Exclusive right to a trademark and “double registration”

As follows from the provisions of Article 1481 of the Civil Code of the Russian Federation, “A trademark certificate certifies the owner’s exclusive right to the trademark in relation to the goods and services specified in the certificate”. That is, it is obvious that the exclusive right is certified by only one document.

Consequently, the above legislative norms do not provide for the possibility of recognizing multiple exclusive rights for the same scope of legal protection of a mark, since this would contradict the absolute nature of the exclusive right and would entail the impossibility of isolating a trademark as an object of civil rights and the exclusive right to it, i.e. would lead to so-called “double registration”.

Thus, state registration as a trademark of a designation identical to a registered trademark in the name of the same copyright holder in relation to a matching list of goods and services is contrary to the nature of the exclusive right; therefore, such registration will be contrary to public interests and, accordingly, violate the provisions of paragraph 3 of Art. 1483 of Civil Code of the Russian Federation.

It should be noted that in order to avoid refusal due to “double registration”, trademarks must have differences, which may include the following:

• the declared designation must have a difference, which can be expressed in color combination, compositional arrangement of elements, font design, or the addition of new elements. It is important to note that the addition of the element “®” (trademark protection sign) cannot be regarded as a difference that allows one to avoid receiving a refusal on this basis.
• the list of goods and services must be different, i.e. Items of goods/services that are available in early registration should be excluded.

Thus, when filing an application for registration of a new mark, it is necessary to conduct a detailed analysis of a previously registered mark, focusing on key points. This will avoid receiving notifications from the examination and delaying the paperwork.

It is important to remember that from the point of view of legislation in the field of intellectual property, it is unacceptable when the same scope of legal protection is certified by two certificates, since this contradicts the nature of the exclusive right.

For clarity, let us turn to the practice of such cases.

According to the Guidelines for the implementation of administrative procedures and actions within 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 by order of the Federal State Budgetary Institution FIPS dated January 20, 2020 N 12 (as amended on March 25, 2022), according to the section 4.2.1. Designations contrary to the public interest: Designations that are contrary to public interests include designations that are identical (with minor differences) to a trademark registered in the name of the same person.

These provisions are confirmed by court decisions. Thus, the IP's court request to invalidate the decision of Rospatent to refuse state registration of a trademark under application No. 2014712526 was denied. Rospatent made a decision to refuse state registration of the designation “SOUTH GARDEN”, applied for registration as a trademark under application No. 2014712526 in the name of the applicant due to the fact that the applicant at the time of filing the application was already the copyright holder of the trademark “SOUTH GARDEN” under certificate No. 517703 (Resolution of the Presidium of the SIP dated May 2, 2017 in case No. SIP-711/2016).

At the same time, in the considered resolution of the Presidium of the IP Court, a reference was made to the provisions of the review of judicial practice, according to which “a series of trademarks are trademarks of one right holder, dependent on each other, interconnected by the presence of the same dominant verbal or figurative element, having phonetic and semantic similarity, as well as insignificant graphic differences that do not change the essence of the trademarks.” At the same time, in the resolution of the Presidium, in disclosing the above provisions, it is also established that “trademarks in which the existing differences are so insignificant that the consumer may not notice them cannot be qualified as a series of trademarks.”

At the same time, with regard to the above designation under application No. 2014712526, which was the subject of consideration, it was established “that the senior trademark and the designation on the junior application are identical, and the fact that the designation on the junior application is made in a bolder font than the senior trademark is not influences the perception of the compared trademarks as identical.”

It is also noted that “based on the provisions of the law, there cannot be two or three exclusive rights, identical in content, to the same means of individualization, since in this case the right ceases to be exclusive.” In the considered resolution of the Presidium of the Council of IPs, it is established that in the provisions of the legislation the list of cases when state registration of a trademark may be contrary to public interests is not exhaustive, and in a similar situation, when a designation has been applied for in the name of the same applicant, which has minor differences from the registered trademark, registration of such a designation is contrary to public interests (clause 3 of Article 1483 of the Civil Code of the Russian Federation).

As noted above, in order to avoid refusal due to “double registration”, a trademark may have a difference, including in color combination, i.e. the list of goods and services for two marks of the same copyright holder will be similar, but the marks must be made in different colors.

As a rule, this practice is used by large companies that have a large package of trademarks in their portfolio. Thus, a series of trademarks are registered in various color combinations - mainly a designation in a corporate style and in black and white.

Examples include the following trademarks:

• trademarks "Russian Railways" No. 341333 and No. 341334 (copyright holder OJSC "Russian Railways", 107174, Moscow, Novaya Basmannaya str., 2/1, building 1 (RU);
• trademarks “MTS” No. 327460 and No. 311393 (copyright holder PJSC Mobile TeleSystems, 109147, Moscow, Marxistskaya St. , 4 (RU);
• trademarks “Megafon” No. 544687 and No. 544688 (copyright holder OJSC MegaFon, 115035, Moscow, Kadashevskaya embankment, 30 (RU).

As you can see, these marks are made in color and black and white, as well as in different colors - they are registered in the name of one copyright holder in relation to a matching list of goods and services. Thus, in the cases under consideration, the examination quite rightly registered the indicated trademarks for a matching list of goods and services, since it considered them to be a continuation of a series of marks.

Thus, when preparing to register a trademark, it is necessary to take into account all the above criteria in distinguishing the designations in order to avoid receiving a notification due to “double registration”. It is important to remember that each trademark is unique and it can only be one; another is not provided for by the current legislation. It is the individuality of a trademark that determines its exclusive right.

Sources:

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, entered into force on June 29, 2023)
2. Rules for the preparation, submission and consideration of documents that are the basis for performing legally significant actions for the state registration of trademarks, service marks, collective marks, approved. By Order of the Ministry of Economic Development of Russia dated July 20, 2015 N 482 (as amended on March 1, 2023)
3. Guidelines for the implementation of administrative procedures and actions within 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 by Order of the Federal State Budgetary Institution FIPS dated January 20, 2020 N 12 ( ed. dated March 25, 2022)