A trademark is intended to distinguish the goods and services of its holder from the total mass of similar products on the market. As a rule, brand owners invest significant amounts in their "promotion", try to make their brands more famous and attractive to potential consumers than the trademarks of other companies. However, it is not commonly known that there's possibility not just register a trademark, but to give it a special status — recognition of a trademark as well-known.
What are well-known trademarks and do their holders have any advantages?
A trademark is recognized as well-known by Rospatent, provided that the designation has become widely known on the territory of our country as a result of its intensive use on the date specified in the application. In this case, the well-known status of the trademark shall be proved by the applicant and for particular goods and (or) services. Usually, it is a rather short list, since a particular brand in the consumer's mind is associated with certain goods or services.
For example, KASPERSKY trademark is recognized as well-known for such services as "antivirus software creation".
DISNEY trademark is well-known for products – "cartoons" and services – "cartoon production".
Recognition of a trademark as a well-known one has a number of tangible advantages in comparison with a traditional trademark. First of all, the legal protection for such a trademark is granted for an indefinite period, but not for 10 years. Therefore, there's no need to apply to patent attorneys again and pay the state duty for the extension. Besides, the "well-known" status allows to expand the legal protection of the brand - not only within the list of the goods and services it was registered for and recognized as well-known, but also for other goods and services, if there is a risk of causing damage to the trademark holder. Exactly this advantage is the attractive for the copyright holders.
However, the desire only of the trademark holder is not enough to give the trademark the "well-known" status. The applicant shall convince an expert collegium that consumers know the brand very well and associate it with a particular company. This can be confirmed primarily by various sociological surveys of consumers, data on the production volume, and advertising costs. Certainly, all these complicate the registration procedure, and besides, cause additional expenses for the applicant (for conducting surveys, increased fees for the services of patent attorneys due to the complexity of the work, etc.). Is it worth spending time and money? In our opinion, each situation is unique.
Our experts will be able to assess the chances of your brand being recognized as well-known and will give all the necessary advice regarding this procedure.
