Trademark expertise

In order to obtain a trademark certificate, a company must submit an application to FIPS. When examining the application, Rospatent experts will conduct an examination, the purpose of which is to confirm the uniqueness of the submitted designation. The rules of trademark examination are described in this article.

Why expertise is needed

The law defines a trademark as a means of individualization of products of legal entities and entrepreneurs. This object can be expressed in graphic, verbal, combined and other forms. Even before filing the application it is necessary to make sure that the designation is unique, otherwise the examination of the application will reveal similarities with a previously registered object.

At the first stage of application examination a formal examination will be carried out. Its purpose is to check the completeness of the documents and the correctness of their completion. If the applicant complies with all the requirements to the documents, the examination of the designation will be carried out. The key points which will be taken into consideration during this procedure include:

• comparison of the submitted designation for similarity with previously registered objects;
• identification of circumstances that prevent the registration of exclusive rights to the trademark (for example, if the means of individualization misleads the consumer, the registration of the mark will be denied);
• establishing the uniqueness of the submitted designation is the basis for a positive decision on the registration of the object in the register of trademarks, after which the right holder will receive a certificate.

For expert activities application materials are used - the register of groups of goods according to the Nice Classification for establishing legal protection; the designation itself, expressed in textual, pictorial or other form; a description of the trademark.

Rules of examination

At various stages of trademark registration the applicant will have to pay mandatory fees. When registering an application you will have to pay 2450 rubles, for each class of the Nice Classification over five extra 700 rubles will be paid. The basic fee for similarity examination amounts to 8050 roubles, however for each additional class of goods over one additional fee of 1750 roubles shall be paid (hereinafter the fees are indicated with 30% discount for electronic filing of the application).

In the process of examination of a designation the following facts shall be established:

• whether the designation possesses distinctiveness with previously registered marks;
• assessment for the degree of similarity to the degree of confusion with the objects included in the Register;
• Establishment of the presence of grounds for refusal of registration - if the designation or its individual elements are false or could mislead about the product or manufacturer.

Another violation entailing refusal of registration is a contradiction of the presented designation to the public interest, signs of humanity and morality. During the similarity check the priority of the previous applications, including those on the international level, will be taken into consideration.

A negative decision to refuse registration can be appealed in court. If the FIPS experts have no claims on the merits of the filed trademark, the decision on the registration of the trademark in the Register will be made. The applicant will have to pay another fee of 12600 roubles. A surcharge of 700 roubles is added for each class of the Nice Classification over five. The said fee includes registration and issuance of the certificate.

Rules of examination