Brand squatters on the march: how we tried to squeeze out the name of the service
This story began a little over a year ago. If I had written bad detective stories, I would have started it with a phrase like “Nothing foreshadowed any trouble on this beautiful spring day.” But since this is not a detective story, but a real life, I will simply state this story as briefly and as close as possible to the point. If she serves you as a useful warning, I will be very happy. We miraculously managed to slip between Scylla and Charybdis, but it’s not at all the fact that somewhere in the depths of Rospatent there is no similar application from an unknown brand quater for your service or program right now.
So, it all started on the day when we decided to register the trademark of our service in Russia. At that time, we already had a registered TM in the USA, so we did not expect any problems with registration in the Russian Federation. However, the reality has made its own adjustments. A week after the start of the standard registration procedure, we received a letter from a patent attorney who, to put it mildly, knocked us out of the rut:
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Looking into the attached document, we, speaking correctly, were frustrated - one of the mentioned applications exactly repeated our company name used in the service logo :
So, unexpectedly and in a big way, we plunged into the magical world of brand squatting.
The registrar’s response was disappointing:
It is clear that it was impossible to leave everything in this state, and we began to look for solutions:
We considered brand quotters to be brand quaters, at best, as a waste of time, and, at worst, as the start of negotiations with terrorists that we did not want to conduct.
It became obvious that we were at an impasse. Therefore, we did something similar to what you most likely would have done: in order to immerse ourselves in the topic, we began to recite materials on disputes around trademark registration and in parallel turned to collective intelligence. In his role was the community of PlanFix partners.
There are many active guys among our partners who could take the course “Managing the Action” to the trade union activists of Chicago in the 20s of the last century, so we were the first to get an offer to find our “friend” kieber squatter in Khimki and break his legs. And it was only a joke. But this is not our method, so we chose a different path: we turned to a lawyer specializing in such matters, which was recommended by one of the partners. As further developments showed, this was the right step.
Having described the situation to a specialist, we received an answer that encouraged us. This is also the case because in relation to the brand quater, the lawyer voiced a position close to our perception of the situation:
I specifically quote the lawyer's comments in sufficient detail in the hope that they will help someone in a similar situation. They give a general idea of what to do and where to dig.
I will highlight the key point: in the appeal we had to prove that the designation “Plan Fix” is used in Russia, and for a long time and widely. To do this, we have prepared a large set of documents and data, which included:
After filing an appeal to Rospatent, we just had to wait.
The good news came in August: the official body recognized the bids of the brand-quater to be withdrawn due to non-payment by the applicant. We have no evidence that the existence of our appeal has affected his decision not to pay for his applications, but most likely, these events are interrelated. The refusal of the brand owner to claim our name removed barriers to trademark registration and in May of 2018 - a little more than a year after the start of this story - the “planfix” trademark was registered for us.
The story ends here. An extensive technical correspondence and the time and money spent remained behind the scenes, but in fact this is not so important, I brought all the key points. It remains to draw a line and add some more useful information.
What would happen if we didn’t accidentally find an application for a brand squatter at an early stage?
The official resource of "Rospatent" has the ability to conduct a paid search for registration requests . If I correctly understood their pricing system , one request will cost 295 rubles. I myself did not try to look there.
In the process of preparing this note, I also found such a resource (just in case, I will say that I have nothing to do with it and this is not one of those companies whose services we used). It has a free search for applications for registration of trademarks, but it will not work to check the availability of tags for your brand - there is no such parameter for the request. But on it, I was able to see all the applications submitted by our “friend” brand watcher, including our service. To do this, just enter the name of the applicant company in the appropriate field of the search form:
Look, you might recognize a familiar brand.
And one more thing, not so much useful as just curious. In the same place (below the search form) are published digests with information about applications for registration of TM. At the end of each digest - a summary table of the number of applications filed by a person. Here is the digest for April 2017 according to which our “friend” submitted 14 applications. Please note that in the top of the list for the same period are located organizations that submitted 30-40. And this is not the limit, in other digests I met the heroes of the invisible front, who filed 80-90 trademark applications. Of course, this does not mean that they are all brand squatters, but it’s worth a closer look. By hammering the names of such organizations into the search, one can look at the unusual world of trademark registration in general and brand quotation in particular. But the likelihood of finding among these applications an attempt to capture their brand is not so great, so this is more of a free entertainment than a way to protect yourself.
Our experience is limited to the situation described in this post and I am not ready to give universal advice. What exactly does not give you protection (based on our example):
What helps: to name the product as a legal entity (well, or vice versa). Unfortunately, in our case it is not. If you, too, then perhaps the best advice would be to simply register your trademark, without waiting for someone else to do it.
So, it all started on the day when we decided to register the trademark of our service in Russia. At that time, we already had a registered TM in the USA, so we did not expect any problems with registration in the Russian Federation. However, the reality has made its own adjustments. A week after the start of the standard registration procedure, we received a letter from a patent attorney who, to put it mildly, knocked us out of the rut:
')
Looking into the attached document, we, speaking correctly, were frustrated - one of the mentioned applications exactly repeated our company name used in the service logo :
So, unexpectedly and in a big way, we plunged into the magical world of brand squatting.
