Everyday Innovation

Everyday innovation…

I recently wrote that life at Rospatent becomes noticeably busier towards the end of the year. Another Academic Council meeting took place last week.

This time, the agenda happened to focus mainly on trademarks. That is not exactly my field, so I did not take part in the discussion, but I listened closely and tried to understand problems that might seem insignificant at first yet have very deep roots and equally far-reaching consequences.

Of all the issues discussed, I would single out two:

1. Patent trolls. The law defines the “filing date of a trademark application” as the date on which the federal executive authority for intellectual property receives the documents specified in subparagraphs 1–3 of paragraph 3 of Article 1492 of the Civil Code of the Russian Federation. If those documents are not submitted at the same time, it is the date on which the final document is received. The applicant then has six months to pay the fee for examination of the application.

This window exists in accordance with the Singapore Treaty on the Law of Trademarks, which Russia has signed. The idea is to allow applicants to secure priority for a trademark even if they do not currently have sufficient funds to register it.

Patent trolls often exploit this provision: they file applications but do not pay the patent fees, thereby preventing bona fide manufacturers from registering their trademarks.

The Academic Council decided to submit proposals for legislative amendments under which the filing date of a trademark application would be the date on which the fee is paid.

2. Use of copyrighted works in trademark registration. It turns out that Rospatent examiners cannot refuse to register a trademark that infringes copyright belonging to a third party unless that rights holder contacts Rospatent. This means that any company can register a trademark featuring, for example, a well-known animated character unless the character’s rights holder asks Rospatent to block the registration.

In the past, examiners refused to register such “questionable” trademarks. The applicants would then go to the Chamber of Patent Disputes, which reprimanded the examiners because they had no grounds for refusing registration without a request from the rights holder.

If an examiner did register the trademark, however, a conflict arose: one party held the copyright in the image, while another owned a trademark for it. Court proceedings between them would then become inevitable…

It is frightening to imagine how many other conflicts like these exist in our legislation.