Registration of trademarks and patents

SERCONS provides legal protection of the brand, logo, slogan or product name under which the sale is carried out, as well as patenting the device, method, industrial design by organizing the procedure for state registration of a trademark, patent for an invention, utility model or industrial design in Rospatent of the Russian Federation.

Registration of a trademark and patent can be carried out on the territory of the Russian Federation as well as abroad by submitting an international application to the international Bureau of WIPO (World intellectual property Organization) under the Madrid system for registration of TM or under the PCT system (Patent Cooperation Treaty) for registration of a patent for an invention, under the Hague system for registration of an industrial design.

What is a trademark?

A trademark or trade sign is defined as the individualization of goods of legal entities or individual entrepreneurs. Simply said, a single name, image or logo combines a group of products or a line of activity inherent in one entity, which has the right to independently dispose of them, use them, as well as prohibit its use by other figures in a similar field.

Types of trademarks
Despite the variety of already registered signs, classification is based on 3 main types:

1. Verbal
2. Visual
3. Combined

Due to the abundance of trademarks, there is a high probability of finding similarities and identities, which will serve as a reason for refusal in Rospatent.

Trademark registration process

According to the rules of trademark registration, the procedure for obtaining a confirmation document for the possession of an exclusive distinctive element or group of such elements takes place in 10 stages:

1. Analysis of the trademark protection capacity. Check that it meets the absolute grounds. Identify the reasons for obtaining a possible refusal.

The procedure takes no more than 1 business day

2. Distribution of the declared list by trademark registration classes. The classification process takes place within 1 business day
3. Verification by which is carried the verbal designation of a trademark. The procedure is performed using a paid database of already registered trademarks, called FIPS. At the end of verification, a report is provided. It takes about 2 business days to receive it
4. Providing details which are used to pay the state fee for conducting a substantive and formal examination. Takes 1 business day
5. Preparation and submission of an electronic application for registration of a designation in the state system as a trademark. It will take no more than 2 business days
6. Receiving the notification and forwarding it to the requester. The notification follows two ways: The first – the application is accepted and registered, and its registration number and date of acceptance are also specified

The second – is that the application was rejected to register, listing the grounds and reasons of the refusal.

It takes about 2 weeks to receive the notification.

7. Formal expertise. The research is carried out by a special Department of FIPS, which checks the availability of all necessary documents and the payment of state fees. The examination is carried out within a month from the moment when the payment of the state fee was confirmed
8. Substantive expertise of the application, which is also conducted by the FIPS Department. During the study of the provided data, experts check the compliance of the claimed trademark with the requirements of the legislation of the Russian Federation. The procedure is carried out within 12 months from the day when the application was accepted after formal examination
9. Providing the details to pay the state fee for trademark registration, sending the payment receipt with the Bank institution’s mark to the FIPS. Both procedures take no more than 2 business days
10. Getting and checking the certificate of trademark ownership, sending the document to the customer. Receipt of the document is possible after 2 months from the date of submission of the payment receipt

At the end of all stages, the customer receives a state Certificate for the trademark, the validity of which is 10 years. It can also be extended after this period, on condition that the state fee has been paid.

The result is:

• State trademark certificate (the validity period of the trademark certificate (hereinafter TM) is 10 years, which can be extended every 10 years as a subject of state duty payment)
• Patent for an invention (validity period-20 years)
• Utility model patent (validity period-10 years)
• Industrial design (validity period-25 years, subject to annual payment of maintenance fee)

How to apply for trademark registration

• Image/trademark writing
• List of goods/services that the trademark will protect
• Details of the future copyright holder

Procedure for registering the results of intellectual activity or means of individualization

1. Analysis of trademark´s protection. Check whether registration can be refused on absolute grounds. Terms – 1 business day
2. Classification of the list of goods / services of the manufacturer in accordance with the ICTU (international classifier of goods and services). Terms – 1 business day
3. Verification of the verbal designation on the registered TM FIPS field database. The report is provided. Terms – 2 business days
4. Providing details for payment of state fees for formal and substantive examination of the trademark. Terms – 1 business day
5. Registration and electronic filing of an application for state registration of a designation as a trademark. Terms – 2 business days
6. Receiving and forwarding to the customer

1) Reception of notification and registration of application´s with indication of number and receiving date of the application;

or 2) notification of refusal in reception of the application, indicating the reasons for the refusal. Terms – 2 weeks

