On the registration of trademarks by citizens

On June 29, 2023, amendments to the Civil Code of the Russian Federation came into force [1], which removed restrictions on entities that have the right to apply for trademark registration. In particular, the legislator replaced in paragraph 1 of Art. 1492 of the Civil Code of the Russian Federation the words "individual entrepreneur" with the word "citizen", and Art. 1478 of the Civil Code of the Russian Federation recognized as invalid [2].

By virtue of these changes, citizens have been given the opportunity to register trademarks, as well as to possess and dispose of the exclusive right to them, regardless of whether they have the status of an individual entrepreneur.

The imperative requirement specified in the last edition of Art. 1478 of the Civil Code of the Russian Federation that only legal entities and individual entrepreneurs can have the exclusive right to a trademark has been the subject of controversy for a long time, incl. judicial.

The main argument in favor of lifting restrictions on the range of subjects was the need to ensure equality of participants in civil circulation, in particular, with respect to foreign citizens. So, in the national legislation of many countries (for example, Austria, Germany, China, USA), as well as in the European Union, registration of a trademark by an individual is allowed. In addition, such registration is possible under the Madrid system in accordance with the Agreement on the international registration of marks [3]. In this regard, Russian applicants are discriminated against persons who claim that the legal protection of trademarks on the territory of the Russian Federation under international registration is extended and can receive protection.

In turn, the need for restrictions was motivated by the fact that a trademark is used to individualize goods (Article 1477 of the Civil Code of the Russian Federation) and, accordingly, is intended for use in business activities. At the same time, as a general rule, a citizen can engage in such activities from the moment of state registration as an individual entrepreneur (clause 1, article 23 of the Civil Code of the Russian Federation). Thus, a citizen cannot be interested in owning a trademark if he does not intend to use it for commercial purposes.

However, the adoption of Federal Law No. 422-FZ of November 27, 2018 “On Conducting an Experiment to Establish a Special Tax Regime “Tax on Professional Income” allowed citizens of certain constituent entities of the Russian Federation to conduct activities whose income is subject to tax on professional income, without state registration as individual entrepreneurs (part 6 of article 2 of Law N 422-FZ).

Thus, the restriction established in Art. 1478 of the Civil Code of the Russian Federation, came into conflict with paragraph 1 of Art. 2 of the Civil Code of the Russian Federation, which guarantees the equality of participants in civil transactions, as well as the grounds for the emergence and procedure for exercising rights to the results of intellectual activity and equated means of individualization (intellectual rights), which prompted the legislator to change the approach to regulation [4].

It is interesting to note that these amendments to the Civil Code of the Russian Federation removed restrictions not only for the self-employed, but also for citizens who do not have any entrepreneurial status. Time will tell how these changes will be implemented in practice.

Sources:

1."Civil Code of the Russian Federation (Part Four)" dated 12/18/2006 N 230-FZ (as amended on 06/13/2023) (as amended and supplemented, entered into force on 06/29/2023) // SPS "ConsultantPlus"

2.Federal Law of June 28, 2022 N 193-FZ "On Amendments to Part Four of the Civil Code of the Russian Federation" // ATP "ConsultantPlus"

3."Agreement Concerning the International Registration of Marks" (Concluded in Madrid on April 14, 1891) (as amended on October 2, 1979) // ATP "ConsultantPlus"

4.Explanatory note in the draft Federal Law N 63528-8 "On Amendments to Part Four of the Civil Code of the Russian Federation (in terms of expanding the circle of trademark holders)"