How is better to register a trademark?

Kurdyukova N.N., Candidate of Laws (Ph.D. in Law equivalent), Russian patent attorney

The purpose of trademark (service mark) is to individualize goods and services of individual entrepreneur or legal entity. For the purpose of the present article trademark shall mean both registered trademarks and designations, which are currently not registered as a trademark.

It is possible to register as trademark different kinds of designations and their combinations. However, before the filing of trademark application for registration of one or another designation several matters shall be resolved.

  • firstly, it shall be determined which particulars good(s) and service(s) you would like to promote with a help of the trademark;
  • secondly, how exactly would look like trademark on the product, article, website, advertising and other materials;
  • thirdly, to determine the territory on which is planned to use trademark as a mean of the individualization;
  • fourthly, to analyze which designations/trademarks are used by competitors, which associations can have consumers related to the trademark, to conduct a trademarks search or more precisely search on identity and similarity of your trademark with trademarks of the third parties.

I would like to give a few basic recommendations for potential applicants when determining the list of goods and services for registration of a designation. On the one hand, the list shall cover those goods and services that your company has not yet used on the market (in civil circulation), but only plans to use it in the next year or two. On the other hand, there is no need to try to include all 45 classes in the International Classification of Goods and Services (Nice classification) there. In the event that you plan to hire a full-time or freelance lawyer or patent attorney to apply for the registration of a trademark, at a minimum you must give the names of your goods or services (sometimes it’s better to illustrate them) so that you can properly classify goods and services or check the existing classification.

Now, with regard to the registration of verbal or combined notation with a verbal designation. At the preliminary stage, you should have several variants of the verbal designation for registration as a trademark. It is desirable that it was clear which of them has priority, and which is secondary.

At the stage of trademark search, provided that there are no absolute grounds for the registration of a designation as a trademark (such as the lack of distinctive ability, and also if the designation is universally used, generally accepted symbol and term, characterizes the product (s) or represents a form goods), some of the notations will most likely not be recommended for registration for some of the goods and / or services. Accordingly, you will have to choose from those signs, when conducting a search, for which no identical or similar to the degree of designation has been identified.

As a basic one, it is necessary to register a verbal trademark in the black and white version of the so-called standard characteristics. This allows you to immediately achieve the following: get the maximum volume of protection, as well as postpone the issue of determining the best version of the logo for applying to the product or placement on the site or promotional materials.

All combined variations are better to register a little later. Here also it is necessary to take into account that sometimes a color logo is better register for a narrower list of goods and / or services. For certain, groups of goods, it may simply not be suitable (it is poorly printed on this kind of material, too large to be placed on such a product and other).

Of the advantages of registering the color combination, you can note the following: better serves to protect the brand from counterfeit, because it makes it easier to identify the signs by which customs and other authorities, as well as organizations, can distinguish counterfeit goods from non-counterfeit goods; allows you to protect brand from copying counterfeiters not only of the verbal designation, but also of your corporate colors placed on the product. In other words, the combination of trademarks serve better for the purpose of protecting the brand from counterfeiting, as well as compliance with the rules and guidance for the use of the trademark by the partners of the company.

In certain cases, registration of a trademark is possible only on the condition that evidence is provided that the trademark acquired the distinctive ability before the priority date of the application and it is able to individualize the goods and services of the applicant. This is true for trademarks, which, although they characterize the goods or services, but as a result of active and widespread use are associated with the ordinary consumer with a particular company. As an example, the trademark “PHOTOPROJECT” for photographic products can be cited.

When forming a set of documents and using a trademark, it is important that the same legal entity and / or individual entrepreneur be indicated in the advertising campaign itself and in all advertising documents, contracts for conducting surveys with public opinion. If your trademark has gained sufficient popularity in the market and, in your opinion, has acquired a distinctive ability, you can think about the registration of this trademark.

