There are no specific conditions for the protectability of trademarks as objects of patent law, but there are a number of grounds on which the registration of the designation may be refused. Therefore, in order to check the possibility of registering a designation as a trademark, it is necessary to make sure that it does not violate the requirements established by Article 1483 of the RF Civil Code
What are the conditions for the protectability of a trademark?
Does not have distinctiveness or consists of only the elements:
- entered into general use to designate goods of a certain type
- which are generally accepted symbols and terms
- characterizing goods, including those indicating their type, quality, quantity, property, purpose, and value, as well as the time, place, and method of their production or sale
- representing the form of goods, which is determined solely or mainly by the property or purpose of the goods
Exception: these elements can be included in the trademark only if they do not occupy a dominant position and are recognized as unprotected; as a result of use, they have acquired distinctiveness; they contain all the specified elements, which in this combination have distinctiveness
Thus, registration of a designation as a trademark will be refused if it:
Includes, reproduces, imitates, or is confusingly similar to official symbols, names, and distinctive signs or recognizable parts thereof
Is false or capable of misleading the consumer regarding the product, its manufacturer, or place of production
Is contrary to the public interest and the principles of humanity and morality
Is identical or confusingly similar to the official names and images of especially valuable objects of cultural heritage of the peoples of the Russian Federation or objects of the world cultural or natural heritage, as well as to images of cultural values stored in collections and funds, if registration is requested in the name of persons who are not their owners, without the consent of the owners or persons authorized by the owners
Is intended for wines and spirits and represents or contains elements that are protected in one of the states parties to an international treaty as signs that make it possible to identify wines or spirits as originating from its territory (produced within the boundaries of a geographical object of this state) and having a special quality, reputation, or other characteristics that are mainly determined by their origin
Is identical or confusingly similar to an already registered trademark or designation applied for registration, which has an earlier priority in relation to homogeneous goods.
Exception: the consent of the copyright holder has been obtained, and registration will not mislead the consumer
Is identical or confusingly similar to well-known trademarks in the Russian Federation in relation to homogeneous goods with an earlier priority
Includes, reproduces, or imitates registered or applied for registration geographical indications (GIs) or appellations of origin (AO) in relation to homogeneous goods.
Exception: such a designation is included as an unprotected element and is registered in the name of the right holder of the GI or AO
Includes, reproduces, or imitates registered or applied for registration GI or AO in relation to heterogeneous goods if it will be associated by consumers with such GI or AO and infringes on the legitimate interests of the right holder
Is identical or confusingly similar to a protected trade name or commercial designation, with their individual elements or with a selection achievement
Is identical or confusingly similar to the name of a work of science, literature, or art known in the Russian Federation, a character, a quote from such a work, a work of art, or a fragment thereof that arose before the priority date of the trademark.
Exception: The consent of the copyright holder has been obtained
Is identical or confusingly similar to the name, pseudonym, or designation, portrait, or facsimile of a person known as of the date of filing the application in the Russian Federation.
Exception: Consent of such person or his/her heir has been obtained
Is identical or confusingly similar to an industrial design, mark of conformity, the rights to which arose before the priority date of the registered trademark
Designation elements are protected means of individualization of other persons in relation to homogeneous goods
Exception: Consent of the copyright holder has been obtained