When is it better to register your brand as a trademark: after it has been sufficiently promoted or much in advance, perhaps even before it enters the market? Many entrepreneurs tend to think that there is no need to rush with trademark registration, but practice shows that any delay can cause serious problems. What could go wrong? Let's examine two recent cases in today's 'Intellectual Environment' column.

The first example is the meme “POKAZALOS” (in Russian meaning: ‘eyes are playing tricks on you’) and TVOE store (see https://habr.com/ru/news/t/492858/ (in Russian)). In July 2017, blogger Anatoly Kapustin posted a photo of a T-shirt he designed with a patch on its back that looked like a police uniform, but instead of the word “POLITSIYA” (meaning ‘police’ in Russian) there was the word “POKAZALOS” in a red frame. Later, the blogger found that the same T shirts were sold in the TVOE stores and on the Wildberries online store.

The blogger became outraged and sent a complaint to the stores, but they did not recognize a breach. The stores claimed that the word “Pokazalos” has no creative feature (in fact, it is a common word), which means that it is not subject to copyright and they are not required to ask anyone for permission to use it.

The media reports the blogger intends to go to court, but it is very difficult to predict the outcome of the proceedings. Obviously, this dispute will raise one of the most complex issues of copyright, which sounds extremely philosophical: what does “creativity” in fact mean? It will definitely take effort to convince the court that the word “Pokazalos” may be subject to copyright. Most likely, it will be a little easier to prove the creative nature of the T-shirt design, but event that is far from certain.

Anyway, the dispute is expected to be complicated and unpredictable. Could Mr. Kapustin have somehow bettered his lot? Very likely, he could have. Let’s suppose that when the blogger designed the T-shirt he applied for registration of the word “Pokazalos” (and/or the word on a black background in a red rectangle frame) for T shirts and other clothes. It is quite possible that such a trademark would have been registered (although we can’t be 100% sure). In that case, having noticed T-shirts with a disputed print in the store, he could have sued for breach of his trademark rights, claiming compensation. There would have been no need for an immense dispute over the essence of creativity because if there is a trademark and it is placed on a product without the copyright holder’s consent, it is a breach. As a result, it would have been much easier to resolve the dispute in favor of the blogger than without a trademark registered.

The second news is about one of the most popular Russian-language channels on YouTube with an incredible 51 million subscribers and 29 billion (!) views. We assume that, same as we were, the reader will be surprised to learn that we are talking about the Like Nastya channel, which shows the life of a 6-year old girl going to amusement parks, playing with friends and so on (http://rapsinews.ru/incident_news/20200313/305570557.html).

Despite the tremendous success, the girl’s parents who manage the channel did not apply for registration of its name as a trademark. As a result, some company registered the Like Nastya trademark instead. Nastya's father appealed to the Patent Disputes Chamber and attempted opposing the registration, but the Chamber denied his opposition.

The reason again was difficulties in interpreting the law and argumentation. The girl’s father claimed that Like Nastya was his daughter’s nickname, and the Civil Code expressly prohibits the registration of other people's nicknames as trademarks without obtaining permission. The Chamber, however, did not support his argument, since according to it, Like Nastya is the channel name, not the girl’s nickname, because on all the videos she was called by just her name.

Of course, the decision of the Chamber can be appealed in court, and in our opinion, the arguments for opposing the registration are not limited to the “nickname” only. However, currently the trademark remains registered in the name of another person, and again the outcome of a future dispute in court, if it happens, is extremely unpredictable. The only way to prevent such a situation is to apply for registration of the trademark in advance.

The moral of these two completely different stories is the same: you need to register a trademark in advance before the brand becomes known and popular, and it is best to apply even before your brand enters the market. This will allow avoiding in the future not only difficulties similar to those described above, but also many other problems.

There is only one exception when a trademark needs to be submitted for registration after it becomes known. For example, Sberbank recently took advantage of this exception when it registered the “Spasibo” trademark (meaning ‘thank you’ in Russian), which will be discussed in the next 'Intellectual Environment' publication.