In 2022, a law on the registration of trademarks by individuals was adopted, which significantly increases the opportunities for the development of small businesses, but at the same time has disadvantages

According to Ilya Ishinov, Director of the Erfis Patent Bureau, one of the significant disadvantages is the increase in the number of abuses of the exclusive right to trademarks by persons specializing in bringing claims against entrepreneurs/companies in order to obtain monetary compensation.

In Russia, trolling is most active in the field of trademarks (a “troll” records the designations of third parties that are actively used, but are not registered as trademarks and registers them in his own name) and in this case the entrepreneur risks not only losing the designation, but also incurring significant financial losses. To avoid such a situation, it is necessary to register it in a timely manner. Priority is assigned to a trademark from the moment the application is filed, which makes it possible to prevent competitors or patent trolls from registering another designation that is identical or confusingly similar to it.

A troll can be detected at different stages of trademark registration:

  • If it was possible to detect a troll at the stage of filing an application for registration of a designation, then it is possible to prevent it before Rospatent makes a positive decision by submitting an appeal to Rospatent with reasoned arguments about misleading, for example, the consumer regarding the manufacturer of the product or the similarity with the brand name.
  • If a trademark has already been registered by a troll, you can try to cancel it by presenting significant evidence when filing an opposition with the Chamber of Patent Disputes (Rospatent).
  • If the decision of the patent board is made in favor of the “troll,” then you can file a claim with the Intellectual Rights Court (to challenge the decision of the Chamber of Patent Disputes) and/or with the Federal Antimonopoly Service (FAS) with a demand to recognize the troll’s actions as an act of unfair competition. After a positive decision by the FAS, the violator may be brought to administrative responsibility, and the entrepreneur may again appeal to Rospatent with an objection, attaching the FAS decision to it.

Thus, in order to avoid such controversial situations, you should register a trademark in a timely manner, and if the moment is missed, then it is extremely important to defend your designation using all possible methods, but first correctly assessing your chances of success.

Ilya Ishinov

Source: Business Petersburg