Forms of consent for trademark use according to court evaluation

A license agreement is a basic and indisputable form of the right holder’s consent to use a trademark, while other types of such consent can still be guided mainly by law enforcement practice.

Approaches to assessing the form of consent in these cases largely depend on the circumstances in which such consent of the right holder was required.

For example, in a 2022 case N A41-13514/2020, the issue of the consent of the trademark owner was raised in order to agree on the placement of a sign on a pharmacy. In a case that reached the Supreme Court of the Russian Federation, the company applied to the administration for the provision of the service “Coordination of the installation of an information placement medium”, attaching to the application the consent of the trademark owner for its use by the company.

The administration refused approval due to the fact that the administration considered the consent of the copyright holder to use the trademark in the absence of registration of the right to use it as inadequate evidence.

The recognition of the refusal as illegal was denied by all courts, since the consent of the trademark owner submitted by the company was not a proper confirmation of the right to use it - after all, the applicant did not provide evidence of registration of such a right.

In the cassation appeal filed with the Supreme Court of the Russian Federation, the company indicated that the written consent of the copyright holder received by it to use the trademark does not contradict the Civil Code of the Russian Federation . The applicant believed that the current legislation does not bind the expression of the consent of the copyright holder to use a trademark with a certain form, and the use of the result of intellectual activity is covered by the exclusive right of the copyright holder and does not require the mandatory conclusion of an agreement.

The Supreme Court of the Russian Federation noted that the list of ways to dispose of the exclusive right to a trademark is not exhaustive and is at the discretion of the right holder. Thus, by providing the applicant with his written consent to use the trademark, the right holder has lawfully disposed of his exclusive right.

In another case - on the recovery of compensation - the infringer referred to the exhaustion of the exclusive right to a trademark and emphasized that there were no requirements for the form of the consent of the trademark owner to introduce goods into civil circulation, and therefore believed that such consent could be expressed in any writing. He considered business correspondence to be such a form.

The court pointed out that the absence of a prohibition of the right holder is not considered consent (permission). Art. 1487 of the Civil Code of the Russian Federation does not really contain an indication of the form in which the consent of the right holder to use the trademark on the goods put into circulation on the territory of the Russian Federation or the country party to the Treaty on the Eurasian Economic Union should be formalized, but this does not mean that the right to use the trademark sign without concluding an agreement can be drawn up in any form.

The IP Court emphasized that consent must be expressed in a form that allows one to reliably identify the addressee of the consent, is capable of being perceived by the addressee, and will allow him, in the event of a dispute, to prove the issuance of such consent. With regard to the import of the original product and its further sale, the court noted that the will of the right holder to use the trademark by a specific person may follow, in particular, from documents confirming the right holder’s application to the customs authority to enter the trademark in the customs register with the definition of authorized importers. There were no such documents.

In another case on the recovery of compensation4, it turned out that the absence of objections from the right holder was enough for the court - dismissing the claim, the court indicated that, according to the answer of the authorized representative of the company, the trademark right holder did not object to the resumption of the release of the disputed goods - that is, in fact, agreed to enter the disputed batch of goods into civil circulation, which excludes violation of the exclusive right to a trademark.

In case N А56-70471/2020 the company was not held liable under Art. 14.10 of the Code of Administrative Offenses of the Russian Federation, since the right holder informed the customs authority of his consent to use the trademark by a corresponding letter on the day when the company filed the corresponding declaration for the goods marked with the trademark. Additionally, the specified consent was confirmed by the right holder during the consideration of the case of an administrative offense.

Trademark termination cases traditionally abound in various forms of trademark consent.

For example, in case No. SIP-380/2015, the plaintiff emphasized that the only form of consent of the right holder to the use of a trademark by a third party is the conclusion of a license agreement between them. However, having considered the letter of consent and not establishing the vices of the will of the copyright holder, the court concluded that the trademark is still used with the consent of the copyright holder.

At the same time, in case No. SIP-110/2013, the court leveled even the importance of defects in the will of the right holder, indicating that when establishing the fact of using a trademark under the control of the right holder, the court should evaluate all the evidence presented in their entirety, regardless of the presence or absence of defects in the expression of this will.

Practice allows us to establish that, according to the IP Court, as a general rule, the will of the right holder to use a trademark by a third party can be expressed in an agreement with this third party; such agreements, in addition to the license agreement, may be a commercial concession agreement, a simple partnership agreement, a work contract, an agreement for the provision of services for a fee.

At the same time, the will of the copyright holder can be established without any of the above agreements or letters of consent - for example, if there are corporate relations between the copyright holder and the user of the trademark. In case No. SIP-247/2013, the use of a trademark under the control of the right holder was confirmed through the performance by the person using the trademark of the functions of the sole executive body of the right holder. At the same time, no other document formalizing the consent of the trademark owner, except for the agreement on the transfer of powers of the sole executive body, was submitted.

Thus, law enforcement practice also offers other forms of consent of the right holder to use a trademark, in addition to the traditional license agreement, and it can be stated that these forms depend on various types of circumstances in which such consent is required.

Originally published in Trademark Lawyer, Issue 5/2022