looks a bit different, but more often in trifles. For example, in the US, you need to confirm that you are already using a sign in business. To do this, you need to show the photo of your products or store or at least website. This measure is directed against patent trolls - companies that register a bunch of trademarks, but they themselves do nothing and just come with normal companies.
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In the European Union, there is no main examination - this is a step number 4, when the Patent Office compares the claimed sign with already registered and decides on registration or refusal. This expertise, in fact, shifted on the owners of the signs - they themselves must ensure that the market does not appear something Too similar to their designation. Instead of expertise, all applications are published in open access, and if for the allotted time, none of the copyright holders opposed, the sign register.
In Canada, there is an examination, and the publication of applications by the type of EU. And to communicate with the Canadian patent office, you need a local postal address, because they are responsible only on paper and do not send mail to other countries. Somehow I left for more than a month to search Canadian lawyers who agreed for adequate money to indicate their postal address in their applications, and they received our paper letters from the Canadian Patent Office, scanned them and sent them to our Jurfirm.
The dates of registration of signs also depend on the country. Our signs register on average for 7-9 months in the USA 5-6 In China, the process takes about the year, in the European Union and Canada - about one and a half years.
The main differences from the registration of a trademark in Russia - in the expenditures for registration and in the fact that in addition to the direct national application there is still a simplified Madrid system. About her a little later, but for now - about expenses.
Signs that operate in several countries
Above, I wrote that a single worldwide certificate for a trademark was not yet invented. But at the same time there are unions of countries where one trademark can be registered on all participating countries immediately. These are 28 EU countries, 17 countries of the African Intellectual Property Organization and Benilux Countries.
Each of these unions has its own patent office. It issues evidence that operate throughout the Union. It is beneficial if you need a sign in several union countries: registration of the sign on the Union is at times cheaper than registration of the sign in each country of the Union separately.
Costs for commercial signs abroad
As in Russia, when registering the sign abroad, you need to pay state duty and find a lawyer who will submit your interests in another country. Sometimes it will be able to make a lawyer from Russia, but more often will have to look for local.
State duty - This is a fee for registration of a trademark, which is taken by patent departments of countries. As in Russia, the amount of state duty depends on how many types of activities protect the sign - than them more, the higher the duty. But it calculates it each on his way.
Now in Russia, the state duty for registration of a verbal sign on one type of activity - 23 100 Рif you apply in electronic form. For each of the following type of activity, you need to pay another 1750 Р.
In the US, the state duty itself is less - about 15 thousand rubles. But for each new type of activity will have to pay extra as many , Therefore, even if you have only two products, but in different classes, the state duty in the US will be more expensive than in Russia.
In China, the calculations are more difficult. The samospherial name for registration is only 3000 Р, and for each type of activity you need to pay extra as many . But if one species accounts for more than ten goods, everyone will have to pay for another 350 Р. For companies with lots of goods, the signage of the sign can pour out in a round sum.
The highest state duty for registration of a trademark - surprise! - in Uzbekistan: almost 70,000 Рfor the sign and another 6500 РFor each additional type of activity.
Services of the Russian lawyer. For the filing of the international application, lawyers in our country take approximately one and a half or two More than the filing of the Russian. To do this, at least you need to know the laws of another state and English, as well as to have experience with foreign systems. As a rule, the assistant does not entrust such a thing, so the profile lawyer or the patent attorney has to do everything.
In the Russian Jurfirm, the submission of an international application for a trademark will cost 50-70 thousand rubles. But it will not take for this not every company: there are not so many lawyers in Russia that can register signs abroad. It is necessary to know English, foreign legislation to work with foreign trademarks, and it is desirable to have familiar lawyers in other countries. Search for an international lawyer is the most reliable portfolio: it must be in it at least One sign in the country you need.
Services of a foreign lawyer. In most countries, the law prohibits patent offices to communicate with foreigners directly, therefore the application for a sign on the national procedure of these countries is not submitted without a local lawyer.
