The legal nature of a letter of consent for the registration of a trademark.

One of the grounds for refusal of the registration of a trademark is the existence of thelegal protection of a confusingly similar trademark registered with respect to the similar productsand services.However, Article 1483 of the Civil Code of the Russian Federation stipulates, that “Theregistration as a trademark with respect to the similar products of the designation, which isconfusingly similar to any of the trademarks shall be allowed with consent of the right holder,provided that such registration may not be a reason for confusing the consumer”.Thus, it follows from the above said legal norm that when opposing a confusingly similar“senior” trademark, the applicant is entitled to submit at filing an application for the stateregistration of a trademark, or during the examination of a trademark application, a documentaryconfirmation of consent of the right holder of the confusingly similar trademark for the stateregistration of the claimed designation as a trademark.From the point of view of the civil legislation, the letter of consent is a unilateraltransaction.According to Article 153 of the Civil Code of the Russian Federation “The actions ofcitizens and legal entities directed to the establishment, change or termination of civil rights andduties shall be deemed to be transactions.”According to Paragraph 2 of Article 154 of the Civil Code of the Russian Federation, “Atransaction for the conclusion of which, according to law, other legal acts or an agreement ofthe parties the expression of the will of one party is necessary and sufficient shall be consideredunilateral.”According to Article 155 of the Civil Code of the Russian Federation, “A unilateraltransaction shall create duties for the person who has concluded the transaction. It can createduties for other persons only in the cases stipulated by law or by an agreement with thesepersons.”However, the letter of consent is a specific kind of a unilateral transaction, since it doesnot directly create a duty for the person who has issued it.Granting by the right holder his consent for the registration in the name of another personof a trademark similar to the one owned by the right holder and which has an earlier priority withrespect to the similar products (services) is the right of the right holder. The purpose of grantingthe above said consent is the occurrence of the exclusive right to a similar trademark in a personother than the right holder.Thus, the person in whose name the trademark has been registered on the ground of aletter of consent shall be a beneficiary of this unilateral transaction.In this case, the beneficiary should be understood as a person in whose favor thetransaction has been concluded, or a person in whose interests the obligation is being fulfilled.This concept implies that the above said subject has a property interest in the existing legalrelations.By implication of Article 1483 of the Civil Code of the Russian Federation it follows thatin the absence of the right holder’s consent, the registration of a similar trademark shall not beallowed.Thus, granting consent by the right holder is necessary and sufficient for the occurrenceof the exclusive right to a similar trademark in other person.The requirements for the right holder’s letter of consent are regulated by Order of theFederal Service for Intellectual Property, Patents and Trademarks No. 190 of December 30, 2009“On adoption of the recommendations for the application of the provision of the Civil Code ofthe Russian Federation concerning the right holder’s consent.”

The letter of consent shall be made in an arbitrary form. However, the letter of consentmust contain obligatory the following information:– the information on the person, who grants consent for the registration of the claimeddesignation as a trademark, which allows identifying such person as the right holder of theopposed trademark (his name, his location);– the information on the person, to whom consent for the registration of the claimeddesignation as a trademark, which allows identifying such person as an applicant of theapplication (his name, his location) is granted;– the expression of the right holder’s consent for the registration of the claimeddesignation as a trademark, with providing the application number, if assigned, and thedescription of the claimed trademark, for which consent for the registration as a trademark withthe attachment of the claimed designation is being granted;– a specific list of products/services with respect to which the right holder does not objectagainst the registration of the claimed designation as a trademark;– a date of composition of the document and a signature of an authorized person.If the submitted document confirming consent does not comply with the above saidrequirements for execution, it can not be an expression of the right holder’s consent for theregistration of the claimed designation as a trademark.Thus, the discrepancy between the letter of consent and the requirements of theseRecommendations may be a ground for the recognition of the fact that consent for theregistration of a trademark has not been expressed in this document.However, the court will consider all the evidence and circumstances of the case in theaggregate.So, for example, in the Resolution of the Presidium of the Intellectual Property Court ofDecember 27, 2017, in case No. SIP-329/2017, the legal position is expressed, according towhich the absence of the date of composing a disputed document discredits not unconditionallythe letter of consent.The absence of the date is not an independent and sufficient ground for recognizing thesubmitted document to be inadmissible evidence of the expression of the company’s will to grantpermission for the registration of a specific claimed designation.The court of cassation, taking into account the indication in the text of the letter of thenumber of the application for the registration of the designation as a service mark (No.2011741070), notes that the corresponding consent is obviously expressed after the filing date ofthe said application.Thus, the court found that, despite the absence of the date of composing the document,based on the details and content of the letter, the right holder’s expression of will to issue a letterof consent for the registration of the designation with respect to the indicated application isobvious.One of the requirements to the letter of consent is signing it by an authorized person.However, this may not only be a sole executive body.The letter of consent may also be signed by a representative. In this case, a power ofattorney authorizing a representative to sign a letter of consent for the registration of the claimeddesignation as a trademark on behalf of the right holder should be attached to the letter ofconsent.The authority to sign a letter of consent for the registration of the trademark on behalf ofthe right holder should be specifically stipulated in the power of attorney.Thus, not any official person can sign a letter of consent for the registration of atrademark on behalf of the company, but only a sole executive body or a person with anappropriate power of attorney.In practice, there can be a situation, when the employee of the right holder, on behalf ofwhom the letter of consent has been issued, who does not have the appropriate authority and

