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Do you need trademark

or How to protect your business from attacks by competitors and fines of up to 5 million rubles

A trademark is not a formality or a show off, but an opportunity to protect your business.

Natalia Lavrentieva

worked as a marketer in the patent office

I worked as a marketer in a patent office. I regularly had to communicate with representatives of companies who wanted to protect intellectual property. Some - to make money, others - to avoid problems in the future, and some have already come with problems. I’ll tell you why you need a trademark and what happens if you don’t register it.

Examples judicial practice I took it from open sources. What happens at work stays at work.

What is a trademark

A trademark is “a designation used to identify goods and services.” Companies register their trademarks to prevent others from using them.

A trademark can be pictures, shapes, sounds, text and anything else by which the company can be identified.

Second melody when Windows starts - registered trademark

Most registered trademarks are company logos. Depending on the type of activity of a company, they are registered in certain classes of the International Classification of Goods and Services.

For example, if you sell shoes and register the name “Re-footwear” in your class, nothing will prevent a tire shop from registering the same brand for itself in another class.

The exception is well-known signs. If you run your business throughout the Russian Federation, your brand is recognizable, you invest in advertising, then the brand can be considered well-known. Then, without the consent of the copyright holder, no one will be able to use the trademark in any class.

The case with Russian Railways

Entrepreneur Andrey Chumakov created an online store rzd-shop.ru, in which he illegally sold souvenirs with the logo of JSC Russian Railways. JSC Russian Railways sued Chumakov and demanded to pay 2 million rubles for using the well-known designation rzd in the name of the site and selling counterfeit goods.

The entrepreneur wanted to prove that he did not plan to use the trademark owned by Russian Railways to work on behalf of the corporation. But the court found him completely guilty. Due to the fact that the plaintiff did not prove his losses, the court reduced the amount to 200 thousand rubles, but still ordered Chumakov to close the online store.

Why register a trademark

The main reason is brand safety. Once a business owner receives a decision to register a trademark, no one will be able to use it. brand name. For using someone else's trademark Russian legislation a fine of 10 thousand to 5 million rubles is provided.

If we look at the practice of arbitration courts, we will see more than 22 thousand decisions only involving the Adidas trademark. And there are almost 7,000 solutions with “Nike” and more than 2,000 solutions with the “Reebok” sign.

Most of these decisions punished small entrepreneurs for illegal use brand for amounts from 5 to 50 thousand rubles in favor of the plaintiff, so that Adidas received no less than 110 million rubles in compensation.

How to choose a trademark

Before you start using a logo, wordmark, slogan, or domain name site, make sure that no one has registered it before you, so that you do not have to pay penalties.

If the company that registered the trademark does not use it for three years, another company can revoke the legal protection of that brand and register it in its own name.

The case of the Highlander

Veksel LLC appealed to the Moscow Arbitration Court with a demand to recover 5 million rubles from Sfera LLC for using the Highlander trademark and to remove all shoes of this brand from the defendant’s circulation.

The court partially satisfied the demands: it recovered 500 thousand rubles from Sphere as compensation for the Bill and 43 thousand rubles state duty. He also decided to remove counterfeit products from circulation.

Sfera filed a counterclaim. They were able to prove that Veksel did not use the Highlander brand, which means that Veksel registered the trademark in order to interfere with the work of another company. This is illegal. The court agreed, and the protection of the Highlander trademark was terminated ahead of schedule.

Sfera was allowed not to pay 500 thousand rubles in favor of “Veksel”.

To find out if a trademark is free, you can use the TM-view website. This free service which is only suitable for initial check: It does not show confusingly similar characters.

For example, if you ask if the Tinkof sign is free, the service will say that it is free. But Rospatent will not allow it to be registered, since it is confusingly similar to the Tinkoff brand.

A detailed check can be carried out for 59 rubles. Or contact the patent offices and law firms who specialize in these services.

How to register

On the territory of the Russian Federation, marks are registered by Rospatent. This government agency, which checks trademarks for identity and similarity and maintains a database of all registered objects intellectual property.

Registration usually takes 10-18 months. The right of priority use of a mark arises from the moment the application is submitted.

You can contact patent attorney who will help you go through the procedure. With his help a chance successful registration trademark increases, because he knows from experience what and how to do in order to obtain consent for registration from Rospatent.

How much does registration cost?

Brand registration costs from 30 to 50 thousand rubles. This is the cost of the state duty, it can be clarified on the Rospatent website. Now the state duty must be paid in three parts:

1. 3500 rubles for registering an application for registration of a trademark in one class. For each additional class you will have to pay an additional 1000 rubles.
2. 11,500 rubles for checking for identity and similarity in one class. Based on the results of the inspection, a decision is made on the possibility of registering a trademark. Another 2,500 rubles must be paid for registration in each additional class.
3. 16,000 rubles when Rospatent approves the registration of a trademark. Pay before the certificate is issued. For each additional class over 5 you will have to pay an additional 1000 rubles.
4. 2000 rubles are paid for issuing a certificate of registration of a trademark.

The first two payments are made simultaneously. If you have submitted an application for registration, but Rospatent has found trademarks that are confusingly similar to yours, it will reject the application and will not refund the state fee.

After receiving the certificate, do not forget that its validity period is 10 years from the date of filing the application for registration. Renewal takes about a year, so after 9 years you need to submit an application, otherwise your brand may be registered by another company.

If you don't register

The most famous example of a company losing profits due to an unregistered trademark is the case of Skype. In 2015, Skype was denied registration because the mark was confusingly similar to the broadcaster's registered trademark "Sky".

Microsoft agreed with the TV channel that they could continue to use the Skype logo, but could not produce or sell products under this brand.

If you don't register your brand, your competitors can take advantage of it: register your trademark and put you out of business.