There are exceptions. Sometimes countries agree among themselves and allow their patent departments to take direct appeals of residents of a friendly country. But the list of such countries is constantly changing and Some There is no single list, so before each international feed, you need to specify the status of a particular country. For example, when I sat down to write this article, from Russia without a local lawyer, you could directly apply to the United States. The last few years, when my trusts needed to get American testimony, I did it. But while this article was prepared for release, in the United States managed to adopt a law, which forbade foreigners to apply for a sign directly.
As a rule, foreign lawyers services are more expensive than the services of their Russian colleagues. In Russia, it is easy to find a lawyer who will offer to register a local turnkey trademark for 30-40 thousand rubles. Foreign specialists rarely work "turnkey", they have to pay for each individual piece of paper. Often meets hourly pay, for example, in the US, the usual price list - 200-300 $ in hour. Therefore, when a foreign lawyer comes into business, it is unknown in advance, how much will all register cost.
Let's say in Germany, if everything goes smoothly, the lawyer's services will cost 1000-1500 € . And if the patent office will send a preliminary refusal, and Anyone From other copyright holders the opposition will be announced - they say, your sign is too similar to our sign, the cost of registration is easy to break the bar at 3000 €.
Usually, entrepreneurs themselves are not looking for foreign lawyers and do not control their work. They hire Russian lawfires that are intermediaries. The Russian lawyer takes his responsibility to work a foreign person, prepares documents for him, translates them and ensures that he worked for conscience. Therefore, the cost of services of a foreign lawyer also depends on the cost of Russian services.
Large Russian yurphirms usually work with same Large foreign firms, firms are smaller - with small companies or private lawyers. If you want to save on a foreign lawyer, first of all it is worth saving on Russian and hire a modest legal entity with a good portfolio. Most likely, in this case, a foreign lawyer will cost three four times cheaper than his more rating colleague, and he will do everything for sure also . Perhaps even better: For large firms, a foreign client - teaching, and for small - an event, therefore, the attitude is completely different.
Another way to save - get a discount from a foreign lawyer. If your Russian lawyer has already registered for Someone signs in the country you need, most likely, now he has there Firm-partner . Such partners continue to help each other register signs, and also provide customers with each other discounts. The size of the discount depends on the situation, in my experience, it is from 10 to 30% of the cost of services.
If you fold all together and averaged, then registration of the trademark for one type of activity, let's say, in China costs 60,000 Рin the USA - 120,000 Р, on all 28 countries of the European Union - about 160,000 Р, separately in Germany - approximately 100,000 Р.
These figures are valid only if it cost without prior failure and additional bureaucracy - and only for direct application. If you apply for the Madrid system, you can often save on a foreign lawyer, but you have to pay more duties.
Registration of a trademark in the Madrid Agreement
The Madrid Agreement is an international treaty for which more than 120 countries agreed to unify the procedure for registering a trademark. Among them, all European countries, all CIS and Asian countries, most of the countries of Africa. The contract was signed by such small countries as Mozambique and Liechtenstein. But at the same time there are no some major players: for example, Brazil and the Arab Emirates. Canada until recently was also not, but she signed an agreement while we wrote this article.
The process of registration of the sign in the Madrid Agreement is true:
- At first, the company submits an application for national registration to the local patent office - in Russia it is Rospatent.
- On the basis of the National Application, the company submits same Rospatent International Application.
- Rospatent forwards an international application into the World Intellectual Property Organization, WIPO.
- WIPO conveys an application to the patent departments of the necessary countries.
- Each country conducts its own expertise and registers a trademark - or send a preliminary refusal. The answer comes to your lawyer's email.
- You get certificates for trademarks. Each country issues its own - no unified international certificate.
Cost of Madrid registration
When submitting an application through the Madrid system to the expenses of direct submission of the application, duties of the system itself and Rospatent are added, and the state dresses of countries are about twice as high. But it is usually possible to save on a foreign lawyer - it is needed only if a preliminary refusal has come, and the country's patent office does not work with Russian attorneys.
