Does referencing a trademark online constitute infringement?

It is a fact of life that using the result of intellectual activity or means of identification without the consent of the right holder is not allowed. Unauthorized use may be considered an infringement of the exclusive right and entail liability established by law.

A noteworthy detail is that means of identification include trademarks and service marks. A trademark is a designation that serves to identify the goods of legal entities or individual entrepreneurs, and a service mark identifies the work or services provided by them. Hereby, for simplicity of understanding, the term trademark is used.

On various web resources, entertainment, and educational sites, we may often find a mention of various well-known and not very famous trademarks. In this regard, it is questionable whether referencing a trademark on a website constitutes a trademark infringement. Is it necessary for a person who wishes to place a trademark in their publication at Instagram or reference a trademark of another person in their video to ask the right holder’s permission for such use?

In order to understand these issues, I propose to first find out what, from a legal perspective, is recognized as an infringement of the exclusive right to a trademark, and first of all, it is necessary to understand what is covered by the concept of the exclusive right to a trademark.

According to paragraph 1 of Article 1484 of the Civil Code of the Russian Federation (hereinafter - the Civil Code, the Code): “The person in whose name the trademark is registered (the right holder) shall have the exclusive right to use the trademark in accordance with Article 1229 of the Civil Code of the Russian Federation in any manner not contrary to law, i.e., have the exclusive right to the trademark. The right holder may dispose of the exclusive right to trademark”.

In pursuance of paragraph 2 of Article 1484 of the Civil Code: “The exclusive right to a trademark may be exercised for identification of goods, works or services in respect of which the trademark is registered, in particular, by the placement of the trademark:

1) On goods, including labels, packages of goods produced, offered for sale, sold, demonstrated at exhibitions and fairs, or otherwise commercialized in the Russian Federation, or stored or transported for this purpose, or imported into the Russian Federation.

2) In the course of performing work and rendering services.

3) On documentation related to commercialization of goods.

4) Offers for sale of goods, the performance of work, rendering of services as well as announcements, signs, and advertisements.

5) On the Internet, including the domain name and other methods of addressing.”

As we can see, in subparagraph 5 of paragraph 2 of Article 1484 of the Civil Code, the law-maker attributed the placement of the trademark on the Internet to one of the powers within the exclusive right to the trademark.

At the same time, if we proceed from the general rule set forth in the Code concerning the procedure of disposition of the exclusive right, then by virtue of subparagraph 2 of paragraph 1, Article 1229 of the Civil Code, the right holder may, at its discretion, permit or prohibit other persons from using the result of intellectual activity or means of identification. The absence of prohibition shall not be considered as consent (permit).

It turns out that in any case, when someone wants to use someone else’s trademark somewhere, he or she needs to ask the permission of the right holder. Otherwise, there is a risk of being prosecuted.

Actually, everything is a little different than it seems at first sight, and here’s why.

Under paragraph 3 of Article 1484 of the Code: “No one has the right to use, without the permission of the right holder, similar designations with respect to goods for identification of which the trademark is registered, or similar goods, if there is a likelihood of confusion as a result of such use”.

According to a fairly extensive court practice concerning the consideration of disputes related to the defense of trademark rights, the subject matter of proof in this category of disputes include the following:

·       Claimant owning this right.

·       Violation by the defendant by using the trademark or a designation similar to it to the extent of confusion with respect to goods (services) for the identification of which the trademark is registered, or similar goods (services), if there is a likelihood of confusion as a result of such use.

Thus, the key in this matter is not the mention of a trademark itself, but its use by one of the methods covered by the exclusive right to a trademark for the identification of goods or services, homogeneous goods or services with respect to which the trademark is registered.

In this regard, the use of words, including common names registered as word trademarks is not the use of the trademark if it is carried out in a common sense, not for the purposes of identification of a particular product, work, or service (including the methods listed in paragraph 2 of Article 1484 of the Civil Code), such as in written publications or speaking.

A similar legal approach was reflected in paragraph 157 of the resolution of the plenum of the Supreme Court of the Russian Federation dated April 23, 2019, No. 10 on the application of Part Four of the Civil Code of the Russian Federation. (Hereinafter Resolution No. 10).

Based on the analysis of these rules of law, it should be concluded that the use of the designation included in the scope of the legal protection of the trademark may be recognized as use for information purposes and does not constitute an infringement of rights to the trademark, provided that the following conditions are met:

1. Such designation is not used for the purposes of identification of a particular product or service (including the methods listed in paragraph 2 of Article 1484 of the Civil Code).
2. Such designation is used in a dictionary meaning.
3. Such designation is used in written publications or speaking.
4. Such designation does not create the likelihood of mixing, and as a result, does not mislead consumers about the business entities, their goods, and services, as well as the economic relationship between these entities.

It should be noted that a similar legal approach is set out in the decisions of the Court for Intellectual Property Rights dated July 16, 2018, case No. A33-25467/2016 and January 29, 2020, case No. A40-31460/2019.

Thus, the answer to the question raised in the title of this article will be as follows. A simple reference to a verbal symbol that is part of someone else’s trademark and subject of the defense of a right, including reference on the website, does not constitute trademark infringement. The point is that the verbal symbol has a verbal mark, used in its direct dictionary meaning and regardless of the goods and services for which the trademark is registered. Therefore, there is no need to ask permission of a right-holder to use the trademark to refer to it in the publication on a social network.

P.S. Of course, such use will definitely constitute trademark infringement in a situation where Chinese fake products imitating brand names are falsely represented for advertising purposes.

Originally published in Trademark Lawyer Magazine