List of grounds for refusal of registration
The list of reasons for refusing registration is quite wide. At first glance, everything is clear, but in practice it turns out differently.Often there are designations whose compliance with the law cannot be unambiguously assessed. For example, is the designation “IDEAL” declared for a product – sunflower oil, indicating the quality of the product? Experts from different instances, including judicial ones, tried to answer this question by giving mutually exclusive assessments.
All applications for registration of trademarks require a preliminary study for compliance with the requirements established by law.
This is necessary so that in case of non-compliance with any requirements, you can make changes and remove obstacles before submitting the application.
Therefore, it is worth referring to a patent attorney who are experienced experts in the analysis of the conformity of designations and suggest how it can change the future trademark with minimal loss of graphic, semantic and phonetic features in order to meet the legal requirements with the maximum degree of probability.
What to do if you received a notification with reasons for refusal or refusal to register?
Situations are different. You could make a mistake, the expert could make a mistake in his conclusions, and maybe the expert reinsured and offers you a “dialogue” so that you can resolve his doubts.
The conformity assessment of a trademark declared for registration requires not only knowledge of the law and rules, but also knowledge of the practice of granting legal protection and extensive experience in this field.
Therefore, it is better to turn to patent attorneys who have a lot of experience in filing objections, help keep your designation clear, or tell you what steps you need to take to remove objections. Especially if a similar trademark is found.
Of course, time and money spent on development. But sometimes it is cheaper to make changes to yours than to sort out the relationship with the owner of a similar mark for a long time.
A case from practice. For the MTU-Inform brand, they came up with an excellent slogan “We connect. With success. ”And decided to register it as a verbal trademark. However, registration was denied because the designation was recognized by the expert as non-protectable. Attempts to prove to the expert that the meaning is unique did not lead to the result.
As a result, after long consultations with patent attorneys, the phrase was included in the corporate block. Attempts to use this slogan by someone else was not.
It’s not just the legal intricacies of ownership.
The professional community carefully monitors the mistakes of colleagues and joyfully discusses similar logos.
The most unfavorable event is when you have already begun the promotion, and your campaign is successful, the FIPS examination rejects the application. Do I have to change everything?
Or is it better to wait until the registration is over?
The risk is always present. Reducing the degree of risk is possible if you involve in the development of good developers who are professionally engaged in the development of brands.
Attempts to save money, attract freelancers, or create one yourself, often increase the risk of being refused registration.
At the development stage, you need to make sure that your future brand is truly unique, and get the results of a formal examination. As a rule, at the second stage of registration, the risk of being refused or comments due to a similar sign is much lower.
At the third stage, the actual registration of the trademark takes place and a certificate is issued. Finally, after a year (a little more or a little less), your trademark is legally protected.
The cost of registering trademarks consists of a state fee, which you pay in stages, and the cost of the services of a patent attorney.
Why is it better to use the services of a patent attorney?
A patent attorney will correctly fill out an application, select all ICGS classes relevant to your activity, will negotiate with FIPS, if during the registration process it turns out that your new trademark is similar to another, it will help to negotiate with the copyright holder of a similar mark. If you are not competitors, the copyright holder of a similar mark can give you permission, and the obstacles to registration will be removed.
If permission cannot be obtained, the trademark will have to be redone.
The term of legal protection of a registered trademark is 10 years. However, registration and legal protection may be terminated earlier.