The presence of a trademark is becoming an increasingly relevant issue nowadays: it is better to obtain legal protection for your trademark rather than find yourself in a situation where you are accused of illegally using someone else's designation. Acsour’s experts have prepared materials in which they have spoken about six advantages of registering a trademark.
Today, Russian legislation imposes no obligation to register intellectual property designations (a brand name, trademark or service mark, the name of the place of origin of goods and a trade designation). However, in order to protect your business, taking into account the established court practice in the market, our experts recommend that you protect your brand by registering a trademark in those countries where you plan to conduct business.
Reason No. 1
In the future, it will allow you to minimize legal and economic risks connected with the violation of the exclusive rights of your company. Competitors will not be able to appear on the market with a similar trademark (name, logo, colour scheme, or even a similar product). In other words, after registration, you are a copyright holder of exclusive rights with respect to the registered designation: your company will be able to protect its rights more effectively and to prosecute competitors who confuse consumers by illegally releasing goods with a similar sign, thus contributing to a decrease in your profits.
Today, trademark registration is a convenient legal mechanism: on average, this procedure lasts from one to three months in the Russian Federation and from one to eight months in foreign countries. We note that in our country this process is fairly easily controlled, since it is entirely carried out by a single competent authority, namely, the Russian Federal Agency for Intellectual Property, Patents and Trademarks.
After completing the trademark registration procedure, you will be able to place a protection mark - ® - on your company's products. This helps not only to win over customers, but also to distinguish the product from many other similar ones. By doing that, you make a public declaration to third parties about your registered rights.
It is worth noting that a trademark is an important commercial asset of a company, with the help of which you can make a profit, for example, by transferring it under a licensing agreement, under a contract to dispose of exclusive rights or under a franchise agreement. Among other things, it is an effective tool for promoting a company in various markets. The mass media aspire to respect trademark rights, and therefore they are more willing to advertise goods with trademarks that have undergone the registration procedure. In other words, the registration of a trademark will help you in dealing with issues relating to advertising products on the Internet, on television and in other media outlets.
We also recommend that you register a trademark in the Customs Intellectual Property Registry. In the eyes of the Federal Customs Service, which is responsible for this registry, it helps to minimize the risks of the illegal import and export of counterfeit products, as well as to encourage the sale of legal goods and the transfer of exclusive rights under a licensing agreement.
Perhaps this is one of the key reasons, because it directly concerns external risks for your company. Today, high responsibility for the illegal use of a trademark is regulated by law. This is because, in a situation when your competitor registers a trademark that you use in your business, there is a risk of you also being prosecuted, in terms of the following types of liability:
1. Civil liability (Art. 1515 of the Civil Code of the Russian Federation):
- removal from commercial circulation and the destruction (at your - as an infringer - cost) of counterfeit goods, as well as of labels and packaging of goods on which the illegally used trademark is placed;
- removal of a trademark from the materials that accompany your work or services, including documentation, advertising, and signs;
- the reimbursement of losses by paying compensation, the amount of which is determined: either in an amount from 10,000 to 5 million roubles, subject to the discretion of the court based on the nature of the violation; or at double the value of the goods on which the trademark is illegally placed, or at double the value of the right to use the trademark, determined based on the price which under comparable circumstances is usually charged for the legitimate use of the trademark.
2. Administrative liability (Article. 14.10 of the Administrative Offences Code of the Russian Federation):
- confiscation of items containing an illegal reproduction of a trademark, as well as of materials and equipment used for their production, and also the imposition on legal entities of an administrative fine ranging between 50,000 and 200,000 roubles;
- production for the purpose of selling or disposing of goods containing an illegal reproduction of someone else’s trademark causes the confiscation of items containing such illegal reproduction of the trademark, as well as of materials and equipment used to produce them, and causes the imposition of an administrative fine on legal entities in the amount of five times the value of the goods that were the subject of an administrative offence, but not less than 100,000 roubles.
3. Criminal liability of the single executive officer of the company:
- illegal use of someone else's trademark or similar designations for homogeneous commodities, if this act was committed repeatedly or caused major damage in an amount greater than 250,000 roubles, is punished: with a fine between 100,000 and 300,000 roubles or in the amount of the salary or any other income of a convicted person for a period of up to 2 years, or with community service for up to 480 hours, or correctional labour for up to 2 years, or forced labour for up to 2 years, or imprisonment for up to 2 years with a fine in an amount up to 80,000 roubles, or in the amount of the salary or any other income of a convicted person for a period of up to 6 months;
- illegal use of warning marking in respect of a trademark which is not registered in the Russian Federation or names of goods’ places of origin, if this act was committed repeatedly or caused major damage, is punished with a fine of up to 120,000 roubles or in the amount of salary or any other income of a convicted person for a period of up to 1 year, or with compulsory work for up to 360 hours, or correctional labour for up to 1 year.
In conclusion, it is worth noting that the question of the presence of a trademark is important, although often at first glance it seems unnecessary. Nevertheless, looking at the established judicial practice of recent years, the statistics show the opposite. Assess your risks in the current situation: should the issue of registering your trademark be further postponed when your competitor enters your markets with a registered trademark that is already used in your commercial activity? It is worth thinking about.
If you do decide on such a crucial step, our experts will be happy to assist you in this matter and to guide you at every stage.