The creation of any business begins with the development of the concept of the company, its name, trademark. It is on the name that the main emphasis is placed, because it is not in vain that they say: “whatever you call a ship, so it will sail” (the phrase belongs to Captain Vrungel, the hero of the popular Soviet animated series “The Adventures of Captain Vrungel”). The success of the enterprise and the business as a whole depends on what emotional coloring the name will bear, what associations it will evoke, and, consequently, consumer confidence in it is formed.
Let us analyze in more detail such means of individualization as a trade name, commercial designation and trademark and service mark and clash of rights to them.
Trademark and service mark
According to Art. 1477 of the Civil Code of the Russian Federation “ A trademark (service mark) is a designation that serves to individualize goods, work performed or services provided. »
Registration of a trademark is carried out in the federal executive body for intellectual property (Rospatent). A trademark is recognized as an exclusive right certified by a certificate.
The person in whose name the trademark is registered (right holder) has the exclusive right to use the trademark in accordance with Article 1229 of the Civil Code of the Russian Federation in any way that does not contradict the law (exclusive right to the trademark).
The term of the trademark is 10 years, renewable an unlimited number of times, each time for 10 years.
According to paragraph 2 of Art. 1473 of the Civil Code of the Russian Federation “ The company name of a legal entity must contain an indication of its organizational and legal form and the actual name of the legal entity, which cannot consist only of words denoting the type of activity."
Thus, the company name consists of two parts: an indication of the organizational and legal form + the name of the legal entity, it is subject to mandatory registration in the Unified State Register of Legal Entities (EGRLE).
A legal entity whose company name is registered in the established manner has the exclusive right to use such name in any not prohibited way, and also has the right to demand the termination of the illegal (without its consent) use of such name by other legal entities and compensation for losses caused by such use.
The company name is protected indefinitely (as long as the legal entity operates and is registered in the Unified State Register of Legal Entities).
According to Art. 1538 of the Civil Code of the Russian Federation “Legal entities engaged in entrepreneurial activities (including non-profit organizations that are granted the right to carry out such activities in accordance with the law by their constituent documents), as well as individual entrepreneurs, can use for the individualization of their trade, industrial and other enterprises ( article 132 of the Civil Code of the Russian Federation) are commercial designations that are not company names and are not subject to mandatory inclusion in the constituent documents and the unified state register of legal entities. A commercial designation can be used by the right holder to individualize one or more enterprises. For the individualization of one enterprise, two or more commercial designations cannot be used at the same time.
Thus, legal entities and individual entrepreneurs can be owners of a commercial designation.
A feature of a commercial designation is that it is not included in the constituent documents and the unified state register of legal entities; its special registration is not required. It should be noted that the exclusive right to a commercial designation arises from the moment of its actual use. A commercial designation is protected indefinitely, but it is important to note that the exclusive right to a commercial designation is terminated if the right holder does not use it continuously for one year. Thus, the basis for the termination of the exclusive right to a commercial designation is the fact of its non-use.
Often, a commercial designation is confused with a brand name, however, these are different means of individualization that have their own characteristics.
Article 1541 of the Civil Code of the Russian Federation determines the correlation of the right to a commercial designation with the rights to a trade name and trademark:
“1. The exclusive right to a commercial designation, including the trade name of the right holder or its individual elements, arises and operates independently of the exclusive right to the trade name.
2. A commercial designation or individual elements of this name may be used by the right holder in a trademark belonging to him. A commercial designation included in a trademark is protected independently of the protection of the trademark.
Disputes very often arise when a company considers that a third-party trademark containing a distinctive part of its company name violates its rights, and can file an objection to the registration of this mark with the Chamber for Patent Disputes of Rospatent on the basis of its inconsistency with the provisions of paragraph 3 of this Article. 8 art. 1483 of the Civil Code of the Russian Federation. Here it is important to keep in mind the importance of a commercial designation, which can serve as a weighty argument even if the right to a trade name arose before the priority date of the challenged mark.