7. Formal expertise – carried out by the relevant division of the FIPS – which checks the payment of fees and the availability of documents. The maximum terms of formal expertise is one month from the date of payment fees confirmation
8. Substantive expertise of a trademark application is conducted by the FIPS. During the substantive examination of the application is checked the conformity of the designation applied for registration as a trademark with the requirements of the legislation of the Russian Federation. The maximum terms of substantive expertise is twelve months from the date of acceptance of the application for consideration based on the results of formal examination.
9. Providing details for payment of the state fee for trademark registration and forwarding a payment order with the Bank’s mark to the FIPS. Terms – 2 days
10. Receipt, verification of the trademark Certificate and sending it to the owner. Terms – 2 months from the date of sending the payment document.

Which documents should be prepared?

To register a trademark, should be prepared the following list of documents:

• Details of the applicant company, contact phone number and e-mail address, on the basis of which the contract will be concluded
• The image of the trademark
• Description of the goods, services, or activities that will take place under the declared element
• Certificate with OKPO codes (Russian Business and Organization Classification codes)
• Power of attorney issued to the patent office for representation of the customer’s interests in the Patent office of the Russian Federation

What is needed to apply for a patent

• Information of the author’s composition and copyright holder: description, drawings, a brief summary
• Patented product Introduction into civil circulation less than 6 months before filing the application

1. Providing information about the author’s composition and copyright holder, descriptions, drawings, and a brief summary. Payment for the company’s services for conducting a search for patent purity and identifying analogues.
2. Conducting a patent search for patent purity with the provision of a search report and recommendations for further actions. Terms 1 – 3 weeks
3. After the payment of services and state fees is conducted preparation and filing of an application in FIPS. Terms 1 – 3 weeks
4. Keeping of records until receiving the decision on the issue \ refusal to grant a patent.

From 8 to 12 months. (Invention); 6-8 months (utility model)

5. Providing details for payment of the state fee for patent registration and sending a payment order with the Bank’s mark to the FIPS. Terms – 2 days
6. State registration of an invention in the State register of inventions of the Russian Federation, publication of information about the grant of a patent in the official Bulletin of Rospatent and grant of a patent. The term for issuing (sending) a patent is five working days from the date of publication of information about the grant of a patent in the official Bulletin of Rospatent.
7. Receipt, verification of the patent for the invention \ industrial design and sending it to the owner. The term is 1 month from the date of sending the payment document.

Advantages of registering with us

• Engineers assistance – on preparation of technical descriptions and drawings
• Confirmation of uniqueness – assistance in the preparation of technical descriptions and drawings by engineers and patent attorneys
• Experience in the field of patenting – express search and identification within one day of identical and / or confusingly similar registered trademarks may cause rejection by the patent office

Correspondence with the office is carried out by the best patent attorneys of the Russian Federation having applied experience in the patenting Department of Rospatent
Electronic filing of an application reduces the state fee for the applicant by 30%
The trademark application is submitted within 2 days
Correspondence with the office is carried out by its patent attorneys, and in the case of international trademark registration – by patent attorneys-partners on the territory of foreign States.

Why is needed to register intellectual property

Marketing perspective
– Successful sales, the company’s products and services must be associated with a specific brand in the consumer’s mind
– A non-proprietary product or method of manufacturing is easily available to competitors.
Accounting point of view
– A trademark and patent is an intangible asset of the company. From the point of view of Finance, any asset, regardless of its “materiality”, is a source of profit for the organization.
Legal point of view
– The brand represents intellectual property (IP). The brand owner is the owner of the exclusive rights and can dispose of the exclusive right in any way that does not contradict the law. The IP can also be used as a collateral.

Which documents should be prepared?

• To register a trademark, should be prepared the following list of documents:
• Details of the applicant company, contact phone number and e-mail address, on the basis of which the contract will be concluded
• The image of the brand
• Description of the goods, services, or activities that will take place under the declared element
• Certificate with OKPO codes (Russian Business and Organization Classification codes)
• Power of attorney issued to the patent office for representation of the customer’s interests in the Patent office of the Russian Federation

What does trademark registration provide?

