Distinctive power of a trademark call it the ability to individualize the goods marked by it from homogeneous goods of other manufacturers.
It is known that trademarks can be: verbal, consisting of letters, words, sentences and their combinations; pictorial (images of people, animals, objects, compositions of lines, various figures, etc.); combined, that is, consisting of various elements of verbal and figurative symbols, presented in unique color combinations; sound, changing, color, light, holographic and even in the form of smells.
If a trademark does not have distinctiveness, the applicant will be denied registration. So, for example, in paragraph 1 of Art. 1483 of the Civil Code of the Russian Federation specifies the following absolute grounds for refusal to register marks that do not have distinctiveness. For example, a refusal may be obtained if the signs have come into general use to designate goods of a certain type or are generally accepted symbols and terms that characterize the type, quality, purpose, value, place and method of their production or sale, and also if the signs represent the form of the product, determined by its property or purpose.
In addition, simple geometric shapes, lines, numbers, individual letters or combinations thereof, which are not perceived as a word, do not have distinctiveness.
However, such designations can be registered as trademarks if their distinctive ability is acquired as a result of prolonged and effective use, and the consumer perceives this designation, although consisting only of non-protectable elements, as the applicant’s trademark (Clause 1 of Article 1483 of the Civil Code of the Russian Federation).
Designations that contain advertising slogans are often submitted for registration. Such designations are easy to remember and have an advertising effect on the consumer. When conducting an examination to determine their distinctiveness, their originality, memorability and semantic capacity are taken into account.
If Rospatent refuses to register a trademark, it is required to prove its distinctiveness. To do this, it is necessary to prepare a package of documents confirming its distinctive ability:
- duration and intensity of use of the designation;
- information about the territories and volumes of sales of goods marked with the trademark;
- information about the advertising used (spending on advertising, its duration and intensity), which is an important indicator of the promotion of goods and services on the market;
- results of sociological surveys on the degree of consumer awareness about the brand and manufacturer of goods;
- data on the number of publications in the open press regarding products marked with this designation, about the manufacturing company, etc.;
- information about holding exhibitions, forums, conferences where the trademark was presented to a wide range of people.
All evidence collected in full is taken into account when making a decision on registering trademarks.
It must be remembered that the assessment of evidence of the distinctiveness of a trademark is subjective, and therefore the expert is obliged to strictly and responsibly follow Russian legislation in accordance with Art. 1483 of the Civil Code of the Russian Federation, taking into account the criteria defining unprotected elements, and if the designation does not meet these criteria, then it has distinctiveness, and therefore can be registered, and its copyright holder will receive competitive advantages in the market for his business.
