Trademark security

Want to have your own trademark so that consumers can easily recognize your product in the marketplace? Then it will be useful for you to read this article.

Dictionary
  1. A trademark is a designation, the purpose of creation and use of which is to individualize the goods and/or services of a company. It is an object of intellectual property, which means that it has protectability.
  2. Protectability is a property of an object, which emphasizes that its owner has the exclusive right to possess and dispose of it, as well as the ability to protect these rights legally. The criteria for the protectability of a trademark are uniqueness and compliance with applicable law.
  3. Compliance with applicable law is the absence in the designation of elements that are contrary to the Civil Code, as well as misleading consumers.
  4. Uniqueness, or in another way, "distinctiveness" - is giving the claimed designation content that is different from the content of all previously registered or traditionally existing designations.
  5. Trademark registration is a legal confirmation of the right of ownership of a designation. In Russia, the registration of trademarks is handled by Rospatent.

As mentioned above, a trademark is an instrument of individualization of goods or services. It logically follows from this definition that it must be unique, that is, it must possess distinctiveness. Otherwise the claimed designation cannot fulfill the function assigned to it and cause consumers to associate it with the goods of a particular manufacturer.

Only the employees of the Patent Office during the examination determine whether the trademark (more precisely - its design) has distinctiveness. If it is found that the draft trademark does not meet the uniqueness requirements, registration will be denied.

What signs can and cannot be registered as a trademark

The creation of a trademark is a creative process and the variety of applied-for designations is great. The law does not give a list of recommendations for the components of trademarks, but contains restrictions. Violation of these requirements is a ground for refusal of registration of the object as a trademark. For ease of understanding the grounds for refusal of registration of a trademark are divided into absolute and relative.

Absolute grounds for refusal of trademark registration

Absolute grounds for refusal of state registration of a trademark cover all those cases where in principle the principle of distinctiveness is violated.

The registered designation cannot evoke an unambiguous association with a certain product.

For example, a color or set of colors cannot be registered as a trademark unless it has been proven that the color has acquired distinctiveness of the designation before the filing of the application.

In the UK, Cadbury tried to obtain the exclusive right to use a certain shade of purple in the packaging of its products (baby food). It was rejected because the color itself is present in various objects, including those of natural origin, and cannot indicate the product.

The draft trademark is identical to the symbols of the state, administrative-territorial unit, political, public, religious organization

For example, the emblem of the Russian Federation or the symbol of the Red Cross cannot be registered as a trademark, as they evoke an association with the state and the organization, rather than the goods. At the same time the said symbols and names may be included in a trademark, provided that they do not occupy a central and dominant position, do not mislead the consumer, and the applicant has received permission to use state symbols. An interesting example in this sense could be the registration of the trademark of "Russia Airlines".

The registered designation of this legal entity contains the name of the state, moreover - it occupies a dominant position. However, not only the name itself is registered as a trademark, but also the font, the additional symbol on the left side, and the color and arrangement of elements. The word "Russia" itself is not an object of protection of intellectual rights - it is included in the trademark as an unprotected element.

A trademark represents or is based on a common symbol traditionally associated with a certain product, service, phenomenon

It is unlikely that a crosswalk sign, for example, can be registered as an applied-for designation. Because it already has a generally accepted meaning. Or the "Caution, fragile" sign, which is put on the package during shipment, for a company manufacturing tableware. You can't trademark the fire warning symbol "Flammable", not even for a firm that manufactures and sells fuel briquettes. This restriction comes close to another:

A trademark should not specify the properties of goods, indicate their origin, conditions of sale, and the like.

Because the purpose of the registered designation is fundamentally different. A trademark is not a means of information. It performs the function of individualization of goods, and the consumer associates it with the goods of a certain origin and quality.

You can't register as a trademark and therefore prohibit other manufacturers from using the phrase "non-GMO" to describe their goods, for example. Or "made from 100% Arabica". Even if the product really does not contain GMO or coffee is made from pure Arabica beans, this does not mean that the same product cannot be offered by other manufacturers. And if it can offer it, it has the moral right to convey this information to the consumer. In other words, the registration as a trademark of textual information about the characteristics of goods is contrary to the law and the public interest as a whole.

Nevertheless, elements characterizing the properties of products or services may be included in the designation as unprotected elements. In this case the trademark containing them as a whole will have protectability.

It is not allowed to include in a trademark information that misleads the consumer: for example - "Italian little", although it is produced in the Russian Federation. But if the manufacturer can explain logically what caused such a definition (perhaps the purchase of production technology or other weighty circumstance), then the definition may be included in the trademark.

Separately, it is worth mentioning cases where the trademark design...

It is immoral in terms of modern society

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A sign that contains obscene language, calls for discrimination and violence, or otherwise violates the moral standards of the cultural majority of the country should not be registered.

Relative grounds for refusal of registration of a trademark

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The distinctiveness of a trademark is lost along with its uniqueness. In other words, the presence of two identical or similar to the point of indistinguishability trademarks is not allowed. The decision in this matter is taken by the examiners on a case-by-case basis as a result of a substantive examination that must be conducted before registration.

In the regulatory framework there is no clear explanation of what is "similarity to indistinguishability" (otherwise - "to the point of confusion") and how it differs from equivalence. That is why the human factor plays a major role here, as strange as it may sound with regard to expertise.

Example: everyone knows "Pepsi" and "Fanta" drinks. However, in 2005 colored carbonated drinks "Fanfa" and "Pepti" appeared on Ukrainian market. Their packaging used the colors and style of drawing, reminiscent of the design of "Pepsi" and "Fanta". Many customers were unable to tell the difference between these productsы.

Example 2: Сhocolate "Alina". The packaging of the product depicted a girl in a national Russian costume. The appearance of this product on the market caused a lawsuit. The plaintiff was the manufacturer of the popular chocolate "Alyonka", JSC "Moscow Confectionery Factory "Red October", which considered "Alina" to be an unfair competitor. The claim was satisfied.

Example 3: "Telegram" vodka appeared on the supermarket shelves in Tashkent. The packaging of the product is decorated in the colors and style of the trademark of the social network. The producer of the product is the Tashkentvino Combine. There was no court proceeding on this issue, as it should be initiated by the interested party.

Conclusion

Checking the trademark submitted for registration for distinctiveness - substantive examination - is the longest stage of preparation for registration. It can take up to 12 months. The examination shall be paid by the applicant irrespective of its results.

In case the decision to refuse the registration is taken, the applicant receives the conclusion of the examination which must be accompanied by the table of companies and their trademarks in which unacceptable similarity with the project was found.

Due to these circumstances, before submitting documents for registration, it is recommended to undergo a preliminary examination by the patent office "Pervoistok". It takes much less time and costs less. As a result, you can correct the defects in the trademark development before the official examination of Rospatent reveals them.

Pepsi" and "Fanta" drinks are known to the family. However, in 2005 colored carbonated drinks "Fanfa" and "Peptic" appeared on Ukrainian market. Their packaging used the colors and style of drawing, reminiscent of the design of "Pepsi" and "Fanta". Many customers were unable to tell the difference between these products

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