Registration of a positional trademark, as an object of intellectual property, as well as all types of designations, allows you to protect your business and ensure its competitiveness
Before filing an application to register a designation, it is also important to:
- conduct research to ensure that the created mark does not violate the rights of owners of other brands and has distinctiveness;
- determine the classes of the ICGS for goods or services for which the position mark is registered;
- include in the application a graphic image of the positional trademark with a description of its characteristics and design, as well as attach a list of goods and services for which it will be used;
- indicate the territory where the designation will be used.
The application is submitted to the competent authority for intellectual property (for example, to Rospatent in the Russian Federation), where a formal examination is carried out for the presence of the necessary and correctly executed documents and a substantive examination, within which the mark is assessed for compliance with the requirements of the Civil Code of the Russian Federation and the absence of similarity with other registered marks.
After a positive decision is made, the owner of the positional trademark is issued a certificate of registration.
Particular attention is paid to indicating the exact location of the positional trademark on the product, and in the event of a legal dispute, you must be prepared to provide evidence that its localization really matters. Otherwise, it loses its uniqueness and distinctiveness, and therefore is not subject to legal protection. It should be remembered that a positional trademark must be used only for those goods or services for which it is registered, otherwise its use may be considered illegal use.
Since a positional trademark plays an important role in a company’s marketing strategy, it is necessary to provide it with reliable protection, not forgetting to renew its validity in a timely manner, and take into account all its features when using it.
For example, the main feature of a positional trademark is its fixed position on the product, which may limit the ability to change the location or orientation of the mark without violating the conditions of registration. Moreover, it is very difficult to prove that the specific position of a mark on a product is critical to consumer perception.
Also, consumer interest in a positional trademark may be lost if it is invisible on the product because it consisted of many small elements with an unsuccessful color scheme.
That is, despite the difficulties of registering position marks, caused by the lack of clear criteria in the legislation for determining their distinctiveness and clearly formulated and substantiated evidence about the need for the location of marks on the product, as well as due to subjectivity in assessing their protectability, they are found quite often in the modern business world.
However, their successful registration is a complex and time-consuming process, since the legislative framework regarding them is insufficient, and judicial practice is small compared to traditional trademarks. To determine the prospects for the protectability of marks and obtaining a registration certificate, it is necessary to involve specialists in the field of intellectual property in order to avoid possible conflicts and litigation in the future.
