Peculiarities of the procedure for challenging trademarks

Procedure of contestation of a trademark

The contestation of trademark entails the recognition of its invalidity, as well as the cancellation of granting legal protection to such trademark by Rospatent.

Challenging the trademark by using services of Law&Trust International

Lawyers of Law&Trust International will help you with contestation of the trademark.

Our specialists will:

• Analyze documents
• Prepare objections
• Further, the foregoing objections will be submitted to Rospatent
• Receive notifications regarding the assignment of the date of the panel session
• Be able to attend sessions of the panel of Rospatent (it may be several meetings)
• Timely inform you of the decision of Rospatent on the approval/ dissatisfaction of the objection

Submission of the objection (objections) is prepared from 2 to 3 weeks, then consideration of this objection (objections) in Rospatent is carried out within 3-6 months, followed by its decision (1-2 months).

As indicated earlier, legal protection for the trademark may be challenged and recognized as invalid in part or in full. The Civil Code of the Russian Federation provides for limitations in the time periods during which the trademark can be challenged.

Concerning a number of legal grounds, then the trademark can be challenged based upon the foregoing grounds during the entire period of validity of the exclusive right to it. Regarding a range of cases, the trademark can be contested within five years from the day when information regarding the registration of such trademark was published in the official bulletin.

How to protect your right to the trademark?

Unfortunately, you can not be immune from the appearance of counterfeiting products on the market, the individualization of which will be exceedingly similar or even identical to your trademark. In such situation, our lawyers can help in resolving such disputable situations and restoring justice.

Before imposing requirements to prohibit the use of your trademark with regards to violators, the reliability of registration of this trademark is verified.

Information about the reliability of registration of trademarks

There are certain cases in our practice when mistakes were made when submitting applications, such voidabilities led to the annulment of trademarks by competitors.

Another important aspect that will directly affect the reliability of your trademark is proper use of the trademark. Legal protection of your trademark can be terminated if:

• your trademark is not used de facto;
• the trademark is used by unauthorized person;
• you use the trademark exclusively with respect to the part of goods/services for which it is registered;
• you use the trademark, separate elements of which affect its distinctive ability and limit the protection that was provided for this trademark;
• the trademark is used with modification of its separate elements affecting its distinctiveness and limiting the protection granted to the trademark.

If the trademark was registered in full compliance with the law and is used in a proper manner, then there is nothing to worry about.

Information regarding the protection of own rights

Protection of own rights to the trademark is directly related to the collection of evidence.

Before initiating application to the authorized bodies, the rightholder lodges claim with the offender requiring termination of illegal use of the trademark. After that, there is considerable possibility of starting negotiations and resolving the issue.

In case of ignoring the application by the violator, it is necessary to apply to the court, which will prohibit the use of your trademark by the violator and will be able to recover compensation from him in the amount ranging from 10,000 to 5,000,000 rubles.

What are the terms for preparation and consideration of the claim regarding prohibition of the use of the trademark?

Approximately 2-3 weeks are necessary to collect evidence and prepare statement of claim. Consideration of the claim in court takes 3-6 months.

Additional means for protection of your trademark

Legislation provides additional methods to protect your exclusive right to the trademark. Such methods are the following:

• Your appeal to the police in order to initiation of proceedings with regard to the violator, under administrative procedure and in certain under criminal procedure. infringing goods will either be seized or destroyed.
• You will file application with the Federal Anti-Monopoly Service and require the recognition of the offender's actions regarding your right to trademark to be an act of unfair competition.

Certain situations require the trademark’s owner to apply to one particular authority, while others require him to recourse to several ones at the same time. Each case of challenging the infringement of the rights on trademark is unique.

Lawyers of Law & Trust International will select the most optimal variant of solving issue in this field for you. Please contact our specialists for clarifying additional questions, and you can obtain consultation by phone, in chat or during personal conversation in the company's offices.