Trademarks

Which classes can I trademark

All MCTU classes for which you can register a trademark are presented here.

What are the trademarks

Trademarks are verbal, pictorial, volumetric, holographic, sound, etc., as well as combined. Verbal protects the word itself, and pictorial - the shape and colors of the logo, respectively.

When registering only a verbal trademark, a third party may use the form and colors of the logo and insert his or her word into it.

The pictorial trademark protects only colors, shape, graphics. There is no inscription in such a sign (for example, the Mercedes logo).

The combined sign (image + word) is a good option, but it makes sense to register it if the image does not change in the future.

To protect the Internet domain, word sign protection is enough.

Trademark protection is valid throughout Russia.

Payment and taxes

The payment is made when registering a trademark. In the future, ownership of the trademark is not subject to payments in any way except in cases of transfer of rights to the trademark and receipt of royalties for this, or alienation of the exclusive right to the trademark. In these cases, a taxable base arises.

Trademark sale

The procedure for transferring rights to intellectual property objects (inventions, trademarks, industrial designs, etc.) is one of the most common issues in the field of copyright that arise in the course of entrepreneurial activity. The assignment/transfer of trademark rights from the owner to another person is a very common phenomenon. According to the legislation in the field of intellectual property (IP), in order to register these actions, it is necessary to conclude a license agreement or agreement of alienation (assignment).

The exclusion agreement for the IP object (or the assignment agreement) allows transferring the exclusive right to this object to another person, and the license agreement gives the right to a certain person to use the object on the established terms and for a specified period of time. Each of the contracts is necessarily registered with FIPS (Rospatent), otherwise they will not be considered valid.

The sale of the trademark takes place in three stages:

• The relevant contract shall be drawn up;
• A package of documents for registration of the contract is submitted to the FIPS;
• Stage of obtaining a registered assignment (alienation) agreement in the FIPS;

The content and execution of the alienation agreement is regulated by Articles 1232 and 1488 of the Civil Code. And even despite this, the conclusion of such agreements in those who have never encountered the execution of such documentation causes difficulties. In this case, it is better to entrust the entire process of selling a trademark to specialists in the field of intellectual property.

Trademark Value Examination

In order to fully use the commercial value of a trademark, you need to know its market price. Usually, an examination of its value is necessary in the event of the sale of exclusive rights to it. Specialists in the field of IP protection or assessment will help in this best of all.

After conducting the study, an assessment report is issued that is legally valid and can be used in the implementation of commercial transactions, for presentation in court or when filling out accounting reports.

However, the IP object is an intangible asset, therefore, when it is evaluated in monetary terms, there are subtleties. In these circumstances, in addition to the funds that were used for the development of the sign and its registration, the purpose of assessing the trademark, as well as its further use by the owner, is important. It should be borne in mind that these expenses and estimated profits can be very different from profits from an already promoted brand.

The price of a trademark (from a legal point of view) is the amount of exclusive rights that are protected by the certificate, multiplied by the brand's fame. The most popular method of determining value is profitable. It makes it possible to calculate the amount of possible benefit that can be obtained by the owner of the trademark from its use in the existing economic conditions. The main criteria for assessment are the competitive advantages of the trademark, the confidence of buyers in it, its stability in the market and positive development prospects. We are sure to take into account the impact of the trademark on the reputation of the enterprise as a whole, as well as the forecast of the volume of sales of goods and services that are sold under this trademark.

In order to reasonably determine the value of the trademark in monetary equivalent, the appraiser will need the following information about the object of the IE:

• an existing trademark certificate;
• description of IE object;
• information on expenses associated with obtaining rights to an IS object;
• Description of goods/services marked with a valued trademark
• Sales figures for each year
• sources of profit from the use of the trademark;

Sale of a trademark to an individual is not allowed

The legislation of the Russian Federation does not provide for the registration of a trademark for an individual due to the fact that a trademark is a designation that serves to individualize the goods of a legal entity or individual entrepreneur, which means that it can only be registered with a legal entity or individual entrepreneur. This is stated in article 1478 of the Civil Code.

