Under the legislation in force, as provided by Article 1478 of the Civil Code, the owner of the trademark must have status of a legal entity or an individual entrepreneur. The nature of this provision is determined by the description and purpose of the visual identity. Both trademark and service mark are a creation to identify a business product used or intended to be used to identify and distinguish homogeneous or similar goods and services on the market from those of another provider.
Therefore, trade and business are major fields of use of trademark and service mark. It means that the main subjects interested in trademark registration are manufacturers or sellers of products or service companies. Under the Russian law, all these businesses are registered as legal entities or individual entrepreneurs.
Since 2017, Russia has been developing a legal framework for individuals who chose self-employment, also known as independent contractors or freelancers. This is a category of workers, which provides services on an individual basis and for this reason, they have the right to pay taxes in accordance with the special tax treatments. If we consider these persons from the point of view of trademark registration, it is important to highlight the following:
- Despite the fact that the business does not have the status of a legal entity or individual entrepreneur, it provides services.
- Such business may express a desire to register a service mark to shape perception and create an impression through the visible elements of its brand on the market.
- Thereupon, the service mark will fulfill the task specified in the Civil Code: individualization of services rendered by the person among other homogeneous ones.
In author’s opinion, the foregoing makes it clear that registration of a trademark by an individual is possible and justified. At the same time, the existing regulations do not allow that. Thus, paragraph 3 of Article 1512 of the Civil Code allows those concerned to challenge the certificate of the trademark during the entire period of its validity in case of violation of Article 1478 of the Civil Code, which states that the right holder must have status of a legal entity or individual entrepreneur.
When filling in the application for registration of the trademark, the applicant specifies the state registration numbers of the record on creation of a legal entity or an individual entrepreneur. If the field remains empty, the application will be turned down.
In addition, the legal provisions of paragraph 4 of Article 1514 of the Civil Code indicate the possibility of early termination of the mark, specifically, on the basis of a federal decision by the Federal Executive Authority on Intellectual Property on early termination of legal protection of the trademark in connection with the winding up of a legal entity or registration of winding up of an individual entrepreneur who are the right holders.
So, what the future may hold for trademark registration by individuals in Russia?
Answering this question, it is worth saying that the legislation of some countries provides for the possibility of registration of the trademark by individuals. Such countries, in particular, include the entire territory of European Union, as well as, for example, Ukraine.
Since the beginning of the development of the legal framework of self-employment in Russia, lawmakers and government officials have also focused on improving the intellectual property regulation with regard to the self-employed. As of August 2020, Mikhail Mishustin, the Russian Prime Minister charged the Ministry of Economic Development, Ministry of Education and Science and Russian Agency for Patents and Trademarks with the development of regulations for further improvement of the registration of trademarks by individuals. As announced on the official website of the Russian Agency for Patents and Trademarks, the proposed amendment should be submitted to the government in May 2021, for consideration of the State Duma it is proposed to submit it by the III quarter of next year.
The published information on the proposed amendment to the civil legislation makes it highly probable for the self-employed contractors who are in fact, individuals to be entitled to register trademarks in Russia in their own name.
Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63