Almost every legal entity or individual entrepreneur has logo, which is an important element of their branding and marketing, and also serves to improve product recognition in the market among competitors. The logo is applied to products, placed in advertising materials, and used on the company’s websites and social networks. This is what consumers focus on when choosing a product or service.
The process of creating a high-quality logo requires the involvement of professionals and is associated with financial and time costs, and since it, as a result of the creative activity of the author, is an object of intellectual property, it is important to know and take into account the features of legal protection when ordering a logo.
Before you start working on a logo, it is important to study the market and the logos of your competitors so as not to create a similar one and not violate the rights of other companies.
When ordering a logo, it is important to indicate in the copyright contract with the designer that the exclusive rights to it pass from the author to the customer. Without this point, safe use of the logo is problematic. In addition, the contract must indicate that the designer is responsible for the use of other people's copyrights when working on the logo and in the event of a claim from a third party, damages for poor quality work will be recovered from him. A detailed technical specification must be attached to the signed author's contract.
After the work on the logo is completely completed and the order is received, it must be registered as a trademark (a combination of a logo and a verbal designation), having first checked it for uniqueness in the Rospatent database, taking into account the provisions of Art. 1483 Civil Code of the Russian Federation. For verification, they use not only paid, but also free services with information about registered trademarks.
If the check for the uniqueness of a trademark (TM) was successful, then an application for its registration is submitted to Rospatent indicating the classes of the International Classification of Trademarks, with a payment document confirming payment of the fee for the examination and other documents required by Rospatent. Submission of a set of documents is possible both electronically and on paper.
After successfully passing the formal examination, the substantive examination and a positive decision being made by Rospatent, the trademark is registered, and its owner, after paying the state fee for inclusion in the State Register, receives a registration certificate and, accordingly, exclusive rights to it.
If you receive a refusal from Rospatent, you can try to register the logo as a trademark:
- modify it or change it completely;
- change the classes of the ICGS so that there are no intersections with similar objects of intellectual property rights;
- cancel an already registered similar mark if it can be proven that the owner has not used it for three years in a row;
- prove that the trademark has become recognizable to consumers even before filing an application for registration, and then file a second application;
- contact the copyright holder of a similar mark and try to obtain written consent from him to register yours.
It should be noted that depending on whether
logo registered as a trademark
or not, different legal rules come into play when defending it.
Thus, if the logo is not registered as a trademark, it still refers to an object of intellectual property that is transferred to the copyright holder from the performer under a copyright agreement or as a service work. And in case of violation of an exclusive right (use of someone else’s logo without consent), liability arises in accordance with Art. 1301 of the Civil Code of the Russian Federation.
If the logo is registered as a trademark, the provisions of Article 1515 of the Civil Code of the Russian Federation are applied to the violator. That is, its copyright holder receives a monopoly on the use of the logo as part of a trademark, and in the event of a violation of its exclusive rights, compensation can be recovered from the violator.
In conclusion, I would like to say about the advantages of registering a logo as a trademark. For example, a registered logo can be used as collateral to obtain a loan or to attract investors and partners, since it appears on the company's balance sheet as an intangible asset, which makes it more attractive to business.
However, to successfully and effectively resolve disputes related to the development and use of a logo, it is necessary to involve such specialized specialists as patent attorneys and intellectual property lawyers.