Nevertheless, citizens of other states have this privilege in Russia if their countries provide for the possibility of registering trademarks for an individual. Similar approach to the fact of transfer or sale of trademarks. Even if a person inherits the exclusive rights to the trademark, in order to obtain them, he must register as an individual entrepreneur.

How to draw up a contract for the "sale and purchase" of a trademark

The trademark alienation agreement has a number of specific nuances. It is necessary to have in hand the necessary documentation and data in order to provide them to Rospatent together with the application, as well as pay the state duty (this can be done by any of the parties to this agreement).

Which documents should be provided:

• application, which is drawn up and submitted by the copyright holder/his patent attorney;
• trademark assignment agreement (three certified and laced copies);
• receipt of payment of state duty;
• an alienable trademark certificate;

Information submitted with documentation and application:

• full names of the organizations of the rightholder and successor;
• bank details of both parties (indicating the legal address);
• full name of managers and their positions at enterprises;
• The copyright holder provides a list of goods/services covered by the alienated trademark.
• the copyright holder provides the trademark certificate or its number issued at registration;

The procedure for registering a trademark alienation agreement lasts on average 2-2.5 months. The need for a faster execution of the agreement can be discussed on a case-by-case basis.

What are the features of the sale of a registered trademark under an alienation agreement

The right to trademark passes to another person immediately at the time of state registration of the contract. An application for registration can be submitted by both the copyright holder and the legal successor (on behalf of each of them, a patent attorney can act). If the copyright holder is not a resident of the Russian Federation, then the agreement on the assignment of the trademark is submitted only with the help of a national patent attorney.

The transfer of the exclusive right to the trademark (for example, under a purchase and sale agreement) occurs only in full and only to those who have an exclusive right to do so (legal entity or individual entrepreneur). For incomplete transfer of rights, the legislation provides for the use of a license agreement.

The main principles of the assignment agreement:

• shall be executed only in writing;
• the item "subject of the contract" contains registration numbers of all trademarks that are alienated under this contract;
• documents for registration of the contract must be genuine or copies certified by a notary;
• the transfer of exclusive rights (alienation) to the trademark is impossible if this may mislead the consumer regarding the product or its manufacturer;
• state duty for registration of an agreement on the alienation of the exclusive right to a trademark as of August 2018 is 13,500 rubles + 11,500 rubles. for each trademark over one;

What if the copyright holder has several similar trademarks?

If the copyright holder has similar trademarks, and he plans to transfer exclusive rights only to some of them, then the alienation agreement will not be registered with Rospatent. The Civil Code states that the rights to similar and identical trademarks that are registered for homogeneous goods cannot belong to different legal entities.

There are two scenarios for the development of events:

• Transfer rights to all similar trademarks for all goods;
• Transfer the rights to the entire series of trademarks, but only for goods of a certain class;

That is, two firms will be owners of trademark rights, but for different groups of goods.

What if the trademark and company name are the same?

If the name of the company of the trademark owner is identical to the registered trademark, then Rospatent will demand a reason why the assignment of rights to the trademark will not mislead the consumer regarding the person engaged in the production of goods or the provision of services. These grounds will vary depending on the specifics and circumstances of each purchase and sale case.

Mandatory Value in Contract

In the paid contract of alienation, the price paid by the new copyright holder should be spelled out. There is an option for registration and a gratuitous agreement, but domestic legislation does not provide for a donation agreement between legal entities, since in the future this may cause a challenge to the transaction.

License Agreement

The conditions for concluding a license agreement or commercial concession agreement are set out in Articles 1235, 1236, 1237, 1238, 1489 of the Civil Code of the Russian Federation. In these circumstances, difficulties most often appear in the preparation and registration of license agreements and relate to issues of exclusivity and non-exclusivity of the license. But the similarity and identity of the trademarks included in the license agreement, unlike the alienation agreement, do not matter.

The license agreement can have any validity period, but logically it should not be longer than the validity period of the trademark registration. When the owner extends the validity period of the trademark, the term of the contract must also be extended.

In a paid license agreement, it is imperative to determine the amount and frequency of payment of license payments, while, unlike an alienation agreement, there will be no problems when concluding a free license agreement. In addition, when concluding a free license agreement and an agreement on the use of a trademark under the control of the copyright holder, the agreement does not need to be registered.

