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Procedia Computer Science 00 (2019) 000–000
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Procedia Computer Science 169 (2020) 435–439

Postproceedings of the 10th Annual International Conference on Biologically Inspired Cognitive

Postproceedings of the 10th
Architectures, Annual
BICA 2019International Conference
(Tenth Annual Meetingonof Biologically Inspired Cognitive
the BICA Society)
Architectures, BICA 2019 (Tenth Annual Meeting of the BICA Society)
Use of Digital Technologies for Optimizing the Handling of
Use of Digital Technologies for Optimizing the Handling of
Trademark Applications
Trademark Applications
Irina Suslina, Polina Mineeva*
Irina Suslina, Polina Mineeva*
National Research Nuclear University MEPhI (Moscow Engineering Physics Institute), Kashirskoe
highway
National Research Nuclear 31, 115409,
University MEPhIMoscow,
(MoscowRussian Federation.
Engineering Physics Institute), Kashirskoe
highway 31, 115409, Moscow, Russian Federation.

Abstract
Abstract
The article considers the analysis of the role of digital technologies in the handling of trademark applications. The article
describes
The articletheconsiders
main typesthe of trademarks,
analysis of the the
roleprocess of trademark
of digital registration
technologies in the Russian
in the handling Federation
of trademark and the The
applications. application
article
requirements.
describes the It alsotypes
main provides the main achievements
of trademarks, the process in
ofthe use of technologies
trademark registration in
in the
thefield of trademarks
Russian Federationand
andin the
the application
facilitation
of filing procedure
requirements. forprovides
It also the applicants.
the main achievements in the use of technologies in the field of trademarks and in the facilitation
of filing procedure for the applicants.
© 2019 The Authors. Published by Elsevier B.V.
©
© 2020
This
2019 The
is an
The Authors.
open accessPublished
Authors. by
by Elsevier
article under
Published B.V.
the CC BY-NC-ND
Elsevier B.V. license (https://creativecommons.org/licenses/by-nc-nd/4.0/)
This is an open access article under the CC BY-NC-ND license (http://creativecommons.org/licenses/by-nc-nd/4.0/)
Peer-review
This is an openunder responsibility
access of the
article under the CC
scientific committee
BY-NC-ND of the
license 9th Annual International Conference on Biologically Inspired
(https://creativecommons.org/licenses/by-nc-nd/4.0/)
Peer-review under responsibility of the scientific committee of the 10th Annual International Conference on Biologically Inspired
Cognitive
Peer-review Architectures.
under
Cognitive Architectures.responsibility of the scientific committee of the 9th Annual International Conference on Biologically Inspired
Cognitive Architectures.
Keywords: intellectual property; trademarks; digital technologies; technologies in IP; artificial intelligence in IP
Keywords: intellectual property; trademarks; digital technologies; technologies in IP; artificial intelligence in IP

1. Introduction
1. Introduction
Computer technologies have become an important aspect of the life of modern society and are now present in all
Computer
spheres, technologies
including haveproperty.
intellectual become Today,
an important aspect
with the helpofofthe life of modern
technology, societyhave
applicants and the
are opportunity
now presenttoinuse
all
spheres, including
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get promptproperty. Today,Inwith
consultations. the help
addition, overofthe
technology,
past year applicants have the opportunity
digital technologies have had a to use
major
online
impact services and get prompt
on the processing consultations.
of trademark In addition,
applications over the
in the Russian past year digital technologies have had a major
Federation.
impact on the processing of trademark applications in the Russian Federation.

* Corresponding author. Tel.: +7-903-010-02-62.

* Corresponding mineevapolina@yandex.ru
E-mail address:author. Tel.: +7-903-010-02-62.
E-mail address: mineevapolina@yandex.ru
1877-0509 © 2019 The Authors. Published by Elsevier B.V.
This is an open
1877-0509 access
© 2019 The article
Authors.under the CC by
Published BY-NC-ND license (https://creativecommons.org/licenses/by-nc-nd/4.0/)
Elsevier B.V.
Peer-review under
This is an open responsibility
access of the
article under thescientific committee
CC BY-NC-ND of the(https://creativecommons.org/licenses/by-nc-nd/4.0/)
license 9th Annual International Conference on Biologically Inspired Cognitive
Architectures.
Peer-review under responsibility of the scientific committee of the 9th Annual International Conference on Biologically Inspired Cognitive
Architectures.

1877-0509 © 2020 The Authors. Published by Elsevier B.V.

