The owner of the women’s clothing showroom MIO BOUTIQUE contacted the Federal Patent Bureau “Zhelezno” . The client wanted to obtain a trademark for this name. First, we conducted a preliminary check.
I will tell you how you can check a trademark for uniqueness The Federal Institute of before submitting an application for registration to Rospatent.
Independently The Federal Institute of
You can check the designation yourself using free online services. The advantages are no costs and efficiency. Such a check takes a few minutes and really reveals clearly non-unique options. But! This method does not take into account applications submitted for registration. That is, someone may already be registering your sign for themselves, which means they have priority. Missing this information means wasting time and money.
FIPS databases The Federal Institute of
The Federal Institute of Industrial Property is a division of Rospatent. The check will only take into account the marks submitted for registration. But you will have to pay from 4,130 rubles for this (the cost of checking one word designation). Another disadvantage of the method: no comments from the expert. You yourself will have to compare the marks and assess the possibility of successful registration.
Contact the patent office
Even if you decide to file an application for a trademark yourself, you can contact the patent office at the preliminary check stage. For example, in Zhelezno such a check is free and does not oblige you to anything. We do not make any express options. Work on checking the uniqueness of your trademark lasts 3-4 hours. Manually. The result of the check is a report with the expert’s conclusions on the possibility of registering the brand. Or recommendations for revision, if there are concerns that the sign will not pass the check.
Let’s return to the MIO BOUTIQUE case. The check showed that several similar brands were already registered with Rospatent. All of them were represented in the same field of activity. The case is complicated. The client did not want to change the name, and our experts decided to give the sign a chance to be registered.
Preliminary refusal of registration The Federal Institute of
A preliminary refusal is not scary. The mark can be defended niue business email list if you answer the examiner correctly and collect evidence. The Rospatent expert is a person, not a machine. He is often subjective, can make a mistake or evaluate your mark too “harshly”.
When we applied for registration of the MIO BOUTIQUE trademark, we expectedly received a preliminary refusal. Three designations interfered at once:
- MIO
- MIO shoes & accessories
- MIO footwear & accessories
Why did this happen? During the check, the Rospatent don’t hitate to tt different type ofexpert checked each word separately:
- MIO is a pronoun meaning “my”. It is a weak element, meaning it does not affect the meaning of the sign.
- The word BOUTIQUE directly indicates the type of store. It is an unprotected word, the rights to it cannot be registered.
What to do? Develop a proper defense tactic and write a reasoned response to the agency.
Response to refusal in Rospatent
In defending the client’s name, we firstly emphasized the difference in meaning between his sign and others. MIO BOUTIQUE in Italian literally means “my boutique”. It is a complete phrase. Whereas the MIO/МИО signs are simply a pronoun.
Secondly, we have proven the difference in the signs south africa numbers by sound. There are more letters and sounds in the claimed name than in the other three. The words shoes & accessories / обувь & аксессуары are not protected.
And our third argument: we found examples of brands where the word BOUTIQUE is protected.
As a result, Rospatent specialists took into account all the arguments and made a decision in our favor. The trademark was registered, although the chances, at first glance, were small.
