Spend thousands of rubles but save millions: why does a self-employed person need a trademark

The minimum cost of registering a trademark is 33,000 rubles. For self-employed people who are just starting a business, such expenses seem unreasonable. But practice shows that it is better to spend money at the start than to risk penalties in the future. After all, their size will no longer be tens, but hundreds or even millions of rubles.

On June 29, individuals received the right to register trademarks (FEDERAL LAW NO. 193). Previously, only companies and individual entrepreneurs could do this.

First of all, the changes are important for self-employed people who pay professional income tax: for example, designers, marketers, and carriers who work with businesses as contractors. We'll talk about them.

Together with an intellectual property lawyer K&P.Group Anna Yushchenko is looking into why a self-employed person needs a trademark, when and how to register it.

Why should a self-employed person register a trademark

You can register a word or phrase, label or logo as a trademark: for example, the name of an atelier or a designer's logo. It is not necessary to register a trademark, but if you do not do this, there is a risk of violating others' rights or losing your business.

Let's imagine a situation: a math tutor from Moscow has launched the “Digital Eads” training course for schoolchildren. She announced her project on social media, and also printed out ads and posted them around the city. Everything would be fine, but a month later, the teacher received a complaint from her colleague from Kursk: it turns out that he has been teaching the “Digital Eats” course for a long time and even registered this word as a trademark. If teachers are unable to resolve the issue peacefully, they will have to go to court. Then the Moscow tutor will be compensated for the illegal use of someone else's trademark. The amount of such a penalty may reach several million rubles (Article 1515 of the Civil Code).

And here's the opposite case: a confectioner from Arkhangelsk prepares and sells low-calorie desserts under the Fitness Treats brand. It has been in business for many years and has earned a good reputation among locals. But then a bakery with the same name opens in the city, whose products are not liked by the townspeople. Customers associate the new bakery with a pastry chef that has been working in the city for a long time and stop ordering from it. The self-employed woman asks the bakery to change its name, but is refused: the company has registered the phrase as a trademark and has the right to use it. The pastry maker has to change the name of his business and rebuild his customer base.

There is another difficulty. If you do not register a trademark in a foreign language, it is difficult to officially advertise it: a certificate of registration may be asked for for advertising on television or radio. K&P.Group works with a construction company that names residential complexes in English words. So that they can be advertised, these names are registered as trademarks.

Three ways to register

The trademark is registered by Rospatent. The initial registration period is 10 years, but it can be renewed as many times as you like (Article 1491 of the Civil Code). That is, a self-employed person can own a one-time trademark all their life.

The minimum cost of registering a trademark is 33,000 rubles. They will help you calculate the exact amount calculator or duty table on the Rospatent website. On average the application is reviewed for four months, it can be submitted in three ways.

• Inconvenient — fill out an application on paper and send it by mail.

You have to pay the duty, collect package of documents and send them to Rospatent. Here they will check whether the trademark violates current legislation: for example, you cannot register a swear word (Article 1483 of the Civil Code). So, in action NO. A33-31075/2022 the court found that the name of the Yobidoyobi sushi delivery chain was in tune with profanity and was contrary to public interests and moral principles.

If everything is in order with the documents and the trademark does not violate the law, it will be registered and issued a certificate.

• Profitable — through “ARM Registrar” service.

This method is available to those who have an electronic digital signature. All documents are submitted electronically through your personal account. A 30% discount is provided on trademark registration — instead of 33,000 rubles, you can pay 23,100 rubles. Correspondence with Rospatent can be conducted online; all notifications are sent to e-mail.

• New and not yet developed — via “State Services” website.

So far, this option is only available in theory. The service exists, but only companies and individual entrepreneurs can still use it.

When registering a trademark, various nuances may arise. To avoid wasting the duty, please contact K&P.Group: we will help you register a trademark in Russia and abroad, obtain the status of a “well-known” trademark, and enter a trademark in the customs register of intellectual property objects.