Features of procedural succession in cases of early termination of legal protection of a trademark due to non-use

By virtue of Clause 1 of Article 1486 of the Civil Code of the Russian Federation, the legal protection of a trademark may be terminated prematurely in respect of all goods or part of the goods for the individualization of which the trademark is registered, due to the non-use of the trademark continuously for three years.

An interested person who believes that the right holder does not use the trademark in relation to all the goods or part of the goods for the individualization of which the trademark is registered, sends a proposal to such right holder to apply to the Federal Executive Body in the Field of Intellectual Property with an application for waiver of the right to the trademark or to conclude an agreement with the interested person on the alienation of the exclusive right to the trademark in respect of all goods or parts of goods for the individualization of which the trademark is registered.

It follows from this article that the identity of the right holder as a person whose obligation is to use the trademark for the individualization of the relevant goods/services is a key figure in cases of early termination of the legal protection of trademarks due to non-use.

In this regard, in the event of the withdrawal of the right holder from the disputed legal relations, legal uncertainty is created, which requires filling the gap.

In order to overcome such legal uncertainty, the Arbitration Procedure Code of the Russian Federation (hereinafter referred to as the Arbitration Procedure Code of the Russian Federation) contains Article 48, according to Parts 1 and 3 of which, in cases of withdrawal of one of the parties in a disputed legal relationship or a legal relationship established by a judicial act of an arbitration court (reorganization of a legal entity, assignment of a claim, transfer of debt, death of a citizen and other cases of change of persons in obligations), the arbitration court shall replace this party with its successor and indicates this in the judicial act. Succession is possible at any stage of the arbitration process.

For the successor, all actions performed in the arbitration process before the successor entered into the case are binding to the extent that they were binding on the person whom the successor replaced.

However, the circumstances of a particular case may cast doubt on the possibility of applying this rule of law, as happened in case No SIP-596/2024.

Case No SIP-596/2024

Within the framework of this case, the interested party sent a proposal of an interested person to the right holder, who was already dead at that time, and then, having received no response on obvious grounds, filed a claim against the said right holder for early termination of the legal protection of the trademark due to non-use. The heir of the right holder, being involved in the case as a third party who did not make independent claims regarding the subject of the dispute, registered in his name the alienation of the exclusive right to the trademark without a contract and declared the termination of proceedings in the case due to the initiation of a dispute against the deceased person, referring to the explanations set forth in the Resolution of the Plenum of the Supreme Court of the Russian Federation dated 29.05.2012 No 9 "On Judicial Practice in Inheritance Cases".

In making a ruling dated 04.02.2025 on procedural succession, the Intellectual Property Court referred to the above Article 48 of the Arbitration Procedure Code of the Russian Federation, as well as to the clarifications of the Plenum of the Supreme Court of the Russian Federation set out in paragraph 168 of the Resolution dated 23.04.2019 No 10 "On the Application of Part Four of the Civil Code of the Russian Federation" (hereinafter referred to as Resolution No 10), according to which in case of change of the right holder of a trademark in the course of consideration of a case on a claim for early termination of legal protection of a trademark due to its non-use, the former right holder shall be replaced by a new one in accordance with the provisions of Article 48 of the Arbitration Procedure Code of the Russian Federation on procedural succession. At the same time, such replacement is possible upon submission of documents confirming the transfer of the exclusive right to the trademark, including in the absence of the plaintiff's application for procedural succession, indicating that the current right holder of the disputed trademark is subject to involvement in the case as a defendant in accordance with the rules of Article 48 of the Arbitration Procedure Code of the Russian Federation.

Reversing the above-mentioned ruling on the heir's cassation appeal, the Presidium of the Intellectual Property Court pointed out that, when adopting the judicial act appealed against, the court of first instance did not take into account the explanations set forth in paragraph 6 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated 29.05.2012 No 9 "On Judicial Practice in Inheritance Cases", which states that the court refuses to accept the statement of claim brought against the deceased citizen with reference to paragraph 1 of part 1 of Article 134 of the Civil Procedure Code of the Russian Federation (hereinafter referred to as the Civil Procedure Code of the Russian Federation), since only a person with civil and civil procedural legal capacity can be held liable for violation of the rights and legitimate interests of a citizen.

By virtue of paragraph 1 of part 1 of Article 134 of the Civil Procedure Code of the Russian Federation, the judge refuses to accept the statement of claim if: the application is subject to consideration in the procedure of constitutional or criminal proceedings, proceedings in cases of administrative offenses or is not subject to consideration in the courts; the application is filed in defense of the rights, freedoms or legitimate interests of another person by a state body, local government body, by an organization or a citizen who is not granted such a right by this Code or other federal laws; An application filed on one's own behalf challenges acts that do not affect the rights, freedoms or legitimate interests of the applicant... .

In accordance with paragraph 2 of Article 17 of the Civil Code of the Russian Federation, the legal capacity of a citizen (the ability to have civil rights and bear obligations) arises at the moment of his birth and terminates at death.

In the event that a civil case on such a statement of claim has been initiated, the proceedings in the case are subject to termination by virtue of paragraph seven of Article 220 of the Civil Procedure Code of the Russian Federation, indicating the right of the plaintiff to file a claim against the heirs who accepted the inheritance, and before accepting the inheritance – against the executor of the will or the inherited property.

According to paragraph 7 of Article 220 of the Civil Procedure Code of the Russian Federation, the court terminates the proceedings in the case if: after the death of a citizen who was one of the parties to the case, the disputed legal relationship does not allow succession or the liquidation of the organization that was one of the parties to the case is completed.

Despite the content of references to the Civil Procedure Code of the Russian Federation in the above clarifications of the highest court, the Presidium of the Intellectual Property Court considered it possible to apply them when considering a case by commercial courts according to the rules of the Arbitration Procedure Code of the Russian Federation.

Based on the literal interpretation of Article 48 of the Arbitration Procedure Code of the Russian Federation, procedural succession is possible when the withdrawal of one of the parties to the legal relationship occurred after the filing of a statement of claim with the court or after the court made a decision on the case.

A similar conclusion follows from paragraph 168 of Resolution No 10, which directs the courts to the possibility of succession only "in the event of a change in the right holder of the trademark in the course of consideration of the case", i.e. if on the date of filing the claim is filed against an existing person.

Since the legal capacity of the trademark owner was lost not only at the time of filing a claim against him, but also at the time of sending the proposal of the interested person to him, the Presidium of the Intellectual Property Court concluded that it was impossible to proceed procedurally in such a situation and to consider a statement of claim against a person who could not be a party to the case due to his death and the termination of his legal capacity in this regard.

Nevertheless, the plaintiff also did not agree with the above conclusions of the Presidium of the Intellectual Property Court, appealing to the Supreme Court of the Russian Federation with a cassation appeal.

Despite the low percentage of cassation appeals for consideration in the court session of the Judicial Chamber for Economic Disputes of the Supreme Court of the Russian Federation, the latter nevertheless requested the materials of the case and scheduled a court hearing to consider this cassation appeal.

Since, at the time of writing this article, there are no conclusions of the Supreme Court of the Russian Federation, which it came to when considering the circumstances of the case described above, the final result of the consideration of the disputed issue remains unclear.

However, in the opinion of the author of the article, the conclusions of the Presidium of the Intellectual Property Court seem to be quite logical, since otherwise there may presumably be circumstances of abuse of the right granted by procedural legislation to file a claim with the court against a person who is no longer able to protect his rights.