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Articles

The peculiarities of proving the use of the trademark by the right holder in the cases on an early termination of the legal protection of a trademark

April 15,2019

According to Paragraph 1 of Article 1486 of the Civil Code of the Russian Federation (hereinafter referred to as the C.C.R.F.), “The legal protection of a trademark may be early terminated in relation to all products or a part of the products, for the individualization of which the trademark is registered, due to the non-use of the trademark continuously within three years.”

The institution of the early termination of the legal protection of the trademark is a common means of defending the interests of the applicants in the situations, when the third party’s identical or confusingly similar trademark is found during the examination of the designation claimed for the registration as a trademark.

The reason for the early termination of the legal protection of the trademark through the legal proceedings is the failure to prove by the right holder of the use of the trademark in relation to all products or a part of the products for the individualization of which it is registered.

The use of the trademark within the framework of the system analysis of the provisions of Articles 1484 and 1486 of the C.C.R.F. is, in the legal terms, the obligation of the right holder and it serves as a tool for ensuring the real operation of the trademarks in the civil circulation (Resolution of the Presidium of the Supreme Arbitration Court of the Russian Federation of September 17, 2013 No. 5793/13).

According to Paragraph 3 of Article 1486 of the C.C.R.F., the burden of proving the use of the trademark rests with the right holder. In this regard, the right holder should submit the proofs of a real use of the trademark. However, this is not always possible in practice.

In this regard, while proving the use of the trademark within the disputed three-year period, the right holder should take into account the following circumstances.

As it was repeatedly noted in the decisions of the Presidium of the Intellectual Property Court, in the cases on the early termination of the legal protection of the trademark, the right holder must prove the use of the trademark in relation to each product or service in the form, in which the specified products or services are indicated in the certificate for a trademark (Resolutions of the Presidium of the IPC of February 17, 2017 in case No. SIP-207/2016, of September 14, 2017 in case No. SIP-165/2016).

At the same time, unlike establishing the circumstances of the plaintiff’s interest in then early termination of the legal protection of the trademark, when analyzing the list of the products in relation to which the rights holder’s use of the trademark is being proved, the homogeneity of the products shall not be taken into account (Paragraph 41 of the Judicial Practice Review in the cases Related to the Settlement of Disputes on the Intellectual Rights Defence approved by the Presidium of the Supreme Court of the Russian Federation of September 23, 2015).

According to the legal position of the Supreme Court of the Russian Federation (Decision No. 300-AS15-10765 of January 11, 2016 in case SIP-530/2014), while proving the use of the trademark, the homogeneity may be taken into account in relation to the well-known trademarks. To implement such approach, the right holder should both submit the proofs of the use of the trademark and also prove the fact that the trademark is well-known “not abstractly, but in relation to the products and services that are homogeneous to those ones, in relation to which the trademark is not actually used, so that the wide popularity of the trademark, when it is used in relation to the specific products, would be extended in the eyes of the consumers to other products in relation to which the trademark is not used.”

For the purposes of applying the provisions of Article 1486 of the C.C.R.F., the use of a trademark shall be recognized as its use in accordance with Paragraph 2 of Article 1484 of the C.C.R.F. At the same time, the list of the ways to use a trademark is open and, thus, it allows using the trademark, when the products together with other products are introduced into the civil circulation (Resolution of the Presidium of the IPC of February 12, 2018 in case No. SIP-372/2018).

For the purposes of recognizing the trademark used in terms of the meaning of Paragraph 2 of Article 1486 of the C.C.R.F., the law does not contain a requirement for placing the trademark directly on the product being introduced into the civil circulation. Taking into account the fact that placing the trademark directly on the services being provided is impossible, when proving the fact that the trademark (service mark) is used in relation to the services for which it is registered, the holder of the trademark (service mark) must submit the proofs of the individualization by the indicated designation of the services being actually provided.

If the trademark is used, for example, on a signboard at the place of providing services, such use should be qualified as the use of the trademark for the individualization of these services (Resolution of the Presidium of the Intellectual Property Court of February 12, 2018 in case No. SIP-379/2017).

When proving the use of the trademark, submitting the proofs of the fact of the conclusion of the license agreements, in accordance with which the third parties are granted the right to use the trademark, is not sufficient in the absence of the confirmation of the introduction of such products into the civil circulation:

“As it follows from the explanations contained in Paragraph 38 of the Review, for the purposes of applying the provisions of Article 1486 of the C.C.R.F., not any use of the trademark (service mark) by the right holder shall be taken into account, but only committing the actions stipulated by Paragraph 2 of Article 1484 of the C.C.R.F. directly related to the introduction of the product (service) into the civil circulation.

