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Articles

The possibility of the joint ownership of trademarks

August 26,2019

The problematics of a possibility of the joint ownership of trademarks is not new and this issue is raised periodically by our customers and therefore it becomes necessary to explain this perspective.

In the legislation, there is “a collective mark” concept, so Article 1510 of the Civil Code of the Russian Federation discloses this concept:

1. An association of the persons, whose creation and activity do not contradict the legislation of the state, in which it is established, shall be entitled to register a collective mark in the Russian Federation.

The collective mark is a trademark intended for the designation of the products manufactured or sold by the persons being the members of this association and which have uniform characteristics of their quality or other common characteristics.

The collective mark may be used by each person being the member of this association.

2. The right to the collective mark shall be unalienable and it shall not be a subject matter of a license agreement.

3. The person being a member of the association that has registered the collective mark shall be entitled to use his own trademark along with the collective mark.

 

This concept is known, but it is not so popular due to a number of the peculiarities of the registration and the use of the mark, which can often be unacceptable.

We shall consider in this article the possibility of the joint ownership of one trademark, which is not a collective one, by several right holders, the more especially as it is quite acceptable the world practice.

Paragraph 2 of Article 1229 of the Civil Code of the Russian Federation also stipulates such possibility: “The exclusive right to the result of an intellectual activity or to a means of individualization (except the exclusive right to a company name) can belong to one person or to several persons jointly.”

The Civil Code of the Russian Federation does not contain any direct prohibitions as to the lack of the possibility of the joint ownership of a trademark, however, “the Administrative Regulations of the Federal Service for Industrial Property for the receipt of the applications for a trademark and a service mark, their registration and examination, issuing according to an established procedure the certificates of the Russian Federation for a trademark, a service mark, the trademark being well-known in the Russian Federation” does not stipulate a possibility of filing an application for a trademark by several persons simultaneously. However, there is a possibility of making further changes to the State Register of Trademarks and a Trademark Certificate, the mechanism of this change is reflected in Article 1505 of the Civil Code of the Russian Federation.

 Thus, it can be assumed that if an agreement on the joint ownership of the mark is achieved between several persons, then this agreement can be taken as a basis for making the above changes.

This problem can be illustrated by an example of the recent judicial proceedings in case A40-210165/2016, the resolution of the issue reached the Supreme Court of the Russian Federation and the chronology of these proceedings was watched with interest both by the lawyers dealing with intellectual property and by the employees of Rospatent, since that issue was raised exactly during the process of the registration, during the practical embodiment of the settlement agreement reached by the parties.

The company Les Publications Conde Nast S. A. and Open Joint Stock Company Synergy Capital turned to the Intellectual Property Court with a statement on invalidating the decision of the Federal Service for Intellectual Property in a notification form of 14.06.2016 No. 2015Д23153 on the refusal in the registration of disposing 50% of the exclusive rights to the trademarks under certificates of the Russian Federation No. 295229 and No. 433377; on compelling to resume the judicial proceedings regarding the statement of 16.12.2015 and to eliminate the committed violation.

According to the decision of the Intellectual Property Court of 26.09.2016 the case was transferred based on the jurisdiction to the Arbitration Court of the City of Moscow.

By the decision of the Arbitration Court of the City of Moscow of 17.04.2017, the satisfaction of the stated claims was refused.

By the resolution of the Ninth Arbitration Court of Appeal of 06.09.2017, the decision of the first-instance was upheld.

Having disagreed with the judicial acts adopted regarding the case, the company and Open Joint Stock Company turned to the Intellectual Property Court with a cassation petition in which, referring to the discrepancy of the opinions of the courts with the actual circumstances of the case and the incorrect application of the norms of the substantive law, asked to cancel the decision and the resolution, to adopt a judicial act regarding the case, which would bind Rospatent to make the registration actions.

In support of the cassation petition, the applicants referred to the fact that the first-instance court and the Court of Appeal had interpreted incorrectly the provision of Paragraph 2 of Article 1229 of the Civil Code of the Russian Federation, stipulating, in the opinion of the applicants, the possibility of the joint ownership of the exclusive right to the result of an intellectual activity, including also with respect to a trademark.

When proving their position within the framework of the court session, the applicants pointed out that the courts had not applied the norms of the international treaties, which member the Russian Federation was, stipulating the possibility of the joint ownership of the exclusive right to a trademark. They also noted that the joint ownership of the trademarks was stipulated by the terms of the settlement agreement approved by the resolution of the Presidium of the Intellectual Property Court of 02.10.2015 in case No. SIP-248/2014, according to which the parties had agreed on the joint ownership of the trademarks under certificates of the Russian Federation No. 295229 and No. 433377 and under international registrations No. 929433 and No. 430952. However, they noted that regarding the trademark under international registration No. 430952, International Bureau of the WIPO had established a joint ownership regime, and, in the absence of the objections of Rospatent, that trademark had already been granted the legal protection on the territory of the Russian Federation to the name of the applicants.

In accordance with Paragraph 1 of Article 1229 of the Civil Code of the Russian Federation, a citizen or a legal entity possessing the exclusive right to the result of an intellectual activity or a means of individualization (a right holder) shall be entitled to use such result or such means at his/its own discretion by any manner that does not contradict the law.

The right holder may dispose of the exclusive right to the result of an intellectual activity or to a means of individualization (Article 1233), unless otherwise is stipulated by the Code.

According to Paragraph 1 of Article 1233 of the Civil Code of the Russian Federation, the right holder may dispose of the exclusive right owned by him/it to the result of an intellectual activity or a means of individualization in any manner not contradicting the law and the essence of such exclusive right, including its alienation under an agreement to another person.

According to Paragraph 1 of Article 1484 of the Civil Code of the Russian Federation, the right holder of a trademark may dispose of the exclusive right to the trademark.

And finally, turning again to Paragraph 2 of Article 1229 of the Civil Code of the Russian Federation: “The exclusive right to the result of an intellectual activity or to a means of individualization (except the exclusive right to a company name) can belong to one person or to several persons jointly.”

Analyzing the above norms, it can be asserted that, contrary to the opinions of the first-instance court and the Court of Appeal on that the current legislation of the Russian Federation lacks the norms prohibiting the joint possession of the exclusive right to a trademark, just to the contrary, such possibility is directly stipulated in Paragraph 2 of Article 1229 of the Civil Code of the Russian Federation given above.

The courts did not take into account that the literal interpretation of Article 1229 of the Civil Code of the Russian Federation afforded concluding that the only means of individualization, the exclusive right to which could not be held by several persons jointly, was a company name.

In addition, Russia is a member of the international treaties that directly stipulate the possibility of the joint ownership of the exclusive right to a trademark (the Paris Convention for the protection of industrial property and the Singapore Treaty on the Law of Trademarks).

Based on the above norms, the Intellectual Property Court declared illegal the decision of Rospatent, which had refused to register the alienation of 50% of the exclusive rights to the trademarks.

At that point, many lawyers with a sinking heart expected that the judicial act would create a precedent, which would further entail the need for the significant amendments in the current legislation.

However, the Supreme Court did not support the IPC position. The Court stressed that the alienation of the exclusive right to a trademark to more than one person was contrary to the essence of the exclusive right to a trademark.

Thus, summarizing the above, it can be stated that the position of the Highest Court put an end to the long and versatile judicial proceedings confirming that the possibility of the joint ownership of a trademark could exist only within the framework of a collective mark and that the trademark being held by several right holders would contradict the very essence of the exclusive right to a trademark, its function of individualizing the products, the works or the services of a particular right holder.

Автор материала

Natalya Nazarova
Agreement’s Lawyer