Overview of the Procedure for Cancellation of a Trademark due to Non-use in Russia and in Other Countries

As follows from Article 1477 of the Civil Code of the Russian Federation, a trademark serves to individualize goods, a service mark serves to individualize the work performed or services provided. The use by the right holder of his trademark is his right, but not an obligation. However, it is worth remembering that if the trademark is not used by the right holder in Russia, it may be canceled due to non-use at the request of the interested party, if 3 years have passed from the date of registration of such a mark.

Such actions may be taken by a third party who, for example, is interested in registering a similar designation as a trademark for similar goods/services in the territory where the mark is valid.

Cancellation of a Trademark due to Non-use in Russia

Let's consider the procedure for cancellation of a trademark due to non-use in Russia. Before starting the procedure for canceling a trademark, it is recommended to check in publicly available sources of information, for example, on the Internet, whether this trademark is used. If such a use is revealed, then it is desirable to find other ways to overcome this sign. In this case, the options for action may be to negotiate the provision of a letter of consent, to prove the dissimilarity/heterogeneity of the goods, if possible.

Before filing a statement of claim for early termination of the legal protection of a trademark due to non-use, it is mandatory to send a letter of claim with a proposal to the right holder to apply to Rospatent with a statement of waiver of the right to the trademark or to conclude an agreement with the interested party on the alienation of the exclusive right to the trademark. Also, as part of the claim letter, the right holder may be asked to issue a letter of consent to register the designation of the interested party.

If the right holder decides to settle the situation amicably and not bring the case to court, he may file an application for early termination of the legal protection of the trademark with Rospatent, conclude an alienation agreement or issue a letter of consent in response to the claim. Accordingly, in this case, further proceedings in the Intellectual Property Court are not necessary for the interested person, since the situation has been resolved.

In the event that after 2 months from the date of sending the claim letter, the right holder does not take actions for amicable settlement, the interested person has the right to apply to the court with a statement of claim for early termination of the legal protection of the trademark due to its non-use.

A new proposal of an interested person may be sent to the right holder of the trademark not earlier than three months from the date of sending the previous proposal of the interested party.

The burden of proof of the use of a trademark lies with the right holder.

In turn, the plaintiff collects documents confirming his interest in the early termination of the legal protection of the trademark. Such evidence is documents confirming the plaintiff's activities for the production or sale of goods and the provision of services. It is possible to file claims for early termination of the legal protection of a trademark only in relation to those goods and services for which it is possible to prove an interest/conduct of activity.

Evidence of interest may include documents confirming the offer for sale and sale of goods similar to those listed in the disputed trademark. That is, it is necessary to confirm the conduct of real activities for the import and sale of goods, supporting documents can be cargo customs declarations, supply contracts, consignment notes, invoices, payment orders, acceptance certificates, joint venture agreements.

An additional proof of interest will be an application for a trademark in relation to goods similar to those goods that are listed in the disputed trademark. In this case, the plaintiff and the person in whose name the trademark application will be filed must be the same person.

Court proceedings in such cases are adversarial in nature, that is, the parties have the right to support their position with documents and evidence in response to the materials filed by the other party.

When deciding on the early termination of the legal protection of a trademark due to its non-use, the evidence provided by the right holder that the trademark was not used due to circumstances beyond his control may be taken into account.

If the plaintiff's interest is proved, and the right holder could not provide sufficient evidence of the use of the trademark, the legal protection of the trademark is terminated in full or in part from the date of entry into force of the court decision. At the same time, a situation may arise when the plaintiff's interest is not proven, in the opinion of the Court, accordingly, the trademark remains in force.

In other countries, the procedure for cancellation of a trademark due to non-use is also applied, but the terms for calculating the date for filing an application/claim are different. In addition, in other countries, the mechanism of such a procedure is arranged differently – there may be no adversarial nature of the parties in principle.

Let's consider several examples of foreign countries in the context of the process of cancellation of a trademark due to non-use.

Cancellation of a Trademark due to Non-use in the US

In the United States, an application for cancellation of a mark due to non-use is possible after 3 years from the date of its registration and in two ways. The first way is to file a petition for cancellation of registration (expungement proceedings) with the United States Patent and Trademark Office (USPTO). This procedure is carried out unilaterally. After filing a petition for cancellation of registration, the plaintiff no longer participates in the process. If the application is accepted for consideration, the right holder may object and/or provide evidence of use. The plaintiff will then have no opportunity to respond to the respondent's position, and the USPTO will make a decision based on the information provided. The USPTO's decision may be appealed to the Trademark Trial and Appeal Board (TTAB) within three months from the date of its issuance.

The second way is to file a motion for cancellation with the TTAB cancellation proceedings, which can be called more of a mini-court proceeding. After filing an application for cancellation and subject to the right holder's response to it, the plaintiff has the opportunity to provide his position, that is, the adversarial nature of the parties is provided. Proceedings in TTAB can be very lengthy and, accordingly, expensive, so it is not uncommon for copyright holders to be willing to negotiate amicably at an early stage. Any party involved in TTAB cancellation proceedings that is not satisfied with TTAB's decision may appeal to the United States Court of Appeals for the Federal Circuit.

In addition to the above procedures, the United States provides for the filing of a Declaration of Trademark Use in the period from the 5th to the 6th year, then from the 9th to the 10th year, and then every 10 years thereafter. This mechanism obliges the right holder to provide evidence of the use of the mark in the United States for registered goods/services. If the use is not proven, the legal protection of the mark in the United States is terminated in whole or in part. Thus, the requirement to prove the use makes it possible to terminate the validity of "dead" marks, which may be replaced by new market players, applicants. A similar practice exists, for example, in the Philippines and Mexico.

Cancellation of a Trademark due to Non-use in the China

In China, the procedure for filing an application for cancellation of a trademark due to non-use is one of the most used options for overcoming provisional refusals.

Letters of consent are not accepted in China, proving dissimilarity and/or heterogeneity is often extremely problematic, so the option of canceling an opposing mark due to non-use remains. The procedure in China does not provide for adversarial parties.

In response to the filed application, the right holder can provide evidence of the use of the mark in China. At the same time, the person filing such an application does not have the opportunity to familiarize himself with the evidence submitted within the framework of this procedure. The National Intellectual Property Administration of China (CNIPA) decides whether the use of the mark is proven. The CNIPA decision may then be challenged by filing an appeal with the Trademark Review and Approval Department (TRAD) within 15 days of the decision. Once the appeal is accepted, the first thing TRAD does is to send the applicant the evidence of use (if any) provided by the right holder during the initial proceedings. During this appeal proceedings, the right holder can submit completely new evidence, and the applicant will have the opportunity to consider and respond to any evidence. The TRAD usually makes a decision on the appeal within 7-12 months after the acceptance of the appeal.

For countries such as Argentina, Benelux, Brazil, Bulgaria, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, India, Ireland, Italy, Latvia, Lithuania, Norway, Poland, Portugal, Romania, Singapore, Slovakia, Slovenia, South Africa, Spain, Sweden, Switzerland, Turkey, United Kingdom, cancellation of a trademark due to non-use can be filed after 5 years from the date of registration. For Canada, Hong Kong, Japan, Mexico, New Zealand, Taiwan, cancellation of a trademark due to non-use can be filed after 3 years from the date of registration.

We note that due to the current 14th package of EU sanctions against the Russian Federation, at the moment it is not possible to conduct any paperwork in the EU countries on behalf of Russian individuals and companies.