This is an open access article under the CC BY-NC-ND license (http://creativecommons.org/licenses/by-nc-nd/4.0/)
Peer-review under responsibility of the scientific committee of the 10th Annual International Conference on Biologically Inspired
Cognitive Architectures.
10.1016/j.procs.2020.02.242
436 Irina Suslina et al. / Procedia Computer Science 169 (2020) 435–439
2 Suslina, Mineeva / Procedia Computer Science 00 (2019) 000–000

Due to the globalization, Russia has become a large market for the goods of foreign companies in various sectors,
which is reflected in the increase in the number of international applications for trademark registration received by
the Russian patent office, which is the Federal Service for Intellectual Property (Rospatent). Rospatent has been
actively cooperating with the World Intellectual Property Organization (WIPO) on the international registration of
trademarks and is working on the quality enhancement of its services for Russian and foreign applicants.
As a result, there is a topical problem of using modern information technologies in fostering of approaches to the
protection of trademarks in the Russian Federation. Despite the development of theoretical and methodological
approaches to this problem, it still remains not fully explored due to the continuous development of information
technologies and organizations that use them. The analysis of this topic on the basis of information technologies
used in this area will highlight the opportunities and ways to solve the problems of their use in the registration of
trademarks.

2. Use of digital technologies for optimizing the handling of trademark applications

Trademark is a designation which is used for individualization of goods of legal entities or self-employed
entrepreneurs. In accordance with Article 1482 of the Civil Code of the Russian Federation, a trademark can be
registered in the form of verbal, graphical, volumetric and other designations or combinations of the above-
mentioned forms, registration of colour schemes is also possible [1]. There are a number of other forms designations
to be registered as trademarks, but two conditions must be always complied: the mark must possess distinctive
character and must not be misleading [2].
Nowadays transfer of exclusive rights to a trademark forms an integral part in international cooperation as it
affects positively the international business. This is primarily due to the possibility for the trademark owner to obtain
additional benefits from the use of the registered trademark, such as the expansion of production, realization of
goods and promotion of the trademark. The most widespread way of transfer the rights on a trademark is
franchising: trademark makes the basis of all franchising schemes as business strategies. The accelerated industrial
development and application of new technologies in business has made Russian market attractive to foreign
franchisers, which makes the trademark registration the issue of pressing importance.
Exclusive rights to a trademark arise only after its registration in the Federal Service for Intellectual Property
(Rospatent). It is allowed to use an unregistered designation instead of a trademark, but in this case no exclusive
rights arise.
Registration of the right to a trademark has territorial effect, that is, legal entities and self-employed
entrepreneurs gain the right to protection of their trademark only in those countries in which the certificate of
trademark registration was obtained in the respective registration authorities. Therefore, when doing business
abroad, it is essential to register trademarks in the countries where the company’s commercial activity is carried out
or planned. One of the possible ways to protect the trademarks for foreign companies doing business in Russia is to
appeal to the Russian Patent office. In order to register a trademark in the Russian Federation, an application to the
Federal Institute of Industrial Property (FIPS) must be filed. In conformity to the requirements of Article 1492 of the
Russian Civil Code, a trademark application must contain:
• an application for state registration of the designation as a trademark indicating the applicant, residence or
location of the applicant;
• the designation claimed in the application;
• a list of goods and / or services for which state registration of a trademark is claimed and which are grouped
by classes of the International Classification of Goods and Services for the registration of marks (ICGS);
• a description of the claimed designation [1].
The image of the claimed designation is presented in the colour or colour combination in which the state
registration of the trademark is claimed, and in a form that allows it to be accurately and clearly identified. All
explanations of the trademark characteristics should be provided with consideration to the generally accepted
terminology.
In order to optimize the activities of the states in the registration and verification of trademarks and service marks
for registrability, the Nice Agreement Concerning the International Classification of Goods and Services for the
Purposes of the Registration of Marks (ICGS) was concluded in 1957. Russia is a party to this agreement and uses
 Irina Suslina et al. / Procedia Computer Science 169 (2020) 435–439 437
Author name / Procedia Computer Science 00 (2019) 000–000 3