The case of the brand “Yamshchik-taxi”

In 2005, the Privat company filed for registration of the Yamshchik-taxi brand, under which its competitors’ taxis operated. After registration, the copyright holder prohibited competitors from using this logo.

The dispute in court lasted 4 years. The legal owner restored his rights to the trademark in 2009, but during this time the brand was forgotten by consumers. It had to be unwound like new.

What else to consider

Each country has its own database of registered trademarks. You cannot just go ahead and get a worldwide trademark; you have to go through the process again in each country.

If you are going to import into the territory of the Russian Federation imported goods, you need to check that this brand has not been registered with us by another copyright holder. Otherwise you will have to pay a fine.

The case of "Happy Baby"

In 2015, entrepreneur Tatyana Goncharenko imported toys under the Happy Baby brand into the Russian Federation. This trademark is registered and valid in the United States.

The party was detained at the border customs Service, because in Russia this brand belongs to another company. Goncharenko had to pay a fine of 20 thousand rubles for using someone else’s trademark, and the entire batch of toys worth $1,500 was seized by the customs service.

How to register and use a trademark

1. Check that no one uses this or a similar trademark in Russia.
2. Submit an application to Rospatent yourself or with the help of a patent attorney.
3. Wait for your application to be approved and receive a trademark registration certificate.
4. Now your trademark is protected by law and you can: sell a franchise and make money from it; sue and demand compensation from anyone who uses your brand without your permission; give letters of consent to use your trademark on terms favorable to you; invest any funds in promoting your brand without the risk of encroachment from unscrupulous competitors.
5. Don’t forget to apply for renewal of your trademark registration after 9 years.

If you are going to purchase a trademark or enter into an agreement commercial concession(franchising) to use a trademark, before concluding an agreement, it is necessary to check the registration of this trademark. IN otherwise You risk becoming a victim of fraud using an unregistered trademark or a trademark registered to third parties and violating their rights.

How to check your trademark registration

You can check whether a trademark is registered in the following ways:

Ask for a copy of the trademark registration certificate

Each copyright holder is issued a certificate of registration of his trademark. It confirms the fact that this trademark is granted legal protection on the territory of the Russian Federation. The certificate contains information about the registration number, the copyright holder of the trademark and its validity period.

Trademarks in Russia are numbered in order, starting with 1. Trademarks registered in the last few years have 6 digits in the number. There are also trademarks registered abroad and extended to Russia. They are also numbered in order; now the numbers contain up to 7 digits.

Check your trademark registration in the database

If a trademark is registered in Russia, you can check it for free on the website Federal Institute industrial property(FIPS). This is the official database of Rospatent, containing information about all registered trademarks, as well as trademarks submitted for registration. To check, you need to enter the registration number in the registry search. The trademark card will open.

Make sure that the required trademark is located at the number you are looking for. Check if the this moment trademark registration and who is the copyright holder.

We offer you unique opportunity— using our online service, you can independently conduct free express search for a trademark online(in a relationship verbal designations) By official registers Rospatent.

Automated daily update of the TM database allows you to receive only current data on all trademarks registered in the Russian Federation.

To do this, you need to enter the word you are interested in in the search bar, which you can see on any page of the site. The search for a trademark is carried out in all fields of the bibliography.

If you need to conduct a more complex search using certain criteria, activate the link "Advanced Search" after you make the initial request. IN in this case you will be able to specify the classes of the International Classification of Technical Regulations or other information on the sign being checked.

Advice!

For more accurate results We recommend checking both the Cyrillic spelling of words and the Latin spelling. They also need to be taken into account semantic meaning, if available. Searching from complex phrases must be carried out not only using the phrase, but also breaking it down into its components. So, searching for "GLAVPRODUCT" It is advisable to carry out a separate search using the words “Head” and “Product”.

When carrying out an express search for a trademark, it is necessary to take into account the requirements presented in Article 1483 of the Civil Code of the Russian Federation. You can find our comments on this issue in the section Explanations to Article 1483 of the Civil Code of the Russian Federation.

Choosing a company name or brand is a serious job, the success of which can be assessed from different points of view: what associations the brand/name evokes among consumers, whether it is easy to remember, whether the trademark looks beautiful on the product packaging. WITH legal point vision, the main criterion in this issue is, for example, it should not cause false associations in the consumer or be similar to the logos of competitors. That is why the service of conducting, as well as obtaining information about who owns the rights to a particular designation, is relevant.

So, in order to find out who owns trademark, trademark or brand, you must carry out the appropriate . There are two types of searches: a search for registered trademarks (also called a “narrow” or “incomplete”) and a search that, in addition to registered marks, also includes information about trademarks filed for registration (“full” search). It’s not difficult to guess that the second option is more informative and literate.

The fact is that the designations submitted for registration constitute a very important group, which simply cannot be ignored in cases where the purpose of the search is to assess the chances of registering the designation and identifying similar or identical marks. Submitted applications have earlier priority and, therefore, may be grounds for refusal of registration. Thus, a “full” search allows you to get an overall picture of the possibility of registering a particular designation.

Based on the results of the search, information about identical/similar trademarks is revealed, the customer is provided with information about who owns the rights to a particular designation: company name or full name individual entrepreneur, location legal entity or the address of residence of an individual entrepreneur. With this information, you can take action additional actions in relation to the identified trademark, if necessary.

It is also worth noting that the database of registered trademarks is present on the Internet in open access, however, no one can guarantee the user the completeness and accuracy of the information contained in it.

A “full” search is conducted by a specialist in the field. , based on its results, the client receives not just a list of identified similar marks and applications, but also a report on the chances of registering the checked mark and an offer from the company’s specialists about possible actions if similar signs are identified.