State duty. When the country's patent office considers the application for the Madrid system, the application passes through the Department of International Specialists. They themselves translate the application for their native language, treat it, make a decision and translate it into the language of the Madrid application. For all this pays the one who gets a sign.
For example, if in the US state duty when applying for the national procedure 12,500 Р, then in the Madrid system - almost 24,000 Р.
The duty of the Madrid system. When registering a trademark in the Madrid system to the duties of the countries themselves, the duty of the system is added - 653 Swiss francs, this is about 40 thousand rubles. WIPO takes this money for sending an application for patent departments of the necessary countries.
Rospatent duty. Rospatent also takes a duty for the processing of international application and sending it to WIPO - in 2019 it is 4900 Р.
Calculate the total amount of duties can be using a WIPO calculator. To do this, you need to choose Russia in the "Office of Origin" field, specify the number of classes to record the sign, and the country where you want to get it. After that, press "Calculate".
The size of the Madrid duty is fixed and does not depend on the number of countries where you are submitting an application - only the duty of the country itself is added for each country. Therefore, it is believed that in the general case, the Madrid system is beneficial, only if you register a sign in three or more countries. Then pay 40 thousand basic duties at once than to pay lawyers for each country.
But here it all depends on Lie need Foreign lawyer for direct application. If you need, the Madrid duty even in one country may be lower than the cost of its services. If You can do without a foreign lawyer, the direct submission of the application in one country is always cheaper.
A couple of years ago I registered a series of trademarks in the United States for a company that produces energy drinks. If We have applied through the procedure of the Madrid Agreement, only duty would be in 1041 franc (approximately 61,000 Р). Another 4900. Р would have had Rospatence for sending applications to WIPO. Instead, we went to the US directly and did not pay duties for the use of the Madrid system. Only duty in the USA remained - $ 225, it is about 12,500 Р. It turns out that we have reduced costs for duties more than 5 times.
Perhaps for some companies saved 50 thousand rubles - not such a significant amount. But when, in addition to one logo, you also need to register a slogan, a series of brands and packaging of goods, savings becomes tangible even for large companies.
Features of the Madrid system
When submitting an application for a trademark in the Madrid system, WIPOs themselves translated the application, send it by country and coordinate the work of patent departments. In addition, this system has a few more features that you should remember. Some Of these, they give additional opportunities, others, on the contrary, can lead to unforeseen expenses.
Expansion of the trademark. If you have already filed a Madrid application, then a new bonus opens for you - a simplified expansion of new countries. To register a trademark still in Some For countries, you do not need to submit a new Madrid application, you can simply submit a request to expand the sign on the first application.
The basic duty of the Madrid system for the expansion of the sign is about 23 thousand rubles, it is almost twice as much as for the original application. The cost of services for the extension is also less, because the corresponding request is fed in electronic form and takes a much less lawyer's working time. I don't need to pay Rospatent, because the application is applied directly to WIPO. True, state duty of countries remain the same - they do not depend on the type of application.
After submitting an application for an expansion of the sign, the process looks as usual: WIPO sends an application to new countries, and local patent departments are examined and register a sign - or not.
Priority date. As in other cases, the application of the application through the Madrid system is consolidated by the priority date for you - after it other entrepreneurs can no longer receive a testimony for too much notation. But there are differences.
If you submit a Madrid application for six months after the Russian, the priority date can be retained from the Russian. It protects against risk that in the country of interest to you somebody Another will give a similar sign before you and you will refuse to register. Such coincidences are infrequently, but it is impossible to write them off with accounts - especially given the number of signs that foreign companies are submitted for registration.
One day it saved my principal. In September 2017, we have applied for a sign in Russia, and in December 2017 - Madrid application in the European Union. In the spring of 2018 from the European Union, we came a letter with an opposition regarding our sign: Some The company in England submitted a very similar sign for registration. It happened in November 2017 - before we filed our Madrid. Therefore, the company asked the European Patent Office to refuse us at the registration of a trademark. Here the date of priority on the Russian application was useful - on it we were ahead of the British.
