How to prove the use of a trademark under the control of the right holder?

Current legislation

According to paragraph 1 of Article 1486 of the Civil Code of the Russian Federation, the legal protection of a trademark may be terminated early 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.

The use of a trademark is recognized as its use by the right holder or a person to whom such a right is granted on the basis of a license agreement in accordance with Article 1489 of the Code, or by another person using the trademark under the control of the right holder, provided that the use of the trademark is carried out in accordance with paragraph 2 of Article 1484 of the Code, except for cases when the relevant actions are not related to the directly with the introduction of the goods into civil circulation, as well as the use of a trademark with a change in its individual elements, which does not change the essence of the trademark and does not limit the protection granted to the trademark (paragraph 2 of the same article).

The Civil Code of the Russian Federation distinguishes between cases of use of a trademark (service mark) by the right holder himself (including those who have become such on the basis of an agreement on the alienation of the exclusive right), by the licensee under a license agreement, by another person under the control of the right holder.

Thus, the current legislation allows for the possibility of using a trademark not by the right holder himself, but by a third party, provided that such use is carried out under the control of the right holder.

This can help to eliminate the risk of cancellation of the trademark due to its non-use if it is proved that the actual use of the trademark was carried out under the control of the right holder.

This situation is especially relevant in cases where the trademark of the right holder is used by another person through its subsidiaries, affiliates, as well as through its franchisees, distributors or contractors.

In view of the above, a natural question arises - how to prove the use of a trademark under the control of the right holder?

First of all, it should be noted that the current legislation does not disclose the concept of "control", which is why both the concept itself and the criteria for proving it were developed by the courts and are actively used by them at present.

Position of the Intellectual Property Court

The Intellectual Property Court has repeatedly pointed out that control must be real, documented and actually implemented, that is, the formal existence of a license agreement is not always sufficient evidence.

It is important that the contract contains conditions that allow the right holder to influence the nature and method of use of the trademark.

The use of a trademark under the control of the right holder means the use of the trademark at the will of the right holder.

As a general rule, the will of the right holder for the use of a trademark (service mark) by a third party may be expressed in an agreement with this third party.

A similar position is reflected in the resolutions of the Presidium of the Intellectual Property Rights Court dated 20.05.2014 in case No. SIP-56/2013 (by the ruling of the Supreme Commercial Court of the Russian Federation dated 07.07.2014 No. VAS-8509/14 the transfer of the case to the Presidium of the Supreme Commercial Court of the Russian Federation was refused), dated 15.12.2014 in case No. SIP-285/2014, dated 22.07.2016 in case No. SIP-643/2015, dated 03.11.2016 in the case N SIP-320/2016 and dated 12.12.2016 in case N SIP-206/2016 (by the decision of the Supreme Court of the Russian Federation dated 03.04.2017 No. 300-ES17-2418 in the transfer of the cassation appeal for consideration in the court session of the Judicial Chamber for Economic Disputes of the Supreme Court of the Russian Federation), dated 04.12.2017 in the case N SIP-36/2017 (by the decision of the Supreme Court of the Russian Federation dated 02.04.2018 No. 300-KG18-2423 in the transfer of the cassation appeal for consideration in the court session of the Judicial Chamber on economic disputes of the Supreme Court of the Russian Federation) and others.

For the purposes of applying the provisions of Clause 2 of Article 1486 of the Civil Code of the Russian Federation, the legal significance is not formal compliance with the requirements for the registration of relations between participants in civil transactions, which in this case determines the occurrence or non-occurrence of certain legal consequences only for the participants in these relations, but the presence in civil circulation of goods (services) marked with the disputed trademark (service mark) on a legal basis, that is, at the will of the right holder (Clause 3 of Article 1484 of the Civil Code).

When establishing the fact of the use of the trademark by another person under the control of the right holder, the court evaluates all the evidence presented in their entirety and, based on the results of the assessment, determines whether the use of the trademark was carried out at the will of the right holder, regardless of the presence or absence of defects in the expression of this will.

A similar position is reflected in the resolutions of the Presidium of the Intellectual Property Rights Court dated 01.04.2014 in case No. SIP-110/2013, dated 12.12.2016 in case No. SIP-206/2016 (by the decision of the Supreme Court of the Russian Federation dated 03.04.2017 No. 300-ES17-2418 the transfer of the cassation appeal for consideration in the court session of the Judicial Chamber for Economic Disputes of the Supreme Court of the Russian Federation was refused), dated 24.04.2017 in case No. SIP-638/2016 (by the decision of the Supreme Court of the Russian Federation dated 03. 07.2017 No. 300-ES17-8135 in the transfer of the cassation appeal for consideration in the court session of the Judicial Chamber for Economic Disputes of the Supreme Court of the Russian Federation was refused), dated 05.06.2017 in case No. SIP-728/2016 and dated 03.11.2017 in case No. SIP-155/2017.

What documents can confirm the control of the right holder?

When establishing the fact of the use of the trademark by another person under the control of the right holder, the court evaluates all the evidence presented in their entirety and, based on the results of the assessment, determines whether the use of the trademark was carried out at the will of the right holder, regardless of the presence or absence of defects in the expression of this will (Resolution of the Presidium of the Intellectual Property Court dated 01.04.2014 in case No SIP-110/2013).

First of all, it should be noted that the use of a trademark under the control of the right holder must be accompanied by the implementation of a number of control measures (Resolution of the Presidium of the Intellectual Property Court dated 14.10.2019 in the case No SIP-6/2019).

Thus, it is necessary to establish the presence in civil circulation of goods marked with the disputed trademarks, precisely at the will of the right holder. In itself, the absence of such a will of the right holder indicates the absence of grounds for recognizing the fact of the introduction of the relevant goods into civil circulation under the control of the right holder.

The possibility of using a trademark by a third party under the control of the right holder, provided for by the above legal norms, assumes that it is the trademark of such right holder that is used on the goods at the will of the right holder, and not a means of individualization of the goods of another person, identical or confusingly similar to the defendant's trademark (decision of the Intellectual Property Court dated 06.02.2023 in the case No SIP-195/2022).

In order to prove the use of a trademark under the control of the right holder, it is necessary to collect and present a set of evidence confirming both the existence of legal control mechanisms and their actual implementation.

Based on the above, proving the fact of the use of a trademark under the control of the right holder is possible with the help of the following documents:

• an agreement between the right holder and the person using the trademark under his control (for example, a license agreement). The said agreement must contain provisions that give the right holder the right to control the use of his trademark;
• documents confirming the implementation by the right holder of control over the use of his trademark (these can be reports, inspection reports, etc.),
• as well as documents that directly confirm the use of the trademark by the specified person.

Use of a trademark within holdings and affiliated structures

In the context of the above, it should also be taken into account that the existence of corporate relations between the right holder and another person using the trademark, including within a holding or other group of persons, presupposes the use of the trademark by another person under the control of the right holder, in particular, on the basis of a dominant participation in another person. In the presence of such relations, as a rule, no special legal acts are required within the holding or a group of persons (a special decision of any body, for example, a general meeting, a board of directors, an executive body, etc.) that formalize the consent of the right holder to the use of the trademark by another person (Decision of the Intellectual Property Court dated 06.04.2023 in the case No SIP-1138/2022).

Confirmation of the use of a trademark under the control of the right holder is an important aspect of rights protection. Only with a comprehensive approach can the preservation of the exclusive right to a trademark be guaranteed, even if it is used by third parties.