Patent research is one of the most advanced market analysis methods in terms of introduction and diffusion of innovations. This is a complex instrument based on a careful analysis of all information sources associated with latest technological and scientific achievements with summary of possibilities and solutions for both legal and technical tasks. Patent research is carried out based on analysis of sources of patent information an involving other types of information depending on the objectives and tasks of research.
Trademark legal force is limited by period of 10 years from the date of filing an application to Rospatent. This means that after this period expires, the patent holder is losing rights to use the trademark. In this case, any person can use the trademark by registering it. Trade mark registration by other parties can be challenged in court or in Patent Dispute Chamber, however appealing to Rospatent for trademark extension would be more efficient and less costly. The trademark extension allows the right holder to avoid a re-registration procedure which saves significantly time and money.
Trademark extension requires to pay state duty and file an application to Rospatent for trademark extension attaching relevant documents (State Registration Certificate and written proof of state duty payment). Time for documents consideration by Rospatent is three months. After that, the applicant will receive an attachment to the certificate of trademark confirming the trademark extension for the next 10 years.
Upon the expiration of trademark, the most important is a period of time elapsed since lapse of trademark. When this period of time does not exceed six months, then a right holder should attach a petition to the application for extension explaining the reasons for delay. If more than six months have elapsed since lapse of trademark then the rights holder loses all the rights for the trademark and a new registration of the trademark should be made and a new certificate should be received. In this case, it is very important to start registration immediately, since other parties that look out over the chance of obtaining rights for such a trademark, may now get them.
The procedure of trademark extension takes place in three stages:
- First a documentation package is formed and submitted to Rospatent.
- Documents are considered within two months. If documents are incomplete or not correct they are are returned to the applicant to eliminate all inaccuracies within three months.
- Upon completion of the application considering process, the information is entered in the Rosreestr. The right holder receives an annex to the certificate with a trademark extension.
Every designation to be registered as a trademark or service mark must be checked for similar or identical signs. If a similarity to already registered trademark is detected then denial of state registration may follow. Since nowadays there are more than half a million registered trademarks in the Russian Federation there is a great chance to find a similar trademark that is already registered. In order to avoid potential problem during specific designation examination by a patent authority and denial of registration, a trademark check must be carried out well in advance of the filing of registration application.
Often, the applicants do not feel serious about trademark examination procedure and carry out unassisted searches using free databases. The results obtained using such an approach may not be complete enough and may not reflect the real picture, for example, it is possible to miss information about pending applications that are not displayed in the search.
On the website of Federal Service for Intellectual Property, Patents and Trademarks there is a register of trademarks registered in the territory of the Russian Federation. Anyone can access the register but due a lack of search engine the examination of trademarks by a specific criteria is possible by viewing each registration certificate.
If at a certain stage it the identical signs were not revealed it doesn’t mean the case is completed. These were just the results of the electronic system issued for a particular request. The examination can be considered successful only when all the methodic recommendations are implemented simultaneously which requires special skills and experience.
In some cases, a certain trick is applied: the verbal and graphic parts are registered separately as two independent signs for further shared use. A competently drawn up application can guarantee successful registration and minimum risks of denial.
The resemblance of designations is established by phonetic (sound), visual (graphic) and semantic (notional) resemblance checking determining if confusion with other already registered trademarks is possible. The resemblance of trademarks is analyzed in terms of percipiency of the designation by the consumer. The likelihood of customer deception is analyzed in the first place. Different requirements are applied depending on the class of International Classification of Goods and Services when analyzing the resemblance of trademarks. More no-nonsense attitude is applied for mass consumer goods than for production and technical intended purposes. This fact can lead to a conclusion that the result largely depends on the subjective opinion of experts much more than resemblance by established procedures.
Therefore, it is obvious that unassisted examination for resemblance and similarity of trademarks makes sense only at the initial stage when developing a designation or choosing from several existing options. And even such an examination cannot guarantee that the designation is original and its registration will be successful.