Aspects of registration of three-dimensional trademarks

Aspects of registration of three-dimensional trademarks


What is a three-dimensional trademark?

A three-dimensional trademark, like any other trademark, is (on a formal level) a "designation" intending to individualize (distinguish, differ) the goods of one manufacturer on the market from the goods of all other manufacturers.

The most popular categories of trademarks are verbal (consisting only of words or phrases, letters, numbers, or the most standard, generally accepted symbols), visual (consisting of an image or a combination of different images) and combined (including both a word (usually in the original color and graphics) and an image).

However, three-dimensional trademarks also take place. As it appears from the name, they represent the appearance of a three-dimensional product that is so recognizable and unusual that it can generate associations with a particular manufacturer of such a product in the mind of a contemplating consumer. For example, this may be the original shape of the bottle for alcoholic beverages, the external view of a perfume bottle, or any other cases where the visual design of the product, original "from all aspects", significantly increases its attractiveness to customers.

Is it possible to register three-dimensional trademarks?

Yes, three-dimensional trademarks, like any other trademarks in the Russian Federation, are not only possible, but also extremely desirable to register. For this purpose, an application is submitted to the Russian authority for patents and trademarks (Rospatent).

You can file an application either by yourself or through patent attorneys, paying for their services in addition to the official patent registration fees. The trademark application has many features, so we recommend you to contact the experts – the patent office. For example, our company having been rendering these services since 2006.

Why do we need a three-dimensional trademark?

Successful registration of a trademark in your name will enable you, first of all, to protect yourself much more effectively against unfair competition. In accordance with the Russian legislation, no one has the right to use another person's trademark or a designation that is confusingly similar to another person's trademark for identical goods and services without the consent of such person.

Therefore, by obtaining a certificate for a three-dimensional trademark, you will be able to prevent anyone from using the same or similar packaging or form for the product items similar to those for which your designation is registered. Detection of a violation and subsequent submission of a claim and, if necessary, a lawsuit may allow you to recover compensation up to several million rubles.

This implies another good reason for trademark registration: You can be sure, you are not violating the rights of third parties. Upon receipt of your trademark application, the Russian authority (Rospatent) will check whether anyone has any earlier identical or similar designations. If the trademark is registered, it means (in most cases) that Rospatent has not found any such problems and you are not violating anyone's rights. If you receive a provisional refusal on your application, you can either promptly withdraw the product from sale, avoiding the claims of legal rightholders of similar registrations, or negotiate with these rightholders, for example, by entering into a license agreement with them. A properly obtained license or commercial concession (franchise) will permit you to use the third party's trademark legally, subject to fee payment.

How to register a three-dimensional trademark?

It was mentioned above that in order to register any trademark, including a three-dimensional one, you have to file an application to Rospatent – independently or through the patent office. You will also have to pay the state duties several times (separately for each legal action of the authority).

Firstly, the application submitted is subject to formal examination, consisting in check of completeness of all application documents and the correctness of fee payment. The formal examination takes approximately several weeks, then, if everything is in order, you will receive a decision on accepting the application for consideration.

Then the application is moved to the stage of substantive examination (about 8-10 months), during which the authority checks whether there are statutory grounds for rejection of registration (i.e., whether there are problems with the trademark caused by its original characteristics: for example, they check whether the shape has distinctive character, as will be discussed below) and comparative grounds (i.e., whether any other company or individual entrepreneur has earlier identical trademarks or applications).

If the expert commission finds no problems with either the first or the second group of grounds, it makes a decision on registration. You are offered to pay the state duty, whereupon the trademark shall be registered and you will receive a certificate.

If the expert commission finds the problems, it will send you a provisional refusal (notification of the results of the compliance verification). You will have six months for a response. If the response is sent, the expert commission can review their own arguments and agree with you having registered the trademark. If you fail to convince the expert, the registration will be refused (fully or partially).

Difficulties and problems of three-dimensional trademarks registration

Not every product shape can be registered as a trademark in Russia. It is required to have distinctive character, that is, in other words, to have sufficient originality level. The three-dimensional designation, packaging, or appearance should not be traditional (such as a round jar for cosmetic cream). They also should not be the only ones possible (nail shape for nail). They should not be attributable only to the functions and purpose of the product.

Thus, your three-dimensional designation should be, actually, the result of "creative work". This is consistent and reasonable: otherwise, there would be no sense to register the trademark only in your name, as this implies the exclusivity of your rights and the impossibility to reserve these rights for anyone else.

The arguments of the expert commission about the lack of distinctive character can also be got over if you have been actively using your three-dimensional packaging for a long time and are ready to provide the authority with a huge set of documents confirming the popularity of your product and you, as a manufacturer, in the market.

Trademark and industrial design: what should be chosen?

Three-dimensional trademarks are often compared to industrial designs (which also protect the appearance of an object and its design). This comparison is particularly relevant because for the last few years Rospatent rather unwillingly registers three-dimensional trademarks, referring to the fact that they do not have distinctive character. And it becomes increasingly difficult to convince the authority even with a huge set of the documents confirming the use.

In this regard, the situation with an industrial design is much simpler, the "threshold" of its originality is lower. However, there are additional requirements: the industrial design shall be new, meaning that information about it shall not be available in any global open sources for more than the last six months before the application is submitted. Besides, the application for an industrial design itself is in some way more complicated: more detailed description, a set of product projections, etc. are required.

The industrial design has other disadvantages: it is registered for a particular product, and in the name/description of the object you have to specify what exactly it is. And in the trademark application you may designate a variety of completely different items (products). The main thing is not to mislead the consumer about the purpose of such a trademark.

Among other things, the protection of an industrial design is for a fixed term, is valid for up to 25 years. It shall be maintained annually and extended every 5 years. The trademark may be extended once every ten years, and an unlimited number of times. It means actually that the trademark may exist (and be "reserved" for you) for an indefinite period.

What should be chosen in this case? You should base on your own priorities and capabilities. Both a trademark and an industrial design have their own set of advantages and disadvantages. This applies to registration, the scope of legal protection, and to the validity term of such protection. Certainly, as a perfect way, we would recommend you to submit two applications. The availability of two so different, but at the same time supplementing items in your intellectual property "portfolio", will enable you to expand and reserve your rights to the greatest possible extent.

Anyway, the registration of three-dimensional trademarks is a very specific procedure. All experts in the field of intellectual property admit this fact. Therefore, in order to waste no time and money in the future due to incorrect preparation of the application or incorrect record keeping, we always recommend to address to reputable experts possessing extensive experience in successful registrations. Give us your contact details and we will contact you as soon as possible to advise on all issues of registration of three-dimensional trademarks in Russia!

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