If My principal missed half a year from the date of application or I did not ask for a national priority in the Madrid application, the opposition of the British company could accept and refuse to register.
The dependence of the Madrid application. Despite the trick with the date of priority, I do not advise to rush to the filing of the Madrid application. The fact is that the first five years of its approval depends on the national application: if the Rospatent refuses to register the trademark in Russia, the Madrid application will automatically burn and no one will return duties.
In order not to risk duties, it makes sense to wait until the application is approved in Russia. If you submit it in electronic form and pay for all duties in advance, there is a chance that everyone will do faster than six months. And then you can already serve the Madrid application and ask priority by the date of the Russian.
Immediately submit a Russian and international application makes sense only if you know exactly why it is necessary. For example, my trust from the previous example had to show an application for a sign of foreign counterparties. Cooperation with them was worth much more duties, so it made sense to risk. And if the lawyer persists to immediately file all the applications, but does not say why to do so, perhaps he just wants to earn more money on you.
Increased registration date. Ordinary national registrations for signs are submitted directly to the patent departments of the necessary countries. Madrid has a whole chain: the application must be submitted to Rospatent, Rospatent forwards it to WIPO, WIPO - in the patent office of the desired country. The registration period usually increases two times.
For example, we got a trademark in the USA for the manufacturer of power engineers in eight months - because in the USA local lawyers are not needed and we have applied directly to the Patent Office of the country, USPTO. If We did everything also most through the Madrid system, registration Waiting for At least one and a half years.
Registration of a sign on the national procedure and the Madrid system
|National procedure||Madrid system|
|Simplified expansion of applications for other countries||Not||there is|
|Russian Application Dependency||Does not depend||Depends|
|State duty||Standard state dresses||Increased state dresses|
|Additional duties||Not||WIPO and Rospatent duties|
|Foreign lawyer||Need for most countries||Usually there is enough Russian|
|Process||Nuances depend on the country||All standardized|
|Timing||From six months||From year|
Simplified expansion of applications for other countries
Russian Application Dependency
Does not depend
Standard state dresses
Increased state dresses
WIPO and Rospatent duties
Need for most countries
Usually there is enough Russian
Nuances depend on the country
From six months
Compensation from local companies
In a good way After registering the sign in another country, you need to begin to ensure that no one has broken in this country. As in Russia, in France, the Netherlands or Mozambique for you no one will do.
But in reality until a certain point, it is not worth their efforts. If you find a violation of your trademark, then to get compensation, you will have to go to the local court and prove a violation, and it is difficult to engage in justice in another country and expensive. Therefore, the local representative of the company is usually engaged in the recovery of compensation: franchisee, dealer or somebody still.
As long as the company has no regional representation and it simply sells something In another country, a trademark by and large is needed only for the safety of the company itself.
Briefly: how to register a trademark in another country
- The trademark is valid only in the country in which it is registered.
- There is no international certificate for a trademark. Each country decides on the registration of your trademark yourself.
- If you sell goods in another country without registration of a trademark in this country, it may be that in this country the right to such a brand belongs Some one local company. In this case, the company will be able to recognize the imported goods by counterfeit, withdraw it and destroy it, and at the expense of compensation to arrest other property of the violator.
- If you are going to register a trademark in three or more countries, registration on the Madrid Agreement system will be cheaper than the supply directly to each individual country.
- If you need One-two Countries, find out how much the feed will cost through Madrid and how much will be worth the direct feed. Perhaps the direct feed will be faster and cheaper - it primarily depends on whether Lie need Foreign lawyer to communicate with the local patent office.
- To submit an international application in the Madrid system, you need to have a registered trademark in Russia or at least Submitted application. To submit a direct application to the patent office of another country, all this is not necessary.
- If you only applied in Russia, do not hurry to file an international application in the Madrid system. Since submitting an application in Russia, you have six months to submit an international application through the Madrid system with preservation of the priority on the Russian application.