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The legal nature of a letter of consent for the registration of a trademark.

Dec. 15, 2018

One of the grounds for refusal of the registration of a trademark is the existence of the
legal protection of a confusingly similar trademark registered with respect to the similar products
and services.
However, Article 1483 of the Civil Code of the Russian Federation stipulates, that “The
registration as a trademark with respect to the similar products of the designation, which is
confusingly similar to any of the trademarks shall be allowed with consent of the right holder,
provided that such registration may not be a reason for confusing the consumer”.
Thus, it follows from the above said legal norm that when opposing a confusingly similar
“senior” trademark, the applicant is entitled to submit at filing an application for the state
registration of a trademark, or during the examination of a trademark application, a documentary
confirmation of consent of the right holder of the confusingly similar trademark for the state
registration of the claimed designation as a trademark.
From the point of view of the civil legislation, the letter of consent is a unilateral
transaction.
According to Article 153 of the Civil Code of the Russian Federation “The actions of
citizens and legal entities directed to the establishment, change or termination of civil rights and
duties shall be deemed to be transactions.”
According to Paragraph 2 of Article 154 of the Civil Code of the Russian Federation, “A
transaction for the conclusion of which, according to law, other legal acts or an agreement of
the parties the expression of the will of one party is necessary and sufficient shall be considered
unilateral.”
According to Article 155 of the Civil Code of the Russian Federation, “A unilateral
transaction shall create duties for the person who has concluded the transaction. It can create
duties for other persons only in the cases stipulated by law or by an agreement with these
persons.”
However, the letter of consent is a specific kind of a unilateral transaction, since it does
not directly create a duty for the person who has issued it.
Granting by the right holder his consent for the registration in the name of another person
of a trademark similar to the one owned by the right holder and which has an earlier priority with
respect to the similar products (services) is the right of the right holder. The purpose of granting
the above said consent is the occurrence of the exclusive right to a similar trademark in a person
other than the right holder.
Thus, the person in whose name the trademark has been registered on the ground of a
letter of consent shall be a beneficiary of this unilateral transaction.
In this case, the beneficiary should be understood as a person in whose favor the
transaction has been concluded, or a person in whose interests the obligation is being fulfilled.
This concept implies that the above said subject has a property interest in the existing legal
relations.
By implication of Article 1483 of the Civil Code of the Russian Federation it follows that
in the absence of the right holder’s consent, the registration of a similar trademark shall not be
allowed.
Thus, granting consent by the right holder is necessary and sufficient for the occurrence
of the exclusive right to a similar trademark in other person.
The requirements for the right holder’s letter of consent are regulated by Order of the
Federal Service for Intellectual Property, Patents and Trademarks No. 190 of December 30, 2009
“On adoption of the recommendations for the application of the provision of the Civil Code of
the Russian Federation concerning the right holder’s consent.”

The letter of consent shall be made in an arbitrary form. However, the letter of consent
must contain obligatory the following information:
– the information on the person, who grants consent for the registration of the claimed
designation as a trademark, which allows identifying such person as the right holder of the
opposed trademark (his name, his location);
– the information on the person, to whom consent for the registration of the claimed
designation as a trademark, which allows identifying such person as an applicant of the
application (his name, his location) is granted;
– the expression of the right holder’s consent for the registration of the claimed
designation as a trademark, with providing the application number, if assigned, and the
description of the claimed trademark, for which consent for the registration as a trademark with
the attachment of the claimed designation is being granted;
– a specific list of products/services with respect to which the right holder does not object
against the registration of the claimed designation as a trademark;
– a date of composition of the document and a signature of an authorized person.
If the submitted document confirming consent does not comply with the above said
requirements for execution, it can not be an expression of the right holder’s consent for the
registration of the claimed designation as a trademark.
Thus, the discrepancy between the letter of consent and the requirements of these
Recommendations may be a ground for the recognition of the fact that consent for the
registration of a trademark has not been expressed in this document.
However, the court will consider all the evidence and circumstances of the case in the
aggregate.
So, for example, in the Resolution of the Presidium of the Intellectual Property Court of
December 27, 2017, in case No. SIP-329/2017, the legal position is expressed, according to
which the absence of the date of composing a disputed document discredits not unconditionally
the letter of consent.
The absence of the date is not an independent and sufficient ground for recognizing the
submitted document to be inadmissible evidence of the expression of the company’s will to grant
permission for the registration of a specific claimed designation.
The court of cassation, taking into account the indication in the text of the letter of the
number of the application for the registration of the designation as a service mark (No.
2011741070), notes that the corresponding consent is obviously expressed after the filing date of
the said application.
Thus, the court found that, despite the absence of the date of composing the document,
based on the details and content of the letter, the right holder’s expression of will to issue a letter
of consent for the registration of the designation with respect to the indicated application is
obvious.
One of the requirements to the letter of consent is signing it by an authorized person.
However, this may not only be a sole executive body.
The letter of consent may also be signed by a representative. In this case, a power of
attorney authorizing a representative to sign a letter of consent for the registration of the claimed
designation as a trademark on behalf of the right holder should be attached to the letter of
consent.
The authority to sign a letter of consent for the registration of the trademark on behalf of
the right holder should be specifically stipulated in the power of attorney.
Thus, not any official person can sign a letter of consent for the registration of a
trademark on behalf of the company, but only a sole executive body or a person with an
appropriate power of attorney.
In practice, there can be a situation, when the employee of the right holder, on behalf of
whom the letter of consent has been issued, who does not have the appropriate authority and

