What the service includes
An unregistered trademark does not protect a brand in law: a competitor can take advantage of it, and you would then have to prove priority of use, which is considerably harder and more expensive than registering in advance.
We support the whole process, from clearing the mark and filing the application to receiving the certificate, and where necessary we defend rights in the mark in disputes, including claims by the tax and antimonopoly authorities.
We check not only identical signs but also those confusingly similar, including across several Nice classes that seem unnecessary at the outset but will be needed as the brand grows. If the company plans to enter other countries’ markets, we separately work through international registration under the Madrid System, so that you do not find the name already taken abroad. If a conflicting mark is found, we prepare a position for coexistence negotiations or for challenging the other party’s registration before Rospatent.
What the service includes:
Who it is for
The situations clients most often bring to us on this topic.
How we work
A fixed fee and a clear plan of action, agreed before work begins. The timeframes below are indicative and depend on the complexity of the case.
Clearance search
We check whether a similar mark has been registered by another company, which determines the real prospects of registration. Timeframe: 1-3 days.
Preparing and filing the application
We prepare the application with the correct list of Nice classes for the company’s actual activity. Timeframe: 5-10 days.
Handling the examination
We respond to Rospatent’s queries during examination if any arise. Timeframe: 3-9 months.
Receiving the certificate
We see the case through to receipt of the registration certificate, the official legal confirmation of your rights in the mark. Timeframe: 1-2 months after examination.
What you will need at the start
We confirm the exact list for your situation at the consultation. This is a guide so that you arrive at the first meeting prepared.
Key figures
Experience in this practice area specifically, not in practice as a whole.
Common mistakes
A superficial novelty search. The applicant makes do with a quick search of the public register and overlooks similar signs in related Nice classes, so Rospatent refuses registration at the examination stage and the time and the application are wasted.
Starting registration after the brand has launched. The company first puts the brand into circulation by printing packaging, registering a domain and placing advertising, and only then files a trademark application, risking finding that a similar sign has already been registered by a competitor.
Nice classes chosen too narrowly. The applicant registers the mark only for its current narrow activity, and on moving into an adjacent niche or onto marketplaces finds that protection does not extend to the new goods and services, so a separate, repeat registration is required.
What you get
A trademark registration certificate. The mark is officially secured to the company and protected in all the Nice classes applied for.
A clearance search before launch. The client knows for certain that the chosen name does not infringe anyone else’s rights when use begins.
A position for infringement disputes. Arguments and documents are ready for a claim letter or a lawsuit against an infringer in the event of unlawful use.
A plan for extending brand protection. It is clear which Nice classes and jurisdictions to add as the business expands.
Related
Frequently asked questions
How long does trademark registration take?+
From several months to a year, depending on whether Rospatent raises queries or objections during examination.
What if someone is already using a similar trademark?+
We check whether they hold registered rights. If not, that is no obstacle to your registration, but the situation needs a quick review.
Is registration needed separately in each country?+
For international protection, yes, but there are mechanisms, such as the Madrid System, that simplify registration in several countries at once.
What should be done if a trademark is already used within a group of companies without registration?+
That very situation can lead to claims from the tax authority, and we have experience of defending clients in such disputes.
What should be done if a similar sign is already in use but has not been registered?+
We assess the real prospects of establishing priority: if your mark was in use earlier and this can be shown with documents, there are grounds to challenge the other party’s application or a later registration.
How can a brand be protected if it has already been copied on a marketplace?+
We act on two fronts at the same time: a pre-trial claim letter and a complaint to the platform’s support service for infringement of the exclusive right. This usually gets the counterfeit listing removed faster than going to court.