Legal protection of a trademark for six months after expiration of the exclusive right

In accordance with paragraph 1 of Article 1491 of the Civil Code of the Russian Federation, the exclusive right to a trademark is valid for ten years from the date of filing an application for state registration of a trademark with the federal executive authority for intellectual property or in the case of registration of a trademark mark under the divisional application from the filing date of the original application.

The term of validity of an exclusive right to a trademark may be extended for ten years at the request of the right holder, filed during the last year of validity of this right.

Extension of the term of the exclusive right to a trademark is possible an unlimited number of times.

At the request of the right holder, he may be given six months after the expiration of the exclusive right to a trademark to file the said application (р. 2 of Article 1491 of the Civil Code of the Russian Federation).

This provision is consistent with Article 5. bis of the Paris Convention for the Protection of Industrial Property of 20.03.1883, which states that a grace period of at least six months is granted for the payment of fees for the preservation of industrial property rights, subject to the payment of an additional fee if such a fee is prescribed by national law.

In accordance with subparagraphs 1 and 5 of paragraph 1 of Article 1514 of the Civil Code of the Russian Federation, the legal protection of a trademark is terminated due to the expiration of the exclusive right to a trademark.

In view of the foregoing, there is uncertainty regarding the issue of the presence / absence of legal protection of a trademark within a grace period of six months after the expiration of the exclusive right, for the resolution of which we will turn to the current practice of the Chamber for Patent Disputes and to the practice of the Court for Intellectual Property Rights.

Thus, in the Conclusion of the Board of the Chamber for Patent Disputes dated February 12, 2021, based on the results of consideration of the objection (Appendix to the decision of the Federal Service for Intellectual Property dated March 31, 2021 on application No. 2019737346/33), the following is stated: however, in accordance with paragraph 3 of paragraph 2 of Article 1491 of the Code, the period of validity of the exclusive right to a trademark may be extended at the relevant request of the right holder also within six months after the expiration of the above period of validity of the exclusive right to a trademark. Therefore, both on the date of acceptance of the objection for consideration, and directly on the date of its consideration, the right holder of the opposing trademark has not yet exhausted the six-month period during which he can file an application for an extension of the term of the exclusive right to this trademark, which does not allow the board does not take into account this trademark as still preventing the granting of legal protection to the claimed designation.

A similar position is set out in the Opinion of the Board of the Chamber for Patent Disputes dated 01/21/2021 based on the results of consideration of the objection (Appendix to the decision of the Federal Service for Intellectual Property dated 02/05/2021 on application No. 2019708322/33): The legal protection of the trademark expired on 02/04/2020. At the same time, the norm of paragraph three of clause 2 of Article 1491 of the Code provides for the possibility of extending the legal protection of the mark for an additional six months after the expiration of the legal protection of the mark, that is, until 08/04/2020. Information on the termination of the legal protection of a trademark due to the expiration of the exclusive right to a trademark was entered in the State Register on January 19, 2021 and published in Bulletin No. 2. Thus, the board does not further take into account the trademark as an opposition, and in the Conclusion of the Patent Disputes Chamber dated February 7, 2022, based on the results of consideration of the objection (Appendix to the decision of the Federal Service for Intellectual Property dated March 4, 2022 on application No. 2019759302/33), the following is stated: As for the applicant's argument that the trademark registration period (according to Certificate No. 590434) expired on 31.10.2021, the board notes the following. In accordance with the norm of paragraph 2 of Article 1491 of the Code, at the request of the rightholder, he may be granted six months (until 30.04.2022) after the expiration of the exclusive right to a trademark to submit a corresponding application for the extension of the exclusive right to a trademark. In connection with the above, this trademark cannot be ignored.

Based on the foregoing, Rospatent, when considering applications for the registration of other trademarks, takes into account trademarks, the exclusive right to which has formally expired, within a six-month period for its renewal.

Court also agreed with the arguments of the administrative body in its decision dated 10/15/2021 in case No. SIP-422/2021, indicating the following: The Board also draws attention to the fact that, as the administrative body correctly pointed out, the norm of paragraph 3 of paragraph 2 of Article 1491 of the Civil Code of the Russian Federation provides for the right holder to extend the validity of the exclusive right to a trademark for six months after the expiration of the exclusive right to a trademark.

In the case under consideration, Rospatent established that, regardless of the expiration of the exclusive right to a trademark under the certificate of the Russian Federation No. 234712, at the time of the contested decision, NPK Koflot had not exhausted the possibility of restoring the legal protection of this remedy provided for by law and that existed until 05/06/2021 individualization for the purpose of subsequent extension of the term of the exclusive right to the named trademark.

In this regard, the administrative body reasonably proceeded from the need to take into account the fact of registration of a trademark according to the certificate of the Russian Federation N 234712 as a circumstance preventing the state registration of the designation according to application N 2019737346 as a trademark.

Taking into account the confirmation by the Intellectual Property Court of the legitimacy of the actions of the administrative body for the registration of trademarks, the validity of the exclusive right to which has expired (within six months after its expiration), it can be concluded that, by analogy, this rule should apply to other situations, in particular when considering the issue of payment of remuneration by the licensee of such a trademark for the specified six-month period.

As indicated in paragraph 2 of clause 40 of the Decree of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 No. 10 “On the application of part four of the Civil Code of the Russian Federation”, within the meaning of clause 5 of Article 1235 of the Civil Code of the Russian Federation in its relationship with clause 4 of Article 1237 of the Civil Code of the Russian Federation, remuneration for paid license agreement is paid for granting the right to use the result of intellectual activity or means of individualization.

In accordance with paragraph 3 of clause 5 of article 1235 of the Civil Code of the Russian Federation, payment of remuneration under a license agreement may be provided in the form of fixed one-time or periodic payments, percentage deductions from income (revenue) or in another form.

Accordingly, when establishing in the license agreement the conditions for the payment of remuneration in the form of periodic payments, or percentage deductions from income (receive), I believe that such remuneration should be paid, including for the use of a trademark after the expiration of the exclusive right to it in the aforementioned six-month grace period.

In addition to the above problems, the issues of the presence / absence of the right holder of the right to use the trademark, as well as the legitimacy of non-contractual use of the trademark by third parties during the specified grace period, are also relevant.

I believe that by analogy with the issues of opposing a trademark to an application for registration as a trademark of a confusingly similar designation and payment of a license fee in a specified period, the copyright holder should retain the exclusive right to use the trademark during the grace period, similar to the right to use such a trademark during the main period of its validity.

In doctrinal sources, there is an opinion that the resolution of these issues should be tied to the intention of the copyright holder to apply to the administrative body with a statement on the extension of the exclusive right, however, I believe that, since third parties do not know and cannot know about such an intention (since it is unequivocally established whether the right holder will file an application for its renewal, or not - it is impossible), the existence of such an intention should be presumed, in view of which, during the specified grace period of six months, the exclusive right to a trademark should be recognized as valid when resolving all the issues mentioned in the article, including when considering the question of the legality of non-contractual use of a trademark by third parties.