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Пять главных вопросов эксперту по неймингу

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Андрей Вершинин
Article's author13.08.2020

Our projects: naming

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FAQ about Naming

Can I use a name in a foreign language?

Under Russian law, a foreign-language name (including Latin script) can be registered as a trademark; however, consumer-facing information and signage must appear in Russian or have an equivalent Russian duplicate. In practice, it’s wise to protect the Cyrillic transliteration too: Rospatent assesses phonetic similarity, and Latin/Cyrillic versions may be deemed confusingly similar.

How do I choose Nice classes for registration?

List your current and near-term (1–3 years) goods/services and map them to the Nice Classification—don’t rely only on class headings; use explanatory notes and the alphabetical list. Prefer validated terms via Rospatent/FIPS tools, WIPO’s Madrid Goods & Services Manager, and/or EUIPO’s TMclass to reduce objections and speed examination.

How do I check registrability in other countries?

Run a knockout search: WIPO’s Global Brand Database for broad coverage, TMview for EU and many non-EU offices, plus national databases in target countries (e.g., USPTO). If you plan to file via Madrid, also check international registrations and status in Madrid Monitor/eMadrid. Aggregators aren’t complete, so have counsel run final checks in key jurisdictions.

Do I need to register the domain as a trademark?

Not required: domains and trademarks are different legal regimes, and a domain doesn’t confer trademark rights—you can even lose a domain if it conflicts with an earlier mark. That said, a registered mark strengthens your hand in UDRP actions against cybersquatting and gives access to ICANN mechanisms (e.g., Trademark Clearinghouse/Sunrise) for new TLD launches.

What names cannot be protected as a trademark?

Generic terms, purely descriptive words, non-distinctive signs, deceptive/misleading indications, and marks contrary to public policy or accepted principles of morality are typically refused on absolute grounds (Russia/EU and internationally).

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Notes.

The article uses photo and video materials provided by the customer / BRANDEXPERT "Island of Freedom" / ShutterStock / Freepik / Unsplash / Pexels / Goodmockups / Pixpine. All materials presented in the blog are purely informational in nature and do not pursue commercial purposes. The use of text, illustrations, photos, videos and other materials is prohibited without the consent of the copyright holder.

  
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