Trademark use in advertising in Russia
Advertising plays an important role in promoting goods and services. It is difficult to imagine an advertisement that would not use a designation that serves to individualize goods, work performed or services provided. In other words, the attention of the consumer is increasingly focused on the trademark or service mark. In addition, the Information Letter of the Presidium of the Supreme Arbitration Court of the Russian Federation of December 25, 1998 No. 37 states that in order to maintain interest in the product, it is not necessary to show the product itself, but rather the image of the distinctive elements (including the trademark) that were used in advertising this product. Let us consider in more detail in which cases the use of a trademark (service mark) in advertising is legal, and in which cases liability may be provided for this action.
When considering this issue, it is necessary to refer not only to the law on intellectual property, but also to the law on advertising.
So, the general requirement for advertising is established by Art. 5 of the Federal Law of March 13, 2006 No. 38-FZ "On Advertising" (hereinafter referred to as the "Law on Advertising"), which describes the criteria for classifying advertising as unfair and unreliable. So, for example, advertising is recognized as unfair if it contains incorrect comparisons of the advertised product with goods in circulation that are produced by other manufacturers or sold by other sellers. Advertising is unreliable when it contains information that does not correspond to reality about the advantages of the advertised product over those produced by other manufacturers or sold by other sellers. In order to protect minors from abuse of their trust and lack of experience, Art. 6 of the Advertising Law also establishes certain restrictions (for example, advertising does not allow discrediting parents and educators, undermining the confidence of minors in them). Art. 7 of the Law on Advertising fixes the objects of advertising, advertising of which is not allowed - narcotic drugs, explosives and materials (with the exception of pyrotechnic products), tobacco, etc.
Violation of the legislation of the Russian Federation on advertising entails liability in accordance with civil law. In addition, persons whose rights and interests have been violated as a result of the dissemination of improper advertising have the right to apply in accordance with the established procedure to a court or arbitration court, including claims for damages, including lost profits, for compensation for harm caused to the health of individuals and (or) property of individuals or legal entities, on compensation for moral damage, on public refutation of unreliable advertising (counter-advertising) (Part 2, Article 38 of the Law on Advertising).
In addition, in Part 2 of Art. 3 of the Federal Law "On the State Language of the Russian Federation" specifies the procedure for using texts in a foreign language in advertising. By virtue of this norm, the use of foreign words and expressions in advertising is allowed if at the same time their identical translation into Russian is present in the advertisement.
In accordance with sub. 5 p. 2 art. 1484 of the Civil Code of the Russian Federation, “The exclusive right to a trademark may be exercised to individualize goods, works or services in respect of which the trademark is registered, in particular by placing the trademark in offers for the sale of goods, about the performance of work, the provision of services, as well as in announcements, on signs and in advertising." Consequently, a person who is the owner of the exclusive right to a trademark may use the trademark in advertising to individualize exactly those goods in respect of which the trademark is registered, without any specific conditions, observing the requirements established by advertising legislation.
Based on par. 3 p. 1 art. 1229 of the Civil Code, “Other persons may not use the corresponding result of intellectual activity or means of individualization without the consent of the right holder, except as provided for by the Civil Code of the Russian Federation. The use of the result of intellectual activity or means of individualization, if such use is carried out without the consent of the copyright holder, is illegal and entails liability established by the Civil Code of the Russian Federation, other laws, except in cases where the use of the result of intellectual activity or means of individualization by persons other than the right holder, without his consent permitted by the Civil Code of the Russian Federation.”. Therefore, as a general rule, a trademark owned by another person cannot be used in advertising without the permission of the trademark owner.
At the same time, the trademark owner may grant the right to use the trademark on the basis of the conclusion of a license agreement or a commercial concession agreement. It is important that, in accordance with Art. 1024 and Art.1489 of the Civil Code, one of the essential conditions of these agreements is the definition of methods of use. If a person intends to use someone else's trademark in advertising, it is necessary to determine the method of use as placement of a trademark in offers to sell goods, perform work, provide services, as well as in advertisements, on signs and in advertising.