Most trademark rights holders rate this as a strong argument, as they seek to evade contract registration so as not to deal with the costs and difficulties associated with this. But a registered contract, if you consider it from such an angle as further use of a trademark, interaction with tax authorities and potential litigation regarding the rights to use an IP object, will be more reliable^[1].

Registration in FIPS shall be subject to any additions or changes

Registration is required for all changes to license agreements. Condition changes are recorded in the form of supplementary agreements. And if the name or address of the owner of the trademark changes, then data on this are entered into the materials of the trademark certificate. If the name or address of the user changes, then - in the materials of the contract. In a similar way, an additional agreement is drawn up, which states that, for example, the parties agreed to consider the following address as the new user address... Documents are attached to the agreement that confirm the changes, and it is again sent for registration. Termination of the contract by agreement of both parties must also be registered.

Chronicle

2023: Increase in the number of applications for brand registration in Russia by 37% to 123 thousand units

The number of applications for brand registration in Russia in 2023 increased by 37% compared to 2022 and reached 123 thousand units. Deputy Minister of Economic Development RFMaksim Kolesnikov told about this at the end of January 2024. He also cited data according to which Rospatent registered a total of about 860 thousand trademarks from the business.

9.5 thousand applications have already been received from individuals who have registered their trademark... About 333 registered geographical indications and names of places of origin of goods. Over the past year, another 115 applications for registration and accession to existing regional brands were received, - explained the deputy head of the Ministry of Economic Development at the end of January 2024.

Pexels

The number of applications for new brands is growing amid Western sanctions and the departure of many foreign companies from Russia. The vacated niches on the market are most actively occupied by Russian manufacturers of software, household chemicals, cosmetics, perfumes.

According to Rospatent in mid-February 2024, the dynamics of submitting applications for utility models is an indicator of the import substitution process for the products of departed foreign companies: in 2023, Russians submitted almost 10 thousand applications, which is 14% higher than the result of a year ago. Also, Russian business is increasingly paying attention to protecting the design of finished products. In 2023, registration of industrial samples was also marked by active dynamics - the number of applications increased by 30% and in the same period companies were issued 5 thousand patents for the unique design of goods.

According to Maxim Reshetnikov, more than half of the trademarks registered by Rospatent by the end of 2023 belong to Russian entrepreneurs. Investments in intellectual property in 2020-2022. increased 1.6 times to 13 trillion rubles, he added.^[2]

2022: Russian government allows citizens to register trademarks

The Russian government allowed citizens to register trademarks, which became known at the end of January 2022. As the head of the Ministry of Economic Development Maxim Reshetnikov noted, whose words are quoted by the press service of the department, the new initiative is important primarily for the self-employed - an additional tool for promoting work, goods and services appears.

In fact, we give people the opportunity to use this asset, to develop personal brands, "he explained.

The Government of the Russian Federation allowed citizens to register trademarks

A bill approved by the government, allowing citizens to register trademarks, was developed by the Ministry of Economic Development as part of the roadmap "Transformation of the business climate" in the field of intellectual property. This initiative, among other things, equalizes the rights of Russians and foreign citizens. Russia is a party to the Madrid Agreement, according to which both legal entities and individuals can register trademarks. Given this, Rospatent there is no reason to refuse to consider an application for a foreign citizen, the Ministry of Economic Development explained.

Chairman of the Board of the Association of Lawyers of Russia Vladimir Gruzdev, in a conversation with Rossiyskaya Gazeta, noted that the bill eliminates the restriction on which only legal entities and individual entrepreneurs can register a trademark. Even nannies and tutors will be able to develop and register their trademarks.

For example, you can trademark your own name. In this case, all other namesakes will not have to change their names. However, they will not be able to conduct private practice in the same area under the same name-sign. Today, for example, Philip Kirkorov and Nikolai Baskov registered their names as trademarks, - explained Gruzdev.

He also recalled that according to the Civil Code, a trademark is a designation that serves to individualize goods. Thanks to this, buyers can distinguish a certain product on the market from many others.^[3][4][5][6]

Notes