Thus, the mere fact of concluding the licensing agreements for the use of the trademark in relation to the products of the 28th class of the ICGS “large-scale vehicle models” without the confirmation of the direct introduction of such products into the civil circulation is not enough to confirm the use of the trademark for the purposes of applying Article 1486 of the C.C.R.F.” (Resolution of the Presidium of the IPC of April 19, 2018 in case No. SIP-412/2017).

The fact that the right holder has not submitted into the case files “the proofs of the fulfillment by the licensee of the obligation to pay remuneration to the licensor can not be a proof of the non-use of the disputed trademarks, because it is the fact of providing the services, and not the fact of the payment, which needs to be proved.” (Resolution of the Presidium of the Intellectual Property Court of February 12, 2018 in case No. SIP-379/2017).

The provision by the right holder of the proofs confirming the use of the word designation in the form of the lowercase letters and not the capital letters can not be a proof of the “non-homogeneity” of the used and registered designations and, as a result, can not be a proof of the non-use of the disputed trademark (Resolution of the Presidium of the IPC of February 9, 2018 in case No. SIP-362/2017).

In addition, for the purposes of applying the provisions of Article 1486 of the C.C.R.F., “the use of the trademark, including the use of the trademark with a change of its individual elements that do not change the essence of the trademark and do not limit the protection granted to the trademark shall be recognized” (Resolution of the Presidium of the Intellectual Property Court of May 21, 2018 in case No. SIP-335/2017).

Thus, to solve the issue on the use or non-use of the trademark, the proofs of the use submitted by the right holder must meet the following conditions:

– the use of the trademark in relation to those products and/or services of the ICGS for which it is registered by the ways stipulated by Paragraph 2 of Article 1484 of the C.C.R.F.;

– the introduction into the civil circulation and bringing to the consumer of the products marked with the trademark;

–  the use of the trademark in the form, in which it is registered (Resolution of the Presidium of the IPC of February 25, 2019 in case No. SIP-337/2018).

– the use of the trademark within the disputed three-year period.

Taking into account the fact that the Intellectual Property Court is a specialized judicial authority, whose decisions enter into force immediately, the persons participating in the case do not have a possibility of appeal, and, as a result, they have no possibility to review the case and to submit the proofs. In this regard, while considering the case in the Court of First Instance and while proving an actual use of the trademark, the right holder should be as careful as possible.

According to Paragraph 1 of Article 1486 of the Civil Code of the Russian Federation (hereinafter referred to as the C.C.R.F.), “The legal protection of a trademark may be early terminated in relation to all products or a part of the products, for the individualization of which the trademark is registered, due to the non-use of the trademark continuously within three years.”

The institution of the early termination of the legal protection of the trademark is a common means of defending the interests of the applicants in the situations, when the third party’s identical or confusingly similar trademark is found during the examination of the designation claimed for the registration as a trademark.

The reason for the early termination of the legal protection of the trademark through the legal proceedings is the failure to prove by the right holder of the use of the trademark in relation to all products or a part of the products for the individualization of which it is registered.

The use of the trademark within the framework of the system analysis of the provisions of Articles 1484 and 1486 of the C.C.R.F. is, in the legal terms, the obligation of the right holder and it serves as a tool for ensuring the real operation of the trademarks in the civil circulation (Resolution of the Presidium of the Supreme Arbitration Court of the Russian Federation of September 17, 2013 No. 5793/13).

            According to Paragraph 3 of Article 1486 of the C.C.R.F., the burden of proving the use of the trademark rests with the right holder. In this regard, the right holder should submit the proofs of a real use of the trademark. However, this is not always possible in practice.

In this regard, while proving the use of the trademark within the disputed three-year period, the right holder should take into account the following circumstances.

            As it was repeatedly noted in the decisions of the Presidium of the Intellectual Property Court, in the cases on the early termination of the legal protection of the trademark, the right holder must prove the use of the trademark in relation to each product or service in the form, in which the specified products or services are indicated in the certificate for a trademark (Resolutions of the Presidium of the IPC of February 17, 2017 in case No. SIP-207/2016, of September 14, 2017 in case No. SIP-165/2016).

At the same time, unlike establishing the circumstances of the plaintiff’s interest in then early termination of the legal protection of the trademark, when analyzing the list of the products in relation to which the rights holder’s use of the trademark is being proved, the homogeneity of the products shall not be taken into account (Paragraph 41 of the Judicial Practice Review in the cases Related to the Settlement of Disputes on the Intellectual Rights Defence approved by the Presidium of the Supreme Court of the Russian Federation of September 23, 2015).