instructions of the company, signs the letter of consent for the registration of the trademark on its
behalf.
So, for example, LLC “Liqueur and Vodka Distillery “Saranskiy” has filed a statement of
claim to the arbitration court to invalidate a null and void transaction, expressed in the issuance
on behalf of LLC “Liqueur and Vodka Distillery “Saranskiy” a letter of consent for the
registration of the trademark in the name of LLC “Moscow Trading Company,” because the
letter of consent on behalf of LLC “Liqueur and Vodka Distillery “Saranskiy” had been signed
by an unauthorized person.
In order to verify the authority of the person who has signed the letter of consent on
behalf of the right holder, and thereby to demonstrate one’s good faith is possible by obtaining
an extract from the Unified State Register of Legal Entities (hereinafter referred to as the
USRLE). The actuality of the extract from the Register can be checked on the website of the
Federal Tax Service of Russia (egrul.nalog.ru), the information from which is open and publicly
available.
By virtue of Paragraph 2 of Article 51 of the Civil Code of the Russian Federation, “The
data of the state registration shall be included in the Unified State Register of Legal Entities,
which is open for the public examination.
A person who faithfully relies on the data of the Unified State Register of Legal Entities
has the right to proceed from the assumption that they correspond to actual circumstances.”
By implication of this Article, according to a general rule, when verifying the authority of
the person, who is concluding a transaction on behalf of the legal entity, the counterparty of the
legal entity must rely faithfully on the information about its authority contained in the Unified
State Register of Legal Entities.
As explained in Paragraph 22 of Resolution of the Plenum of the Supreme Court of the
Russian Federation No. 25 of June 23, 2015 “On the application by courts of certain provisions
of Section I of the first Part of the Civil Code of the Russian Federation” “According to
Paragraph 2 of Article 51 of the Civil Code, the data of the state registration of legal entities
shall be included in the Unified State Register of Legal Entities, which is open for the public
examination.”
The court, when considering case No. A41-10703/2018, determined that the Defendant
should have known that the person signing the letter of consent of 09.04.2013 was not the
Director – the sole executive body of LLC “Liqueur and Vodka Distillery “Saranskiy,” and as a
result, in the absence of a duly executed power of attorney, he had not had the legal authority to
sign the letter of consent on behalf of the Company for the registration of the trademark.
Consequently, the consent expressed in the letter for the registration of a trademark is a
null and void transaction, according to Paragraph 1 of Article 53, Articles 153, 167, 168 of the
Civil Code of the Russian Federation, what entails its invalidity.
Also, the court may recognize the letter of consent as improper evidence, and, as a result,
it can recognize granting the legal protection to the trademark as completely invalid, without
recognizing it as a null and void transaction.
Thus, the court, when considering case No. SIP-635/2015, noted that the letters of
consent for the registration of a disputed trademark, signed on behalf of the General Director of
the company “Yug Rusi” V. V. Dmitriev, were not a proper consent for the registration of a
disputed trademark, since according to the letters of V. V. Dmitriev and M. V. Arkannikov, they
had not signed on behalf of the company “Yug Rusi” the letters of consent for the registration of
a trademark according to application No. 2010724445.
In addition, the court when considering the case took into account that the person named
in the letter of consent as a person who had signed it as the General Director of the company
“Yug Rusi” had not been the General Director of the company “Yug Rusi” at the date of
signature of the letter of consent.
Thus, having assessed, according to the requirements of Article 71 of the APC RF, the
evidence submitted to the case materials, in the aggregate, the first-instance court concluded that

in fact the consent of the right holder of the opposed trademarks for the registration of the
disputed trademark had not been granted, consequently, the trademark had been registered in
violation of Subparagraph 2 of Paragraph 6 of Article 1483 of the Civil Code of the Russian
Federation.
This legal position is confirmed by the Presidium of the Intellectual Property Court.

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Author of article

Olga Zhurid

Olga Zhurid

Lawyer