The guarantee of trademark protection of quality products or services provided by the company – is an official certificate obtained by registration with the office of the Russian Federation. The advantages of the document also include:

• Achieving visual identification and recognition of the product/service
• Improving the company’s image as a proven and reliable enterprise, and gaining the trust of the population
• Great prospects for business promotion, both in the domestic and international markets

In order for the claimed trademark have the expected effect, it should base on:

• Memorability and positive associations that can and will accompany the marked product
• Easy and competent use, which guarantees prosperity in advertising and marketing, leading to brand recognition and popularity
• Security, based on high-quality professional development and timely registration giving the necessary copyright ownership

Rights of the trademark or patent owner

The owner is entitled to demand at his option from the infringer compensation in the amount from ten thousand rubles to five million rubles, double the amount of goods that are illegally placed trademark, or double the price for the right to use the trademark, determined proceeding from the price which under comparable circumstances is usually charged for the lawful use of the trademark; double the cost of the right to use the invention, utility model or industrial design, determined based on the price that, under comparable circumstances, is usually charged for the lawful use of the corresponding invention, utility model or industrial design in the manner used by the infringer.

Using a trademark without registration

Trademark registration is a difficult, long and painstaking multi-stage process that not every entrepreneur will to implement, which threatens with the appearance of fakes, passing under the name of his company. In the event of such situations, there are no legal grounds that could prove that the trademark belongs to this particular entrepreneur, and its products are produced only of proper quality. Not an exception are large organizations that, on the one hand, are not particularly affected by the actions of unscrupulous manufacturers, but on the other – the reputation of their original products may suffer.

There are cases when one leader turned out to be faster than another and registered the already popular competitor’s sign in his own name. A negative impact can also be caused by the very emergence of entrepreneurs who violate the law, who post false and incorrect information in relation to the original product. If such situations occur, the true owner of the mark may be denied registration of the trademark on the basis of false information. In this case, is needed to take permission from the violator or prove the monopoly of their rights, which is much more difficult than the first option. It can also be a trouble if there is set a public status for a unique logo. This situation completely deprives of the opportunity to protect your rights under the law. Having achieved fame for an unregistered trademark, its creator can suffer significant losses due to the appearance of unscrupulous entrepreneurs who can use its big name to sell their low-quality products.

Criminal liability for illegal use of means of individualization of goods (works, services)

Article 180 of the criminal code of Russian Federation provides for a fine ranging from one hundred thousand to three hundred thousand rubles or the salary, or other income of the convicted person for a period up to two years, or by compulsory works for a term of up to four hundred eighty hours, or correctional labor for a term up to two years, or hard labor for a term up to two years, or by deprivation of liberty for a term up to two years with a fine in the amount up to eighty thousand rubles or the salary or other income for a period of up to six months.

When is not possible to register a trademark

Registration of a unique designation cannot be performed if there is a similarity with other signs due to the close location of letters or phrases, semantic meaning or graphic image.

In order to avoid rejection by the Patent office, the following should not be used when creating a trademark:

• Violation of moral requirements
• Possibility of misleading
• Information about the place of manufacture and type of product
• The symbols and the names of the States
• Logos and names of world-class organizations
• Signs that are similar to registered brands of other companies, regardless of their popularity
• Trade name
• Literary works or masterpieces of art

What to do when found similarity of signs?

If such situation occur, there are several ways to solve it:

• Obtaining a written consent from the owner of an already registered logo
• Cancellation of the previous registration
• Updating your own notation

To achieve the desired result is only possible if the competitive logo has not been used for a particular line of business during 3 years.

Usually, this method is resorted to in the event of refusal from the owner of the registered mark, or by requested an unacceptable fee for his consent.

When applying to the patent office, there is a service of studying trademarks or achieving results through the first two points.

Is it possible to register a trademark independently?

Having full confidence that the applicant can carry out a correct check of the uniqueness of the logo, write the statement correctly choose the classes that will determine the goods or services under one brand and to answer the legal issues of Rospatent, it is possible to complete the registration process without assistance.

For full confidence that the procedure will be successful, it is better to contact the patent office that specializes in providing services for trademark registration.

The benefits of registering with SERCONS:

1. Certified engineers assistance: composing technical descriptions and drawings
2. Confirmation of uniqueness, accompanied by engineers and patent attorneys of the company
3. Qualified employees having applied experience in the Rospatent Department of patenting
4. Reduction of state duty by 30% due to electronic filing of the application
5. A short time for application
6. Company’s employees support the procedure of registration regardless the place – domestic or international