Letters of consent as a tool for registering trademarks

A trademark (service mark) is an object of intellectual property that allows you to individualize goods/services. Thus, a trademark (service mark) is intended to individualize (distinguish) the goods and services of some manufacturers from homogeneous goods and services of other manufacturers.

In order for a trademark to be registered, it must comply with legal requirements. Thus, one of the criteria for determining the possibility of registering a trademark is its compliance with the requirements of paragraph 6 of Article 1483 of the Civil Code of the Russian Federation, namely:

“Designations that are identical or confusingly similar to: cannot be registered as trademarks:

1) trademarks of other persons applied for registration in relation to similar goods and having an earlier priority, if the application for state registration of a trademark is not withdrawn, is not recognized as withdrawn or a decision has been made to refuse state registration;

2) trademarks of other persons protected in the Russian Federation, including in accordance with an international treaty of the Russian Federation, in relation to similar goods and having an earlier priority;

3) trademarks of other persons, recognized in the manner prescribed by this Code as well-known trademarks in the Russian Federation, in relation to homogeneous goods from a date earlier than the priority of the declared designation.

Registration as a trademark in relation to homogeneous goods of a designation that is confusingly similar to any of the trademarks specified in subparagraphs 1 and 2 of this paragraph, is permitted with the consent of the copyright holder, provided that such registration cannot cause misleading of the consumer. Consent cannot be revoked by the copyright holder.”

As you can see, the Civil Code of the Russian Federation contains an exception to this rule: in subparagraph 5 paragraph 6 article 1483 of the Civil Code of the Russian Federation stipulates the possibility of registration with the consent of the copyright holder.

Drafting a letter of consent

If, during the examination of the applied designation, a trademark was opposed, which, in the opinion of the examination, is confusingly similar to the applied designation, the examination sends the applicant a notice of the results of the conformity check (preliminary refusal), which indicates the specific mark/signs. The applicant has the right to prepare a reasoned response and send it to the Office within six months. Thus, the applicant has time to develop a strategy to overcome the expert’s arguments.

It should be noted that a letter of consent from the owner of the opposing mark is an effective lever for registering a trademark. The option to contact the owner of the opposing mark occurs when proving the dissimilarity of the marks seems difficult. An applicant who wishes to exercise his right and apply for a letter of consent should carefully approach this issue, since drawing up letters of consent, as well as conducting negotiations, require certain knowledge.

First of all, you need to understand that when negotiating with the owner of the opposing sign, the following developments are possible:

• the copyright holder agrees to issue a letter of consent free of charge;
• the copyright holder agrees to issue a letter of consent for a fee, which is determined by the copyright holder himself;
• the copyright holder may refuse to issue a letter of consent.

Let's consider a situation where agreements have been reached and the copyright holder has expressed agreement in principle to issue such a letter. The next step is to prepare such a letter of consent, and here it is very important that it is correctly drawn up and all requirements are met.

Provisions of clause 7.4.2. Guidelines for the implementation of administrative procedures and actions within the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates determine the requirements for documents containing consent for registration. So, we can highlight the following:

• the letter of consent can be drawn up in any form;
• the letter of consent is provided in the original. It should be noted that the introduction of an electronic filing system made it possible to interact with the Office in electronic form. Thus, a letter of consent may initially be sent in a scanned form, but the subsequent sending of its original on paper is mandatory.

The letter of consent must contain the following information:

• complete information about the person giving consent to register the applied designation as a trademark, which allows such person to be identified as the copyright holder of the opposing trademark (his name/name, indication of his place of residence or location);
• full information about the person to whom consent is issued to register the applied designation as a trademark, allowing to identify such person as the applicant for the application (his name, indication of place of residence or location);
• expression of the consent of the copyright holder to register the applied designation as a trademark, giving the application number, if assigned, and a description of the applied designation for which consent for registration as a trademark is issued with the application of the applied designation;
• a specific list of goods/services in respect of which the copyright holder does not object to the registration of the applied designation as a trademark;
• date drawing up the document and the signature of an authorized person, as well as the seal of the organization (if available). The signature of the heads of foreign legal entities is sealed if the legislation of the country where the legal entity is established requires a seal of the legal entity.

The document confirming consent (letter of consent) may contain other information.

It is important to note that the letter of consent must be provided in Russian or another language. If such a document is submitted in another language, it must be accompanied by a translation into Russian, certified in the prescribed manner.

In addition, the letter of consent indicates that it is irrevocable.