instructions of the company, signs the letter of consent for the registration of the trademark on itsbehalf.So, for example, LLC “Liqueur and Vodka Distillery “Saranskiy” has filed a statement ofclaim to the arbitration court to invalidate a null and void transaction, expressed in the issuanceon behalf of LLC “Liqueur and Vodka Distillery “Saranskiy” a letter of consent for theregistration of the trademark in the name of LLC “Moscow Trading Company,” because theletter of consent on behalf of LLC “Liqueur and Vodka Distillery “Saranskiy” had been signedby an unauthorized person.In order to verify the authority of the person who has signed the letter of consent onbehalf of the right holder, and thereby to demonstrate one’s good faith is possible by obtainingan extract from the Unified State Register of Legal Entities (hereinafter referred to as theUSRLE). The actuality of the extract from the Register can be checked on the website of theFederal Tax Service of Russia (egrul.nalog.ru), the information from which is open and publiclyavailable.By virtue of Paragraph 2 of Article 51 of the Civil Code of the Russian Federation, “Thedata of the state registration shall be included in the Unified State Register of Legal Entities,which is open for the public examination.A person who faithfully relies on the data of the Unified State Register of Legal Entitieshas the right to proceed from the assumption that they correspond to actual circumstances.”By implication of this Article, according to a general rule, when verifying the authority ofthe person, who is concluding a transaction on behalf of the legal entity, the counterparty of thelegal entity must rely faithfully on the information about its authority contained in the UnifiedState Register of Legal Entities.As explained in Paragraph 22 of Resolution of the Plenum of the Supreme Court of theRussian Federation No. 25 of June 23, 2015 “On the application by courts of certain provisionsof Section I of the first Part of the Civil Code of the Russian Federation” “According toParagraph 2 of Article 51 of the Civil Code, the data of the state registration of legal entitiesshall be included in the Unified State Register of Legal Entities, which is open for the publicexamination.”The court, when considering case No. A41-10703/2018, determined that the Defendantshould have known that the person signing the letter of consent of 09.04.2013 was not theDirector – the sole executive body of LLC “Liqueur and Vodka Distillery “Saranskiy,” and as aresult, in the absence of a duly executed power of attorney, he had not had the legal authority tosign the letter of consent on behalf of the Company for the registration of the trademark.Consequently, the consent expressed in the letter for the registration of a trademark is anull and void transaction, according to Paragraph 1 of Article 53, Articles 153, 167, 168 of theCivil Code of the Russian Federation, what entails its invalidity.Also, the court may recognize the letter of consent as improper evidence, and, as a result,it can recognize granting the legal protection to the trademark as completely invalid, withoutrecognizing it as a null and void transaction.Thus, the court, when considering case No. SIP-635/2015, noted that the letters ofconsent for the registration of a disputed trademark, signed on behalf of the General Director ofthe company “Yug Rusi” V. V. Dmitriev, were not a proper consent for the registration of adisputed trademark, since according to the letters of V. V. Dmitriev and M. V. Arkannikov, theyhad not signed on behalf of the company “Yug Rusi” the letters of consent for the registration ofa trademark according to application No. 2010724445.In addition, the court when considering the case took into account that the person namedin the letter of consent as a person who had signed it as the General Director of the company“Yug Rusi” had not been the General Director of the company “Yug Rusi” at the date ofsignature of the letter of consent.Thus, having assessed, according to the requirements of Article 71 of the APC RF, theevidence submitted to the case materials, in the aggregate, the first-instance court concluded that

in fact the consent of the right holder of the opposed trademarks for the registration of thedisputed trademark had not been granted, consequently, the trademark had been registered inviolation of Subparagraph 2 of Paragraph 6 of Article 1483 of the Civil Code of the RussianFederation.This legal position is confirmed by the Presidium of the Intellectual Property Court.