State Duma will consider a bill on the co-ownership of the exclusive right to trademark

As follows from the literal interpretation of paragraph 2 of Article 1229 of the Civil Code of the Russian Federation [1], the exclusive right to the result of intellectual activity or to a means of individualization may belong to either one person or several persons jointly. An exception to this rule is only a brand name, in respect of which the law does not allow the possibility of joint possession of an exclusive right.

However, despite the fact that the trademark is not named in the law as an exception, the question of the possibility of co-ownership of the exclusive right to it and allocation of shares in the exclusive right has been and remains debatable. This issue was raised and considered by the working group of the Codification Council back in 2014 as part of the development of the Concept of Improving Civil Legislation, but it remained unresolved.

The doctrine has repeatedly expressed the opinion that it is necessary either to explicitly provide in the law the right to jointly own the exclusive right to a trademark, including the allocation of shares in the exclusive right to it, or to explicitly limit such a possibility [2].

The case N A40-210165/2016 [3], considered by the Judicial Board for Economic Disputes of the Supreme Court of the Russian Federation and included in the relevant Review of Judicial Practice of the Supreme Court of the Russian Federation N 4 (2018) [4], is noteworthy. In this dispute, the Supreme Court of the Russian Federation pointed out that paragraph 2 of Article 1229 of the Civil Code of the Russian Federation declares only the general rule of ownership of exclusive intellectual property rights, whereas special rules governing legal relations in the field of trademark use are contained in paragraph 2 of Chapter 76 of the Civil Code of the Russian Federation. As a result of the analysis of special rules, the court concluded that it was impossible to register a trademark in the name of several persons (with the exception of a collective trademark) and, accordingly, the impossibility of joint intellectual property of the trademark.

At the same time, the approach of the Supreme Court of the Russian Federation has not removed the uncertainty regarding the compliance of the legal regulation of relations with the real needs of society, especially in the field of entrepreneurship.

However, it seems that the ice has broken: in November of this year, the Government of the Russian Federation sent for consideration to the State Duma of the Russian Federation Bill No. 479514-8 on amendments to Part four of the Civil Code of the Russian Federation, which, among other things, provides for the possibility of joint ownership of the exclusive right to a trademark and allocation of shares in this right [5].

As noted in the explanatory note to the draft federal law on amendments, the new rules will take into account the specifics of a trademark as an object of intellectual property rights. In particular, they will allow the joint possession of the exclusive right to a trademark, the formation of shares in it, as well as the transfer of a share in the exclusive right to a trademark and the use of the trademark by each of the copyright holders at their own discretion. However, all these actions will be limited in such a way as to prevent misleading consumers about the product or its manufacturer.

Sources: 

1. Civil Code of the Russian Federation (part four) dated 18.12.2006 N 230-FZ // SPS "ConsultantPlus"
2. Article: Annual scientific conference of the Center of Private Law (Bulletin of Civil Law, 2021, N 4) // SPS "ConsultantPlus"
3. Determination of the Judicial Board for Economic Disputes of the Supreme Court of the Russian Federation dated 03.07.2018 N 305-KG 18-2488 in case N A40-210165/2016
4. Review of judicial practice of the Supreme Court of the Russian Federation No. 4 (2018) (approved by the Presidium of the Supreme Court of the Russian Federation on 26.12.2018)
5. http://asozd.duma.gov.ru/bill/479514-8#bh_hron (accessed date: 10.11.2023)