BASs - what it is from the point of view of the registration of a trademark

In Russia, there is not a single normative act that describes in detail a legal regime for the use and creation of BASs. As the legal framework regulating the public relations in this field, the following can be given: the Civil Code of the Russian Federation, the Federal Law “On the Quality and Safety of Food Products,” the Federal Law “On Advertising,” various acts of Rospotrebnadzor and others.

The definition of the term “biologically active supplements” is contained in Article 1 of the Federal Law “On the Quality and Safety of Food Products”: “...natural (identical to the natural ones) biologically active substances intended for the use simultaneously with food or for the introduction into the composition of food products.”[1]

The legal source and the content of the concept allow concluding that the BASs do not refer to the category of medicinal products, but many consumers believe otherwise. The reason for this is the unfair activities of the manufacturers and distributors of the supplements. Some companies are trying to do everything to make the customers believing that the BAS is the product that has the medicinal qualities and it is capable of curing various diseases. The absence of a strictly regulated procedure for the manufacture, distribution and sale of the BASs worsens the situation by giving the violators confidence in impunity and unprovability of the fact that the behaviour is unlawful.

In this regard, when registering a trademark, the great importance is paid directly to the absence of the risk of confusing the consumer regarding the nature of the BAS, which is essentially a supplement to food, but not a drug. The importance of this is confirmed by the fact that Article 25 of the Federal Law “On Advertising” contains the restrictions imposed on advertising such products: “Advertising biologically active supplements and food supplements should not make an impression that they are drugs and (or) have some medicinal properties.”[2]

The above circumstances indicate to the need for an additional control, when registering and using the trademarks in relation to the BAS. Despite the increased risk of confusing the BASs and the medicinal products, they belong to the same category of the products according to the ICGS classification: “The 05^th class. Pharmaceutical Drugs.” This can cause a number of difficulties, when using designations as it increases the risk of confusing the products in the consumer's mind.

In addition, there can be difficulties in the case of the registration of the identical names of the BASs. In accordance with the legislation of the Russian Federation, the registration of certain kinds of the products, including the BASs, shall be within the competence of Rospotrebnadzor.[3] The BASs that are first introduced into the manufacture or first imported into the territory of Russia must be registered under the name used in the Register of the products that have passed the state registration. Subsequently, such name can become the trademark, what will allow both strengthening the designation used, in the case, when the BAS's manufacturer becomes its owner, and weakening and causing damage to the true manufacturer, if the exclusive rights to the means of individualization are obtained by another person, who does not manufacture this supplement, and who has not registered it in the Register. While checking the designation as to protectability, the specialists Rospatent, using a public system for the search of the registered BASs, check the existence of the identical names contained in the Register.[4] This makes it possible to minimize the cases of the malicious registration of the identical designations; however, as the judicial practice justifies, such designations still sometimes get the legal protection and they are valid till the date, when they are recognized as invalid.

As it is known, the registration of the identical designations is possible, when they have been claimed for the use in the different classes of the ICGS, however, they are not used in relation to the homogeneous products. Unfortunately, the unfair competitors file the applications for the registration of the identical trademarks in relation to other classes of the ICGS, and in the case of obtaining the legal protection, they begin to use actively the designation for distributing the counterfeit BASs or other products with such designation counting on the lack of the legal knowledge at the legal right holder of the trademark. For example, in addition to the 05^th class of the ICGS, which contains the biologically active supplements, the list of the 30^th class of the ICGS contains an indication to the “auxiliary supplements intended for the improvement of the taste of the food products,” and this class also includes such product such as tea. So, the person can register the trademark that repeats completely the name of the BAS, and he can start distributing the teas with such name, and the consumers will believe mistakenly that it is similar in its properties and composition to the well-known BAS.

Summing up the theme under consideration, the following conclusion can be drawn: the trademark registered in relation to the BAS, like any other trademark, can consist of various elements (word, visual, etc.) and it must comply with the conditions of protectability. At the same time, the distinguishing features of the means of individualization used in relation to the BASs should be: the lowest possible risk of confusing the consumers about the nature of the origin of the BAS, its properties and the nature of the effects on the human body, as well as the fact it is not identical to the designations used in relation to the medicinal products and the BASs’ names registered in the official Register of Rospotrebnadzor.