the ICGS to designate goods and services in respect of which means of individualization are registered. At the
moment, the 11th wording of the ICGS is in force. Trademarks are always registered in relation to specific goods
(services) with indication of the classes to which they belong.
The description of the claimed designation serves to explain the concept of the designation, its identification and
is not an obligatory element of the application, which is required to fix the filing date in accordance with paragraph
8 of Article 1492 of the Civil Code. The description provides a characteristic of the claimed designation: its form
(verbal, graphical, volumetric, changing, trademark perceived by smell, sound and other designation or combined
designation), an indication of the component elements, semantic meaning of the designation as a whole or of its
elements (parts) [3].
The application and the attached documents (application documents) shall be executed in compliance with the
requirements to the documents, which are defined by the provisions of the Requirements to the Documents (Order of
the Ministry of Economic Development of the Russian Federation of July 20, 2015 № 482).
After the application has been received by the patent office, it is assigned a registration number, and then a
formal examination of the application is carried out. Formal examination includes:
• verification of application content;
• verification of application fee payment;
• availability of all necessary documents, as well as compliance of their execution with the established
requirements [2].
Formal examination of the application for trademark registration is carried out within a month from the date of its
receipt by the patent office. If the formal examination was successful, the applicant is sent a decision to accept the
application for consideration with notification of the date of receipt of the application and the priority date of the
trademark. Further, the application is put through the trademark application review, which includes: the trademark
verification for the absence of absolute grounds for refusal of registration and verification on other grounds for
refusal of registration in accordance with Article 1483 of Part 4 of the Civil Code, including:
• search for identical and similar previously registered trademarks;
• determination of the degree of similarity of the claimed and identified in the search symbols;
• uniformity of the claimed goods and services to goods and services for which the identified trademarks are
registered.
A registered trademark is followed by granting a trademark certificate. The certificate of trademark registration
ascertains the priority of the trademark, the exclusive right of the owner to the trademark in respect of the goods
specified in the certificate. The certificate is issued in 2 months after the receipt of the fee payment document and
the confirmation by Rospatent. The trademark certificate is valid for 10 years from the date of filing the application
with the possibility of extension for 10 years an unlimited number of times at the request of the trademark owner
[1].
Presently, Rospatent is carrying out a number of activities aimed at reducing the time of handling the trademark
applications, which, among other things, contributed to the increase in the number of filed trademark applications.
During the year of 2018 (compared to 2017), the average duration of application handling under the national
procedure has decreased by 1.42 months and is now equal to 7.66 months [4].
In 2018 Rospatent actively developed the system of electronic services and electronic communication facilities.
Optimization of technological processes of the record management and the promotion of Rospatent and FIPS
transparency has become the core activities in work of Rospatent.
As a result of technological process automation, the TM-ADMIN electronic document management system was
introduced. The system covers the entire life cycle of trademarks: receipt of applications, their examination,
communication with applicants and other public regulators, registration and issue of trademark certificates.
The aim of this project is to increase the efficiency of budget costs for the automation of the trademark
registration process by scaling the functionality of the tool that allows productively and cost-effectively provide the
information support for the handling of applications for trademark registration, analysis of models of trademarks and
decision-making on trademark registration, as well as the use of electronic digital signature to give legal value to
electronic documents and data used in the handling of trademark applications [5].
The TM-ADMIN system already provides applicants with the following opportunities:
438 Irina Suslina et al. / Procedia Computer Science 169 (2020) 435–439
4 Suslina, Mineeva / Procedia Computer Science 00 (2019) 000–000

• The time for editorial review of the decision of trademark registration has been reduced of 1-2 working
days;
• New types of non-traditional trademarks specifying the characteristics of the mark and applicants
identification data have been introduced;
• Now applicants do not need to send paper copies of e-mail correspondence on applications for state
registration of a trademark [4].
By means of these updates, in 2018 Rospatent received more than 41600 electronic applications for trademark
registration. Examination of electronic applications is also conducted in the TM-ADMIN system on the basis of
documents and data provided in the electronic files of applications. Handling of electronic documents received in a
structured form obviates the need for an expert to introduce the modified data, as a consequence, the risk of
misprints is reducing. As reported by Rospatent, the average period of handling a trademark application registration
under the national procedure in the first half-year of 2019 was 5.78 months, although at the beginning of the second
quarter it exceeded six months and this is also the result of the use of new information technologies. [6]
Moreover, Rospatent continues entering into the electronic Public Register of Trademarks and Service Marks of
the Russian Federation and the List of World-known Trademarks in the Russian Federation. At the end of 2018 the
Register contained 610696 registrations and 201registrations respectively [4].
On March 25, 2019 the Federal Institute of Industrial Property has launched the new version of its information
retrieval system (IRS) for the range of intellectual property items, including trademarks. The updated system
provides conducting fuzzy search for trademarks.
The generated results of a query now include a larger number of ranked documents with consideration of the
various extensions of the query keywords. Now you it is also possible to manage the “level of query matching”.
• When specifying the level of matching the query “1”, the maximum number of documents will be returned,
taking into account the application of all possible filters of the query extension and the parameter for the edit
distance 2.
• When specifying the level of matching the query “2”, the documents will be returned with the application of all
possible filters of the query extension and the parameter for the edit distance 1.
• When specifying the level of matching the query “3”, the system will return the documents with the application
of all possible filters of the query extension without the edit distance.
Query extension filters serve to create different variants of the original query words, providing (among others)
confusingly similar results. Some of extension filters are as follows: merging, separating, transliteration,
morphology, converting numbers to text.
The edit distance, or Levenstein distance, is a metric that allows you to determine the “commonality” of two
strings - the minimum number of operations to insert one (or more) character, delete one (or more) character, and
replace one (or more) character with another required to turn one string into another. [7]
The information retrieval system ensures trademark search by such criteria as: name, registration number, filing
date, application number, publication date, trademark owner, ICGS classes and list of goods and/or services,
registration date, expiration date, number of the first application, filing date of the first application, country code of
the first application, date of entry in the Public Register of Trademarks, number(s) of other legally related
registrations.
Logging into the information retrieval system may be performed without login or password, but in this case a
limited collection of databases is available. The system user should register and pay for the access to reach all
available databases.
It should be noted that the database of international trademarks with the indication of Russia (ROMARIN) is no
longer supported. To search the ROMARIN database, the applicant should visit the website of the World Intellectual
Property Organization (WIPO) at http://www.wipo.int/romarin/search.xhtml.
At the end of 2018 the passport of the national program "Digital economy of the Russian Federation" was
approved, which is the result of the work of the concerned public authorities. Rospatent also took an active part in
this work, in particular, in the federal project "Information infrastructure", which includes activities for the creation
of an open information search and systems for providing services for the registration of trademarks in digital form.
 Irina Suslina et al. / Procedia Computer Science 169 (2020) 435–439 439
Author name / Procedia Computer Science 00 (2019) 000–000 5

