Enforcement of trademark rights

In order to secure the rights to a trademark, a company must draw up and submit an application to Rospatent. To do so, it is necessary to submit the designation and its description in one of the following forms:

• verbal object using letters, numbers, symbols, phrases and abbreviations;
• graphic objects - fragments of fine art and graphics, photographs, logos;
• combined objects, i.e. a combination of text and graphics;
• sound, three-dimensional and other objects.

At the initial stage of registration a formal examination is carried out. Rospatent specialists will check the compliance of the application with the legal requirements, make sure that all the forms and forms are filled in correctly. If there are any comments, the examiners may send written requests to the applicant for the submission of missing documents or elimination of deficiencies.

If the examination of the documents passed without any remarks, the applicant shall file a petition for an expert examination of the designation. It is at this stage that the:

• information search on national and international registers, which will allow to identify similar designations that have already received legal protection;
• Establishing the distinctiveness of a trademark, identifying similarities or similarities with fragments of other designations;
• conducting a check on the existence of prohibitions and restrictions for the provision of protection for the designation.

The cost of trademark examination depends on the number of classes of products according to the International Classification of Goods (ICS), which the company will indicate in the application.

Examination for similarity must confirm the uniqueness of the designation. If the registers already contain information about the registered trademark, or the application with granted priority, the probability of a positive decision is very low.

Also refusal can be made if the designation or most of its fragments can not be granted protection:

• if the designation relates to common symbols;
• if the trademark is capable of misleading consumers about the manufacturer or its products;
• if the designation is contrary to the principles of morality or other public interests;
• if the object entirely consists of official state symbols or heraldry;
• for other reasons specified in the law.

If these violations are identified, the registration will be denied, which can be appealed against in administrative or judicial proceedings. It is possible to get the negative decision annulled by proving the unlawfulness of the experts' actions. In the majority of cases the evaluation of the distinctiveness of a designation and its separate fragments is subjective. Therefore the applicant can provide additional evidence of the uniqueness of the trademark, confirm the violation of the requirements for conducting expert examinations, involve other specialists in the consideration of the case. The final decision on this issue will be made by the court, if the applicant's objections were rejected by Rospatent.