According to the legal position of the Supreme Court of the Russian Federation (Decision No. 300-AS15-10765 of January 11, 2016 in case SIP-530/2014), while proving the use of the trademark, the homogeneity may be taken into account in relation to the well-known trademarks. To implement such approach, the right holder should both submit the proofs of the use of the trademark and also prove the fact that the trademark is well-known “not abstractly, but in relation to the products and services that are homogeneous to those ones, in relation to which the trademark is not actually used, so that the wide popularity of the trademark, when it is used in relation to the specific products, would be extended in the eyes of the consumers to other products in relation to which the trademark is not used.”

For the purposes of applying the provisions of Article 1486 of the C.C.R.F., the use of a trademark shall be recognized as its use in accordance with Paragraph 2 of Article 1484 of the C.C.R.F. At the same time, the list of the ways to use a trademark is open and, thus, it allows using the trademark, when the products together with other products are introduced into the civil circulation (Resolution of the Presidium of the IPC of February 12, 2018 in case No. SIP-372/2018).

For the purposes of recognizing the trademark used in terms of the meaning of Paragraph 2 of Article 1486 of the C.C.R.F., the law does not contain a requirement for placing the trademark directly on the product being introduced into the civil circulation. Taking into account the fact that placing the trademark directly on the services being provided is impossible, when proving the fact that the trademark (service mark) is used in relation to the services for which it is registered, the holder of the trademark (service mark) must submit the proofs of the individualization by the indicated designation of the services being actually provided.

If the trademark is used, for example, on a signboard at the place of providing services, such use should be qualified as the use of the trademark for the individualization of these services (Resolution of the Presidium of the Intellectual Property Court of February 12, 2018 in case No. SIP-379/2017).

When proving the use of the trademark, submitting the proofs of the fact of the conclusion of the license agreements, in accordance with which the third parties are granted the right to use the trademark, is not sufficient in the absence of the confirmation of the introduction of such products into the civil circulation:

“As it follows from the explanations contained in Paragraph 38 of the Review, for the purposes of applying the provisions of Article 1486 of the C.C.R.F., not any use of the trademark (service mark) by the right holder shall be taken into account, but only committing the actions stipulated by Paragraph 2 of Article 1484 of the C.C.R.F. directly related to the introduction of the product (service) into the civil circulation.

Thus, the mere fact of concluding the licensing agreements for the use of the trademark in relation to the products of the 28th class of the ICGS “large-scale vehicle models” without the confirmation of the direct introduction of such products into the civil circulation is not enough to confirm the use of the trademark for the purposes of applying Article 1486 of the C.C.R.F.” (Resolution of the Presidium of the IPC of April 19, 2018 in case No. SIP-412/2017).

The fact that the right holder has not submitted into the case files “the proofs of the fulfillment by the licensee of the obligation to pay remuneration to the licensor can not be a proof of the non-use of the disputed trademarks, because it is the fact of providing the services, and not the fact of the payment, which needs to be proved.” (Resolution of the Presidium of the Intellectual Property Court of February 12, 2018 in case No. SIP-379/2017).

The provision by the right holder of the proofs confirming the use of the word designation in the form of the lowercase letters and not the capital letters can not be a proof of the “non-homogeneity” of the used and registered designations and, as a result, can not be a proof of the non-use of the disputed trademark (Resolution of the Presidium of the IPC of February 9, 2018 in case No. SIP-362/2017).

In addition, for the purposes of applying the provisions of Article 1486 of the C.C.R.F., “the use of the trademark, including the use of the trademark with a change of its individual elements that do not change the essence of the trademark and do not limit the protection granted to the trademark shall be recognized” (Resolution of the Presidium of the Intellectual Property Court of May 21, 2018 in case No. SIP-335/2017).

Thus, to solve the issue on the use or non-use of the trademark, the proofs of the use submitted by the right holder must meet the following conditions:

– the use of the trademark in relation to those products and/or services of the ICGS for which it is registered by the ways stipulated by Paragraph 2 of Article 1484 of the C.C.R.F.;

– the introduction into the civil circulation and bringing to the consumer of the products marked with the trademark;

–  the use of the trademark in the form, in which it is registered (Resolution of the Presidium of the IPC of February 25, 2019 in case No. SIP-337/2018).

– the use of the trademark within the disputed three-year period.

Taking into account the fact that the Intellectual Property Court is a specialized judicial authority, whose decisions enter into force immediately, the persons participating in the case do not have a possibility of appeal, and, as a result, they have no possibility to review the case and to submit the proofs. In this regard, while considering the case in the Court of First Instance and while proving an actual use of the trademark, the right holder should be as careful as possible.

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