3. Conclusion

To sum it up, the field of intellectual property has been moving towards the digital implementation, and using the
example Federal Service for Intellectual Property of the Russian Federation we have indicated the benefits, which
the applicants may enjoy even now. The trademark registration procedure in the Russian Federation has been
facilitated both for national and foreign applicants, as the use of the above-considered technologies has brought the
following tangible results: reduction of the duration of handling the trademark applications, introduction of new
online services for the applicants, lack of necessity to use paper copies of the applications. Access to the services
and transparency has led to the increase in the number of both national and international applications. This tendency
is likely to continue with further optimization of technological processes in the sphere of intellectual property. The
article also addressed the benefits from using such electronic systems as TM-ADMIN and information retrieval
system (IRS) and defined the criteria and filters for conducting trademark search.

Acknowledgements

This work was supported by Federal Autonomous Educational Institution of Higher Professional Education
National Research Nuclear University MEPhI (Moscow Engineering Physics Institute).

References

[1] Civil Code of the Russian Federation, Part 4 (2006) Federal Institute of Industrial Property Official Website, 2019. URL:
https://www1.fips.ru/documents/npa-rf/kodeksy/grazhdanskiy-kodeks-rossiyskoy-federatsii-chast-chetvertaya.php
[2] Forms of trademarks (2016) Intellectual Property Portal (with the support of Federal Agency for Press and Mass Media), 2019. URL:
https://www.copyright.ru/ru/documents/patentnoe_pravo/tovarniy_znak_brend/
[3] Order of the Ministry of Economic Development of the Russian Federation of July 20, 2015 № 482 (2015) Federal Institute of Industrial
Property Official Website, 2019. URL: https://www1.fips.ru/documents/npa-rf/prikazy-minekonomrazvitiya-rf/prikaz-ministerstva-
ekonomicheskogo-razvitiya-rf-ot-20-iyulya-2015-g-482.php
[4] Annual Report of the Federal Service for Intellectual Property (Rospatent) (2018) Federal Service for Intellectual Property Official Website,
2019. URL: https://rupto.ru/content/uploadfiles/otchet_2018_ru.pdf
[5] Electronic Document Management in Federal Institute of Industrial Property (2010) Federal Institute of Industrial Property Official Website,
2019. URL: https://www1.fips.ru/about/deyatelnost/konferentsii-seminary/tu2_tz.pdf
[6] Rospatent Performance in July 2019 (2019) Federal Service for Intellectual Property Official Website, 2019. URL:
https://rupto.ru/ru/news/07-08-2019-itogi-raboty-rospatenta-v-iyule-2019-goda-zaregistrirovat-tovarnyy-znak-mozhno-menshe-chem-za-
polgoda
[7] New Capabilities of Fuzzy Search in Trademark Database (2017) Federal Institute of Industrial Property Official Website, 2019. URL:
http://new.fips.ru/elektronnye-servisy/informatsionno-poiskovaya-sistema/novye-vozmozhnosti-nechetkogo-poiska-v-bd-tovarnykh-znakov-i-
nmpt.php