Registered trademark allows not only to reliably protect the business, but also, as an intangible asset, to provide the company with the opportunity to receive additional profit through concluding a license agreement or granting a franchise

Working on a trademark requires a lot of time, effort and the involvement of specialists from various fields, since a trademark must carry information not only about the characteristics of a product or service, but also be unique, original and attractive to consumers.

When submitting an application for registration of a trademark to Rospatent, the applicant may receive a refusal. Therefore, before submitting it, it is necessary to take into account the absolute and relative grounds for refusal, which are listed in detail in Article 1483 of the Civil Code of Russia. If absolute grounds for refusal are identified, then the trademark will not be able to be registered, but the opportunity to challenge and try to register the designation remains if relative grounds are discovered.

The absolute grounds for refusal to register a trademark, identified during the substantive examination, relate to the content of the designation and its design, that is, everything that distinguishes it from others similar goods and/or services. Among them:

  • designations that do not have distinctiveness according to paragraph 1 of Art. 1483 of the Civil Code of the Russian Federation (for example, the use of realistic or schematic images of goods, as well as individual letters of the alphabet or numbers without original graphic design and without semantic meaning);
  • simple indications of goods or services (for example, “milk”, “chocolate”, “notepad”, etc.);
  • generally accepted abbreviations and abbreviations (“VUZ”, CIS, St. Petersburg, etc.);
  • the presence of graphic or verbal designation of objects of cultural heritage;
  • designations affecting public interests or violating standards of morality and humanity;
  • conventional symbols and realistic images because they are generally known (for example, punctuation marks, a symbol used in email, geometric shapes and lines, or combinations thereof);
  • designations indicating the properties and type of goods;
  • trademarks that mislead the consumer or carry false information (for example, about the quality of the product or its properties) or are confusingly similar to an already registered designation or have signs of similarity to a well-known trademark;
  • information indicating the place of manufacture or origin of the product.

It is important to remember that the designation cannot consist only of unprotected elements in accordance with paragraph 1 of Art. 1483 of the Civil Code of the Russian Federation, for example, a trademark consists of generally accepted symbols and terms characterizing goods that indicate their type (simple names of goods - kefir, marmalade, butter, etc.), quality (best, natural, healthy, healthy, etc.), quantity (weight, volume, price of goods, production date), as well as property, purpose, time, place and method of their production or sale.

The applicant will receive a natural refusal to trademark registrationif all of the above unprotected elements occupy a dominant position in the designation. If they do not occupy a key position, then they can be included in the designation without providing it with independent legal protection, and therefore a monopoly on them.

However, there is an exception, for example, registration of a designation consisting only of unprotected elements is possible if it is well known to consumers as a result of use even before filing an application with Rospatent, that is, it has acquired distinctiveness.

It should also be noted that registration of a trademark may be refused if state symbols are included in the designation. Thus, according to Article 1483 of the Civil Code of the Russian Federation, official symbols (coat of arms, flag, the very name of the state, abbreviations of government departments, associations of states and international organizations) cannot be registered.

When undergoing a substantive examination, experts compare the designation not only with already registered trademarks, but also with those that are still at some stage of registration, as well as with the design and appearance of industrial designs, the owners of which have been issued a patent.

Relative grounds for refusal of registration may be associated with the presence of spelling errors in the designation, with the indication of surnames, first names or pseudonyms of famous personalities without their consent.

If a trademark resembles famous works of art or is associated with valuable objects of cultural and/or natural heritage, monuments, works and valuables from museums and collections, then using them in a designation without the consent of their owners or copyright holders is also prohibited.

In conclusion, I would like to add that refusal of registration is possible if the state fee is not paid on time, additional materials are not sent in a timely manner, responses to Rospatent requests or the presence of inaccurate data in the application when the postal address or other details are changed (in this case, a petition for amendments must be sent to Rospatent).