In addition, the Ruling of the Intellectual Property Rights Court dated April 19, 2016 No. C01-230/2016 in case No. A50-17408/2015 states that the provisions of the current legislation do not restrict the right holder in the ability to dispose of his exclusive right by providing another person with a simple consent to use trademark without state registration of granting the right to use it (clause 1 of article 1229, clause 3 of article 1484 of the Civil Code of the Russian Federation). Thus, the use of a trademark in advertising can be granted by the copyright holder on the basis of a letter of consent.
In cases where a license agreement or a commercial concession agreement for granting the right to use the trademark in advertising has not been concluded with the trademark owner, and the copyright holder has not provided a letter of consent for such use, the use of the trademark in this case is not allowed.
So, according to paragraph 1 of Art. 1484 of the Civil Code of the Russian Federation, the person in whose name the trademark is registered (right holder) has the exclusive right to use the trademark in any way that does not contradict the law (exclusive right to the trademark). No one has the right to use, without the permission of the right holder, designations similar to his trademark in relation to goods for the individualization of which the trademark is registered, or homogeneous goods, if as a result of such use there is a possibility of confusion (clause 3 of article 1484 of the Civil Code of the Russian Federation).
Art. 1515 of the Civil Code of the Russian Federation provides for liability for the illegal use of a trademark. In particular, paragraphs 2 and 3 of the above article provide that the right holder has the right to demand the withdrawal from circulation and destruction at the expense of the infringer of counterfeit goods, labels, packaging of goods on which an illegally used trademark or a confusingly similar designation is placed. In addition, a person who infringes the exclusive right to a trademark in the performance of work or the provision of services is obliged to remove the trademark or a sign confusingly similar to it from the materials that accompany the performance of such work or the provision of services, including from documentation, advertising, signage.
Among other things, the use of someone else's trademark or a confusingly similar trademark may result in financial losses: compensation for damages on the basis of paragraph 3 of Art. 1252 of the Civil Code of the Russian Federation or the payment of compensation on the basis of sub. 1 p. 4 art. 1515 of the Civil Code of the Russian Federation - in the amount of ten thousand rubles to five million rubles, determined at the discretion of the court.
Thus, in case No. A41-5137/2008, the LOUIS VUITTON MALLETIER company filed a claim to recover monetary compensation from the defendants for the illegal use of a figurative trademark in the form of stylized flowers in a commercial for Sokos juice. The goods (suitcases, bags) with the images of stylized flowers were displayed, confusingly similar to the figurative trademark of the plaintiff, without the consent of the trademark owner. By the decision of the court of appeal, left unchanged by the court of cassation, monetary compensation in the amount of 100,000 rubles each was recovered from four defendants. At the same time, the court noted that the use of suitcases and bags in the commercial could mislead advertising consumers about the advertised product itself and cause an associative array with accessories and plaintiff's goods. In addition, the advertising of any product (including the indirect use of a trademark in advertising) must presuppose the existence of legal grounds for the use of the corresponding trademark.
At the same time, in accordance with Art. 1487 of the Civil Code the use of trademarks in relation to goods put into circulation on the territory of the Russian Federation by the right holder himself or with his consent, is not read as a violation of the exclusive right to a trademark. Thus, in case No. A35-8325/2015, KAMAZ PJC applied to the Kursk Region Arbitration Court to recover compensation for the illegal use of trademarks in the amount of 1,500,000 rubles, motivating the claim by the fact that TD Auto Resource, without the agreement illegally used trademarks in the promotion of automotive parts, which violated the exclusive rights of the KAMAZ company to trademarks. The court, refusing to satisfy the claims, indicated that the indication of the verbal elements “KAMAZ" in the advertising catalog and on the Internet is a way of offering for sale original products introduced into civil circulation with the consent of the trademark owner, and therefore does not may be considered illegal use of these trademarks.
Thus, when creating advertising material, it is necessary to comply not only with the requirements of advertising legislation, but also with the legislation on intellectual property.