How to Verify a Trademark Before Registration to Avoid Rejection

Trademark registration is a complicated process that requires significant time and knowledge of various aspects of the registration process. To ensure successful registration, it is essential to verify the uniqueness and compliance of a proposed trademark with legal requirements.

A preliminary check of a trademark can help save time and avoid unnecessary expenses, as the fees paid in case of rejection are not refundable, and the registration process may take up to one and a half years.

If the preliminary check reveals that the proposed trademark has already been registered or is similar to existing trademarks, the application can be finalized or arguments can be made to protect the trademark.

The verification process typically involves three steps:

1. Uniqueness Verification: ensuring that the trademark does not conflict with any existing trademarks and that there are no pending applications for the same or similar trademarks.
2. Compliance with Legislation: checking that the proposed trademark complies with all relevant laws and regulations.
3. Based on the results of a trademark search conducted on the Internet.

At present, more than 867 thousand registered trademarks exist in Russia. Federal Service

for Intellectual Property (Rospatent) considers not only current trademarks, but also those that are currently under review.

To check a trademark, you can:

1. Conduct an independent search.
   
   The first step is to verify whether another business is already using the desired trademark. Before beginning the search, it is necessary to determine the relevant class of goods or services according to the International Classification of Goods and Services (ICGS). The latest version of this classification can be accessed on Rospatent’s website.
   
2. Order a paid trademark verification with the Federal Institute of Industrial Property (FIPS), a division of Rospatent.
   The fee ranges from 4,130 to 47,200 rubles (plus 20% VAT), depending on the number of International Classification of Goods and Services (MCTU) classes. You will need to analyze search results on your own. You will be provided with a list of potentially conflicting trademarks. If there are numerous conflicts, it may be advisable to abandon registration and consider another trademark. If there are fewer conflicts, you may want to consider how to demonstrate the uniqueness of your trademark or change it.
   
3. Consult with a specialized professional.
   They will search for similar trademarks and evaluate the likelihood of your trademark’s registration. The process of searching and analyzing can take between one and five days. Some companies offer this service for free. However, we do not recommend utilizing free online platforms for rapid verification, as they only search among registered trademarks, their results are often inaccurate, and you will need to perform further analysis independently.

Criteria for determining the similarity of trademarks:

The similarity between trademarks is determined based on phonetic, graphical, and semantic features.

1. Phonetic similarity is the primary criterion. Even if the trademarks sound similar but are written in different alphabets, they may be considered similar. It is important to consider the following factors: the coincidence of sound patterns, syllables, or parts of words, the proximity of vowel and consonant composition, the occurrence of one trademark within another. Unprotected elements, such as “-farm” or “-honey,” may be disregarded. If the words within a phrase are unrelated grammatically or semantically, each word should be analyzed separately.
2. Graphic features – this evaluates the shape, color, style, and overall visual impact. If only individual elements in two images are similar, the second image will not be considered a duplicate. Not only can images be similar, but words as well. For example, “RIOKO” and “ROIKO”, or “Raptika” and “Panmuka”, are visually similar even though they are spelled differently. Rospatent protects the graphical representation, but not the concept. If the images differ in terms of color, shape, and style, several applicants may be able to register the same product.
3. Semantic features – according to this, the similarity of the meaning and significance of the sign elements is taken into consideration. For instance, “Garden City” and “Garden Town” have similar meanings, and “Garden” adds to the similarity. Phrases are assessed as a whole, not individually. For example, while “Amber Coast” and “Amber Amulet” sound similar, they evoke different impressions. Fictional names are not considered for similarity in meaning.In order to ensure the successful registration of a trademark and avoid potential refusal, it is essential to verify its uniqueness in accordance with various criteria.

Finally, it is crucial to adhere to other legal requirements in order to ensure compliance and increase the likelihood of successful trademark registration. For instance, a trademark must not include official symbols or depictions of objects of cultural or natural heritage, among other elements that may constitute grounds for rejection.