The registrar’s response was disappointing:
It is clear that it was impossible to leave everything in this state, and we began to look for solutions:
We considered brand quotters to be brand quaters, at best, as a waste of time, and, at worst, as the start of negotiations with terrorists that we did not want to conduct.
It became obvious that we were at an impasse. Therefore, we did something similar to what you most likely would have done: in order to immerse ourselves in the topic, we began to recite materials on disputes around trademark registration and in parallel turned to collective intelligence. In his role was the community of PlanFix partners.
There are many active guys among our partners who could take the course “Managing the Action” to the trade union activists of Chicago in the 20s of the last century, so we were the first to get an offer to find our “friend” kieber squatter in Khimki and break his legs. And it was only a joke. But this is not our method, so we chose a different path: we turned to a lawyer specializing in such matters, which was recommended by one of the partners. As further developments showed, this was the right step.
Having described the situation to a specialist, we received an answer that encouraged us. This is also the case because in relation to the brand quater, the lawyer voiced a position close to our perception of the situation:
I specifically quote the lawyer's comments in sufficient detail in the hope that they will help someone in a similar situation. They give a general idea of what to do and where to dig.
I will highlight the key point: in the appeal we had to prove that the designation “Plan Fix” is used in Russia, and for a long time and widely. To do this, we have prepared a large set of documents and data, which included:
- Payment documents of clients from different regions of the Russian Federation to our address, in which the “payment for the access to the“ PlanFix ”service featured in the payment purpose
- Certificates of partners in various regions of the Russian Federation
- A selection of mentions of the service in the federal and regional media and other sources
After filing an appeal to Rospatent, we just had to wait.
The good news came in August: the official body recognized the bids of the brand-quater to be withdrawn due to non-payment by the applicant. We have no evidence that the existence of our appeal has affected his decision not to pay for his applications, but most likely, these events are interrelated. The refusal of the brand owner to claim our name removed barriers to trademark registration and in May of 2018 - a little more than a year after the start of this story - the “planfix” trademark was registered for us.
The story ends here. An extensive technical correspondence and the time and money spent remained behind the scenes, but in fact this is not so important, I brought all the key points. It remains to draw a line and add some more useful information.
What would happen if we didn’t accidentally find an application for a brand squatter at an early stage?
- By registering our trademark, a cybersquatter would be entitled to demand that we stop using it. This is the number one problem - both in organizational and financial terms. To change the name of the service, which has been in the market for many years, with an established customer base and reputation, is very expensive. Most likely, this question would become a subject of blackmail and we would be faced with an unpleasant choice: go to the bow to the rogue and pay him a price or lose his name.
- According to the legislation of the Russian Federation, the right holder has the right to demand from the violator payment of compensation in the amount of up to 5 million rubles. And I met materials telling that the courts readily go to the maximum amount of the fine, if it is proved that the violation has been happening for a long time and in large quantities (and for us it would be just that, because thousands of Russian companies use the service).
- As the cherry on the cake, the law provides for criminal penalties for the use of another's trademark, up to imprisonment for up to 5 years. To do this, the illegal use of a trademark must occur repeatedly, cause major damage and be committed by an organized group. I don’t know if it would have been possible to prove it in our case (I wouldn’t be surprised if I did), but as a tool of blackmail on the part of the brand quater, the proposal to “sit and think” would definitely be useful.
How to check if cybersquatter coyed in your name?
The official resource of "Rospatent" has the ability to conduct a paid search for registration requests . If I correctly understood their pricing system , one request will cost 295 rubles. I myself did not try to look there.
In the process of preparing this note, I also found such a resource (just in case, I will say that I have nothing to do with it and this is not one of those companies whose services we used). It has a free search for applications for registration of trademarks, but it will not work to check the availability of tags for your brand - there is no such parameter for the request. But on it, I was able to see all the applications submitted by our “friend” brand watcher, including our service. To do this, just enter the name of the applicant company in the appropriate field of the search form:
Look, you might recognize a familiar brand.
And one more thing, not so much useful as just curious. In the same place (below the search form) are published digests with information about applications for registration of TM. At the end of each digest - a summary table of the number of applications filed by a person. Here is the digest for April 2017 according to which our “friend” submitted 14 applications. Please note that in the top of the list for the same period are located organizations that submitted 30-40. And this is not the limit, in other digests I met the heroes of the invisible front, who filed 80-90 trademark applications. Of course, this does not mean that they are all brand squatters, but it’s worth a closer look. By hammering the names of such organizations into the search, one can look at the unusual world of trademark registration in general and brand quotation in particular. But the likelihood of finding among these applications an attempt to capture their brand is not so great, so this is more of a free entertainment than a way to protect yourself.
How to protect yourself from brand quatters?
Our experience is limited to the situation described in this post and I am not ready to give universal advice. What exactly does not give you protection (based on our example):
- the presence of registered TM in other countries;
- availability of a registered domain.
What helps: to name the product as a legal entity (well, or vice versa). Unfortunately, in our case it is not. If you, too, then perhaps the best advice would be to simply register your trademark, without waiting for someone else to do it.
Source: https://habr.com/ru/post/359058/
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