In accordance with paragraph 8 of Article 1483 of the Civil Code of the Russian Federation, “Designs that are identical or confusingly similar to a trade name or commercial designation protected in the Russian Federation (separate elements of such a name or designation) cannot be registered as trademarks in relation to homogeneous goods, or with the name of the selection achievement registered in the State Register of Protected Selection Achievements, the rights to which in the Russian Federation Federations arose with other persons before the priority date of the registered trademark.
In accordance with paragraph 6 of Article 1252 of the Civil Code of the Russian Federation “If various means of individualization (company name, trademark, service mark, commercial designation) turn out to be identical or similar to the degree of confusion, and as a result of such identity or similarity, consumers and (or ) contractors, the priority is given to the means of individualization, the exclusive right to which arose earlier, or in cases of establishing a convention or exhibition priority, the means of individualization, which has an earlier priority .
According to Art. 1225 of the Civil Code of the Russian Federation, a commercial designation is the result of intellectual activity and equivalent means of individualization of legal entities, goods, works, services and enterprises that are granted legal protection.
When considering the issue concerning the clash between a trade name and a trademark, it is important to note that the owner of the disputed mark has older rights to such a means of individualization as a commercial designation.
So, as noted above, in accordance with clause 6 of Article 1252 of the Civil Code of the Russian Federation, in the event of a collision of confusingly similar means of individualization, the advantage is given to the means of individualization, the exclusive right to which arose earlier.
In this regard, it is important to note that if a company conducts business under its commercial name continuously and uses it for a long period of time (long before the registration of the trade name of the person trying to challenge the trademark), then it has a priority right over its trade name.
Since a commercial designation, unlike a trade name and a trademark, is not subject to registration, the fact of the existence of an exclusive right to it can be established on the basis of documents confirming its actual use.
It should be noted that determining the degree of popularity of a commercial designation in a certain territory is an important factor in determining the moment of the emergence of the right to it, and it is very important to competently approach the collection of such documents.
In accordance with the position of the IP Court, reflected in the decision of the Court for Intellectual Property Rights dated May 23, 2017 in case No. SIP-81/2017, the circumstances of the long-term and (or) intensive use of the designation in a certain territory, the costs incurred for advertising , significant volumes of sales of goods and provision of services under this designation, the results of a survey of consumers of goods on the issue of the popularity of the designation in a certain territory.
Thus, in order to prove the fact of the use of a commercial name, it is necessary to provide documents on its continuous use - it is important that they be dated earlier than the date of registration of the trade name of the company acting as an opponent in the dispute.
Thus, it is necessary to provide evidence that confirms that the company continuously uses its commercial designation in relation to the goods and services listed in the registration, the products have long been present on the Russian market and during this time have gained a certain reputation and fame among consumers. A commercial designation can be used by the right holder to identify his enterprise, including by indicating on goods or their packaging, waybills, contracts, signs, in announcements and advertisements, in invoices, materials on participation in exhibitions and in other documents.
The priority of a commercial designation is a weighty argument, and it is necessary to prove that the right to a commercial designation arose earlier than the right to a trade name and became known in a certain territory earlier than the date of registration of the opponent's trade name.
Thus, a well-assembled package of documents will make it possible to prove that the commercial designation arose much earlier than the date of registration of the company name of the company acting as an opponent in contesting the trademark, and will allow the trademark to remain valid.
1.Civil Code of the Russian Federation (Part Four) dated December 18, 2006 N 230-FZ (as amended on June 13, 2023) (as amended and supplemented, effective from June 29, 2023)
2.Rules for the preparation, submission and consideration of documents that are the basis for the performance of legally significant actions for the state registration of trademarks, service marks, collective marks, approved. By order of the Ministry of Economic Development of Russia of July 20, 2015 N 482 (as amended on November 23, 2020)
3.Guidelines for the implementation of administrative procedures and actions in the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates, approved. Order of FGBU FIPS dated January 20, 2020 N 12 (as amended on March 25, 2022)
4.Information message “On checking the compliance of signs applied for registration as trademarks with the requirements of paragraph 8 (in terms of trade names and commercial designations) of Article 1483 of the Civil Code of the Russian Federation”
5.Judgment of the Intellectual Property Rights Court dated May 23, 2017 in case No. SIP-81/2017