Thus, a well-executed letter of consent will allow the trademark registration process to continue.

Examination of the consent letter

It should be noted that the decision on acceptance/non-acceptance of the letter of consent remains at the discretion of the examination. Here it is important to pay attention to the approach of the examination when considering the issue of accepting letters of consent.

As stated in the Recommendations for the application of the provisions of the Civil Code of the Russian Federation regarding the consent of the copyright holder to register a similar trademark, approved. by order of Rospatent dated December 30, 2009 N 190, namely:

According to paragraph 5 of the Recommendations, “The information contained in the document confirming consent is taken into account when conducting an examination of the applied designation, taking into account the recommendations below.

The consent document does not eliminate the possibility of trademark confusion resulting from their use. The similarity of trademarks to the extent of confusion can lead to misleading the consumer regarding the product.

At the same time, the likelihood of confusion and misleading the consumer depends not only on the fact of similarity of two designations (trademarks), but on a number of other circumstances. The likelihood of confusion between the claimed designation and the opposing trademark increases significantly, in particular, if:

• the applied designation and the opposed trademark have a degree of similarity close to identity;
• the homogeneity of the goods is not questioned;
• the opposing trademark is widely known among potential consumers of the product and is associated with a specific manufacturer (for example, if it is recognized as a well-known trademark in the Russian Federation);
• the opposed trademark is intended for individualization of consumer goods and everyday demand (for example, for cosmetic and hygiene products, food products, wine, vodka and tobacco products);
• the opposed trademark is a collective one or, on the contrary, the designation is applied for registration as a collective mark (in relation to similar goods).

The confusing similarity of the applied designation and the opposing trademark can lead to undesirable and even dangerous social consequences, in particular, if the opposing trademark is intended to individualize medicinal products.

In connection with the above explanations, a document confirming consent should be considered only as one of the circumstances that must be taken into account when checking the protectability of the applied for designation. In order to eliminate the possibility of misleading the consumer during the examination of the declared designation, it is proposed to take into account the circumstances that contribute to the likelihood of confusion, as well as contributing to the emergence of other socially undesirable or even dangerous consequences, and, accordingly, depending on such circumstances, consider the possibility of taking into account a document confirming agreement."

Paragraph 7 of the Recommendations indicates the homogeneity of goods, which is also a key factor.

Thus, “when establishing the homogeneity of goods, the fundamental possibility of the consumer having the idea that these goods belong to one manufacturer is determined... The higher the degree of homogeneity of goods, i.e. The more signs of homogeneity of goods that can confirm the homogeneity of the goods in respect of which a designation is applied and an opposing, confusingly similar trademark is registered, the higher the predicted probability of confusion can be.

The homogeneity of goods is a separate factor, which, together with other factors, should be taken into account when deciding on the issue of granting legal protection to the declared designation in the presence of a document confirming consent.

In this regard, it is advisable to take into account the following. The consent of the copyright holder to register a confusingly similar trademark can be taken into account when providing legal protection in a situation where the issue of the homogeneity of goods is debatable and the copyright holder believes that the possibility of confusion when using trademarks for the relevant goods is excluded.

At the same time, even if the homogeneity of the goods is questioned, and the copyright holder presents a document confirming consent, legal protection for the applied designation cannot be provided if the opposing trademark:

• is widely known among potential consumers of the product and is associated with a specific manufacturer (for example, if it is recognized as a well-known trademark in the Russian Federation);
• designed for individualization of consumer goods and everyday demand;
• is collective or, conversely, the designation is applied for registration as a collective mark (in relation to homogeneous goods);
• intended for individualization of medicinal products."

Summarizing the above, we can conclude that a letter of consent is an effective tool for registering a trademark and is widely used in practice. At the same time, the received letter of consent does not provide explicit guarantees for registering a trademark, since there are certain requirements both for the execution of the letter of consent and for its consideration by an expert, at the discretion of which its acceptance remains.

Sources:

1. Civil Code of the Russian Federation (part four) dated December 18, 2006 N 230-FZ (as amended on June 13, 2023) (as amended and supplemented, entered into force on June 29, 2023)
2. Guidelines for the implementation of administrative procedures and actions within the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates , approved by order of the Federal State Budgetary Institution FIPS dated January 20, 2020 N 12 (as amended on March 25, 2022)
3. Recommendations on the application of the provisions of the Civil Code of the Russian Federation regarding the consent of the copyright holder to register a similar trademark, approved. by order of Rospatent dated December 30, 2009 N 190.