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Brand Protection and Trademark Management

Companies, especially those with a large number of trademarks, face challenges in monitoring their trademark protection. This includes both monitoring their own trademark status and monitoring others’ trademarks and products whose existence could do harm to the brand in some way.

We can help solve these difficulties by undertaking continuous monitoring of the terms of registration of your marks, correctness of their use, the occurrence of infringement by dishonest persons. If any risks are identified, the REVERA team will promptly get involved in solving the problem.

The Trademark Management service includes: 

  • Control of the trademark, verification of compliance with the terms of renewal, notification of the client.
  • Control of the use of the trademark by the client, checking and keeping documents confirming the start of the use in all classes within the prescribed period.
  • Weekly checking and monitoring of new applications that may come into conflict with the client’s trademark.
  • Preparation of opposition (opposition to a competitor’s trademark registration) and conducting proceedings against conflicting applications (first instance, without any appeal or judicial challenge to the ruling of the Patent Office).
  • Within the framework of the trademark registration protection against opposition (first instance, without appeal and without judicial challenge to the ruling of the Patent Office).
  • Monitoring of the client’s key markets in a particular region, submitting claims if violations are detected (e.g. Apple App Store, Google Play Market).
  • Receiving and processing use request (requests to use your trademarks) from interested parties, entering into template license agreements with licensors.
  • Storage of trademark documents.
     

1. Developing a strategy for brand protection in Belarus and all countries of the world based on the client's needs

  • Preparing recommendations to the client on the best option for brand protection in terms of the products and jurisdictions of interest, based on local requirements and features.
     

2. Support in preparing and filing trademark applications in Belarus and all jurisdictions of the world

  • Elaborating a list of goods and services based on the client’s needs and jurisdictions of interest for trademark registration.
  • Filing an application in the jurisdiction of interest or under the international procedure.
  • Informing about the result, sending decisions of protection and certificates of registration.
     

3. Preliminary brand checking

  • Preliminary brand due diligence for its conflict with the priority rights of other persons in the territories of interest and in relation to the products of interest, identifying risks.
  • Preparing recommendations for reducing them and possible options for action to protect the brand in a certain territory.
     

4. Monitoring the trademark status, checking compliance with deadlines, and constantly informing the client about the application status

  • Constant monitoring of the application status in terms of deadlines and the procedure for its consideration by local authorities.
  • Interaction with local attorneys. Payment of official fees and services of local attorneys in the interests of the client, if necessary.
  • Responses to formal requests and requests for substantive examination.
  • Preparation and forwarding of powers of attorney, if necessary.

5. Working with registered trademarks

  • Maintaining trademarks in force and updating register data (preparation and filing of petitions for extension of the validity period of a trademark for the next period, for making changes to the registration of trademarks).
  • Payment of official fees in the interests of the client.
  • Informing about the result.
     

6. Working with oppositions from third parties upon their receipt and preliminary refusals to register trademarks if they are issued

  • Analysis of received opposition and issued refusals for their overcoming.
  • Development of possible actions together with the client and local attorneys (in case of need).
  • Preparation and filing of petitions for re-examination and revision of the refusal decision, responses to the filed oppositions.
     

7. Preparation and filing, on behalf of the client, of oppositions against the filed TM applications or registrations of the competitor's TM that violate the exclusive rights of the client, conducting the procedure against conflicting applications and TM

  • Analysis of the situation and prospects for challenging the registration of a competitor’s trademark
  • Preparation and filing of oppositions against applications filed by competitors or against the registration of a trademark in the relevant jurisdiction.
  • Participation or coordination of participation in the process of considering the filed oppositions in the relevant authority.
    In Belarus — the Appeal Board of the National Center for Intellectual Property of the Republic of Belarus.

8. Support in the procedure for recognizing a trademark as well-known

  • Analysis of the situation and prospects for the possibility of recognizing a trademark as well-known.
  • Preparation of recommendations for collecting the necessary materials and information, analysis of materials provided by the client.
  • Preparation of an application and formation of a package of necessary documents.
  • Filing an application and representation or coordination of the protection of the client’s interests in the competent authority on this issue.
    In Belarus — the Appeal Board of the National Center for Intellectual Property of the Republic of Belarus.

9. Support for the inclusion of a trademark in the Customs register of intellectual property objects

  • Analysis of the prospects for inclusion of a mark in the customs register.
  • Preparation of recommendations for the client in terms of collecting the information and data necessary for this.
  • Preparation of document forms for signing by the client, verification and evaluation of the data and documentation provided by the client
  • Preparation of an application and formation of a package of documents for submission to the competent authority.
    In Belarus — the State Customs Committee of the Republic of Belarus.
  • Correspondence on requests with competent authorities, informing about the result.

10. Protection of rights to clients' trademarks from violations

  • Identifying potential violations and the persons who committed them.
  • Collecting and preparing evidence of violations, preparing letters of claim and notifications of rights to potential violators, preparing statements of claim against violators and submitting them to competent authorities.
    In Belarus — the Judicial Collegium for Intellectual Property of the Supreme Court of the Republic of Belarus.
  • Representing or supporting the representation of the client’s interests when considering these cases in court.

11. Support for the transfer of rights to trademarks under license agreements, assignment agreements

  • The preparation or verification and adjustment of drafts of agreements.
  • Coordinating and finalizing draft agreements based on the client’s wishes and legal requirements
  • Supporting the registration of such agreements (in cases provided by law).

12. Supporting the conclusion and registration of complex business license agreements (franchising)

  • The preparation or verification and adjustment of drafts of agreements.
  • Coordinating and finalizing draft agreements based on the client’s wishes and legal requirements
  • Supporting the registration of such agreements (in cases provided by law).

13. Any other issues related to the protection and defense of trademark rights in Belarus and abroad

Pavel Klementsov
Pavel Klementsov
Head of Brand Protection Direction
p.klementsov@revera.legal
Aliaksandra Mahlysh
Aliaksandra Mahlysh
Associate

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