To run a successful business, you need to sense changes in consumer needs and adapt to them in a timely manner. An important component of success in the market is the external attractiveness of the product and/or service offered, as well as their labeling. The brand image is formed through adaptation to trends in external design, which is directly related to the trademark used by the brand. In this regard, many companies and entrepreneurs are thinking about using an already registered trademark that is familiar to consumers, with changes made to its external design. But how legal is this?
According to paragraph 2 of Art. 1486 of the Civil Code of the Russian Federation, the use of a trademark is recognized as its use with changes in individual elements that do not change the essence of the trademark and do not limit the protection granted to the trademark.
As a rule, the above rule applies if a third party has violated the exclusive right of the registration owner through the use of a similar designation, however, Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 N 10 “On the application of part four of the Civil Code of the Russian Federation” explains that when using a designation registered as a trademark, with changes in individual elements, the court must assess the presence or absence of similarity between the trademark and the designation used, the perception by consumers of the designation used as the same trademark, as well as the impact of changes on the essence of the trademark as a result of such use.
The question of whether the changes made by the copyright holder affected the essence of the disputed trademark - whether it remained recognizable (distinctive) to ordinary consumers of the relevant product - is a question of fact, which is established by the court based on the results of a comprehensive analysis of the registered and used designation.
It follows from this that it is the copyright holder who should be primarily interested in the legal use of the “updated” designation. The legislator does not prevent minor changes and allows the copyright holder to deviate from the registered designation. However, the legislator does not define the criteria for insignificance. In other words, using a modified trademark is possible, but only with caution.
What should a bona fide copyright holder who has decided to change the style, but does not want to go through the long-term procedure of registering a new designation, do? In this case, it is possible to send a corresponding petition to Rospatent with a request to make changes to the registered designation. The original image, which has already been registered, as well as a new version of the trademark must be presented to the expert for review.
Elements occupying a dominant position will play a significant role. Their changes may affect the essence of the trademark, and therefore registration may not take place. At the same time, it is recommended to first seek advice from experts in the field of trademark registration; they will help outline the prospects for registering such changes and, if necessary, adjust the new design of the mark so that it is registered. The number of the mark, its registration date and validity period will remain unchanged; whether the old trademark will take on a new appearance depends on the will of the expert considering the application, as well as on the convincingness of the arguments of the person filing such a petition for changes. After all, one of the main tasks of a trademark is to identify a product and/or service and remain recognizable in the eyes of the consumer without violating the rights of third parties.
If the elements proposed by the copyright holder modify the trademark so much that it loses its essence, but the person needs to use the designation in a new design, it will still be necessary to submit such a designation for registration. However, this option is not forced, because by submitting a new designation for registration, a person can expand the list of goods and/or services relative to an already registered designation, which can also be useful for the brand. The legislator does not provide for amendments to expand the list of goods and/or services of a registered trademark.
If the legislator allows the use of a mark with changes in individual elements, then is such use acceptable by the licensee? According to Art. 1236 of the Civil Code of the Russian Federation, the owner of the exclusive right to the result of intellectual activity or to a means of individualization (licensor) grants or undertakes to provide the other party (licensee) with the right to use such result or such means within the limits provided for by the contract. In accordance with Art. 1232 Civil Code of the Russian Federation, exclusive right to the result of intellectual activity or a means of individualization is recognized and protected subject to state registration of such a result or such means. From the above it follows that the licensor can grant the right to use only the trademark that has already been registered by Rospatent. At times, a licensee who has been granted the right to use may deviate from using the mark in the form in which it is registered and begin to use the trademark in any form. However, such use is unacceptable from the point of view of law due to the fact that the licensee goes beyond the rights granted to him by the agreement.
But can the copyright holder himself grant the right to use a modified trademark, the changes of which are not registered with Rospatent? Many rights holders “allow” their licensees to use the mark without individual elements and even in a different color design, stipulating in the agreement what changes the trademark can be used with. However, such an expression of will may not always be registered. Rospatent may consider such a provision in the contract as exceeding the limits of legal protection and ask the copyright holder to change the provision. Licensors who allow the use of a modified trademark under a contract must be sure that such a designation will remain recognizable in the eyes of the consumer and will not change the essence of the trademark.
Based on the above, it should be concluded that any changes regarding the external execution of a trademark should be registered with Rospatent. It is also not recommended to exceed the limits of the legal protection provided. Timely compliance with these simple rules will help maintain your current registration under protection.