Let’s assume that the designation is chosen and your sales department believes that it is necessary to register it as a trademark on the territory of the EU, Russia and India. What alternative ways to register a trademark do you have in this case? You have at least four options for registering trademarks:

  •  to file for registration three separate applications (one regional – European and two national);
  • to file an application in one of the countries of choice, and in others within 6 months using a convention priority;
  •  to file one basic application and one international application with the indication of two other countries;
  • to file individual applications to the national departments of the EU countries, as well as two national applications in Russia and India.

The choice of a particular option will depend on a number of factors. Among them are the following: the objectives of registration, budget and timing.

Advantages of the Madrid system of registration of a trademark

If a company needs to register a trademark on the territory of several countries, it makes sense to consider the option of filing an international application under the Madrid system of registration of a trademark. The Madrid Union and the Madrid Trademark Registration System have existed since the end of the 19th century and, as of the beginning of 2018, covered 116 countries or 80% of international trade[1].   The Madrid system is based on two fundamental universal international instruments – the Madrid Convention on the Registration of Trademarks of April 14, 1891 and the Madrid Protocol of June 27, 1989. In addition to them, the General and Administrative Instructions should also be noted, in which individual procedures within the Madrid system are detailed.

Among the advantages of the Madrid system are the following:

  •   Filing of two applications (one national and one international) instead of three or more applications.
  •  Ability to more easily monitor and administer your trademark.
  •  Saving money for registration of trademarks.

The following should be noted as disadvantages:

  • Law enforcement authorities in a number of countries are distrustful of international trademark registrations.
  • In some cases, additional costs arise in the form of extracts, certified copies, and the transfer of international registration into the national language of the contracting state.

Advantages of national trademarks registration procedure

As a rule, shorter terms of registration of trademarks on the national procedure.

It is easier to implement measures and actions to protect the trademark.

No need to translate the certificate into the national language of the contracting state.

Regional trademark registration systems

To date, there are three large regional systems that, among other things, are involved in the registration of regional trademarks. Among them there is one European and two African systems.

Granting of European trademarks is handled by the European Union Intellectual Property Office (EU), the abbreviation (EUIPO). This system allows you to obtain a trademark valid in the territory of all countries of the European Union. As of July 2018, there are 28 such countries[2]. At the same time, if a refusal to register a European trademark is received; such a mark can easily be transformed into national trademark applications. The only thing that must be taken into account is that some “free” cities in Germany are not covered by this registration and for protection in them, it is necessary to file a national application.

The registration of the trademark under the Banjul Protocol of 24 November 1995 in the African Regional Intellectual Property Organization (ARIPO) (the English name of the African Regional Intellectual Property Organization (ARIPO)) is in some extent similar to the Madrid system by its requirement of indication the contracting States and also the time period for receiving notifications from national authorities of the Contracting States. As of 2016, the following States have signed the Banjul Protocol: Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Tanzania, Uganda, and Zimbabwe [3].

Another regional system for the protection of intellectual property is the African Intellectual Property Organization (OAPI). It was created based on the Bangui Agreement of March 2, 1977, revised February 24, 1999. According to it, as a rule, one application for the registration of a trademark is filed directly with the OAPI, except when one of the member states does not require filing applications through their national office. As of 2016, the following States are members of OAPI: Benin, Burkina Faso, Cameroon, Comoros, Guinea-Bissau, Cameroon, Congo, Côte d’Ivoire (b. Ivory Coast), Mauritania, Mali, Niger, Senegal, Togo, the Central African Republic, Chad, Equatorial Guinea (most countries are in the French franc (CFA).

Thus, the choice of a particular way and method of registration of a trademark directly depends on the goals and tasks or problems that the applicant wants to solve by registering a trademark. In case you have any questions or problems in registering trademarks, please contact us by e-mail: osnpatent@mail.ru or contact form on the site.

[1] See more about Madrid system members by the following link http://www.wipo.int/madrid/ru/members/

[2] See more about European trademarks on the following website:   https://euipo.europa.eu/

[3] See more about Banjul Protocol  on the following link   http://www.aripo.org/http://www.wipo.int/wipolex/en/other_treaties/text.jsp?file_id=301521