What is important to know about trademarks and the peculiarities of working with them. Experts on intellectual property IT companies Patent and TM Legal Oleg Abramenko Evgeny Rybalko and on major entrepreneurial mistakes during the registration of the trademark.
On duty we do intellectual property, including preparing applications for registration of trademarks for entrepreneurs from different fields. Every day we receive a large number of applications for verification of the uniqueness of the designation or the preparation of the necessary documents. In an average year there are nearly 400 thousand companies, whereas applications for registration of trademarks is just 60 thousand. Invisible legal emptiness paves the way for numerous cases where entrepreneurs are losing money, customers or company.
In order to fill this void, we have prepared the description of problem situations and possible ways of their solution. So, each entrepreneur can reduce the risks and not to worry about your business in terms of protection of trademark rights.
A small educational program. A trademark is a sign (word, figurative, combined or otherwise), which serves to individualize goods of legal entities and individual entrepreneurs. In the media, you can also find synonyms of a trademark — brand, logo, name. If a software product, the company, the product name has uniqueness and so-called distinctive — it can be registered as a trademark.
Evaluation of the uniqueness and distinctiveness of symbols may spend only a lawyer. We will understand what are the most dangerous delusion that threatens the entire business activities.
Rarely employers check the legal possibility of using the symbol. “Great idea for the brand” becomes his first hole, which will only deepen in the course of activity. As a result, you can spend a few years on the unwinding of a jewelry store, and after detecting that a month ago, in good faith, used the name was issued a trademark certificate. To prove who was the first is difficult.
So, one of our customers now forced to work on a new name and full rebrand in order not to get sued. As a rule, the costs and the representative cost several times more expensive than the name change, so many entrepreneurs go this route. Advertising, information dissemination has to restart and the market to win from scratch.
This experience changes the attitude to the question of registration. No one wants to step on the same rake twice, but because the entrepreneurs immediately test their ideas and quickly apply for a trademark registration. As I mentioned, in Russia annually registers about 60 thousand trademarks.
Even this small number restricts the possibility of using any come to mind the names. Not to run into a registered trademark, and you need to carry out checks. Moreover, it can be done independently. Some law firms do a basic check for a couple of hours and completely free.
And the refusal of inspection can only lead to big problems at different stages of product development and penalties. For example, the project NumBuster. The company True Software Scandinavia AB has registered the trademark TrueCaller in several countries, including Russia, China, Mexico, Singapore, Europe, USA, and that was the reason for removing the application NumBuster from Google Play.
What are the information database to verify. We conducted a small study of the design studios. Posing as customers, we asked them about whether they check the possibility of infringing someone elses trademark rights when designing and the possibility of its further registration as a trademark.
As it turned out, 7 of the 10 studios no checks do not, since “they draw unique logos and come up with an original name — check they do not need to cooperate with lawyers on these issues, they are not going to”. No doubt, the designer should not deal in legal properties, they painted the logo. But he should not spread false information and to enter your client into believing that he is in absolute security. After all, if a client sues us, to ask the designer would be pointless.
Discuss the idea of the future logo with a lawyer who can immediately identify those items that can and cannot be protectable his part. The lawyer will guide a designer how to avoid mistakes, but to implement the plan.
You should always have in mind that drawing a logo from scratch, you can still violate someone elses trademark, as they may be similar to the degree of mixing. But sometimes the design Studio willingly or not willingly can plagiarize that too will lead to dire consequences. Of special note is the trend towards simplification of design and the transition to minimalism.
One of our clients has spent more than 200 thousand roubles on development of a logo, brand book with detailed selection of colors, fonts, how to use logo in its official documents. But when he tried to register a trademark, it turned out that in the name of attended foreign a registered trademark, and graphics, consisting of three simple geometric shapes and two lines framing the name, are also protected elements. The design had to be completely redone for more money.
The procrastination of the legal issues is one of the main problems of most companies. This is especially true of trademarks and intellectual property in General. In the minds of entrepreneurs there is a prejudice that all it is — a headache, a waste of money and they still will not touch. First is “money well spent”, then “once”, and “work, no one bothers.”.
Like a string of excuses and samotechny continues until the moment when the problem becomes personal. Initial expenses seem unreasonably large, it becomes debilitating or catastrophic. In this case, the court is not a panacea, because a stable and clear practice does not exist. The second common concern is that founding partners or the raiders.
Not surprisingly, revenge or raiding often used methods first second. The company grows and develops, but at some point, the partners argue, and more cunning rush to register trademarks. The court, trying to figure out who owns the name, often makes a decision in favor of the copyright holder, because to prove malice when applying for a similar or the same name is almost impossible.
The company registers the trademark in the Russian Federation. Especially resistant register, on the contrary, in the US and in Latin, considering that they are now protected everywhere. It is not. Trademark valid on the territory of the country where it was registered. If you are interested in the China market, the US, Japan, it is necessary to register a trademark in all these countries.
A real revelation for us was the realization that thanks to the Internet to look for violators became ridiculously easy. Just go to any social network — for example, Instagram. In the search box to get popular hashtag is “Luntik”, “croche” or “Smeshariki”. Your choice.
After a few seconds youll see thousands of pictures of cakes bakeries and home offers the sale. Marzipan “Luntik” provocatively smiling with colored three-tiered sponge cake. And the Baker has no idea that this hilarious “Luntik” — a potential subpoena under the claim about infringement of the exclusive rights to the cartoon character, if he is registered as a trademark. Compensation for one cake, you can require a minimum of 10 thousand rubles.
However, if you multiply it by the number of violators, will turn out an impressive number. Such claims are not uncommon. The company Smeshariki Gmbh filed a lawsuit against the supermarket “Pulkovo” for the cake with Smeshariki, and the Studio of animation cinema “Mill” demanded to collect from limited liability company “Ivita” 600 thousand roubles for infringement of exclusive trademark rights “Luntik”, “Hugo” and others.
Another scenario. You are an entrepreneur, purchased a batch of childrens toys-cartoon characters. You have everything to prove the legality of transactions. Contracts, invoices, statements. But you have become one of the dozens of defendants who were sent to “claim letters” from the copyright holder.
This is not an isolated implementation of counterfeit goods, so the amount of compensation increases significantly. So, for example, the same “Smeshariki” recovered 315 thousand rubles from the company “Drops”. Maybe you opened your auto parts store and placed the logo of the VAZ on the sign.
Get sued and sign. As was established in the framework of another case, when the defendant, without the permission of the copyright holder has placed the image on the shop sign, for which he was prosecuted. Include in the contract a condition that you get a product that the seller has the exclusive rights, documented (for example, the copyright license agreement or the contract on transfer of exclusive rights), as well as a cautious attitude to the products, signage or advertising materials of its own production, if you use famous characters or logos of other companies. Send columns, corresponding to the requirements of the editorial Board, [email protected]