Use of a Third Party’s Trademark for Informational Purposes

According to the general rule established by Article 1484 of the Civil Code of the Russian Federation, only the person in whose name the trademark is registered (the right holder) has the right to use a trademark in any way that does not contradict the law. All other persons may use it either with the consent of the right holder, or in cases where the law directly indicates the possibility of use without the appropriate consent. The case permitting the use of a trademark without the permission of the right holder is the exhaustion of the exclusive right to the trademark (Article 1487 of the Civil Code of the Russian Federation).

However, in practice, there are often situations that are not named in the law as exceptions, but allow the use of someone else's trademarks without the consent of their owners. In this article, we will analyze how and when you can use someone else's trademark while remaining within the law.

What is considered the use of a trademark

It is important to understand that the right holder's right to use the trademark in any way that does not contradict the law does not mean a total ban on its use by other persons. As a general rule, this right is limited: firstly, by the purpose of its use - for the individualization of goods, and secondly, by specific groups of goods (classes of the Nice Classification) in respect of which the trademark is registered (Clause 1 of Article 1477, Clause 2 of Article 1484 of the Civil Code of the Russian Federation).

The right holder can individualize goods with the help of a trademark in different ways, for example, place a trademark on goods, including labels and packages, place it in offers for the sale of goods, announcements, on signs, in advertising, etc. (Clause 2 of Article 1484 of the Civil Code of the Russian Federation). The essence of such individualization is to show consumers that goods marked with certain trademarks are directly related to a specific person, such as their manufacturer, official dealer (seller), etc.

Thus, the use of someone else's trademark or a designation similar to it for purposes other than the purpose of individualization of goods, works or services and in the absence of the possibility of confusion of different goods and manufacturers, is not the use of a trademark within the meaning of Article 1484 of the Civil Code of the Russian Federation. Therefore, such use of the designation is not an infringement of trademark rights (see, for example, the Resolution of the Court for Intellectual Property Rights dated 26.04.2023 No. S01-291/2023 in case No. A56-118459/2020).

How to use someone else's trademark without the consent of the copyright holder

The Civil Code of the Russian Federation specifies only some examples of the use of a trademark for its intended purpose, but there are no criteria that allow clearly qualifying the method of use as related to the individualization of goods or not. This state of affairs often leads to disputes on the claims of right holders for the illegal use of trademarks and makes it relevant to the question of which ways of using someone else's trademark are not a violation.

In this regard, the Supreme Court of the Russian Federation clarified that it is not a violation when a trademark is used without the consent of the right holder for information purposes. For example, when using words (including common nouns) registered as verbal trademarks, in the commonly used meaning in written publications, oral speech, etc.

The following situations can be cited as examples of the use of someone else's trademarks for informational (including nominative and comparative) purposes:

• Use of the trademark in news reports, incl. with an illustration of the image;
• Use of trademarks in reference and analytical materials (for example, reviews, ratings of certain types of goods, works, services and/or their manufacturers) (Resolution of the Intellectual Property Rights Court dated 11.07.2023 No. S01-1183/2023 in the case No. A40-124496/2022);
• Use of someone else's trademarks in comparative advertising to distinguish goods, works or services (Resolution of the Federal Commercial Court of the Moscow District dated 06.10.2011 in the case N A40-108056/10-19-956);
• Mention of verbal designations to characterize a product of a certain type, including a description of its properties or as general information about the functional purpose of the product or to describe its appearance (Resolution of the Intellectual Property Rights Court dated 16.05.2025 N S01-401/2025 in the case N A76-8857/2023, Resolution of the Intellectual Property Rights Court dated 18.07.2025 N S01-815/2025 in the case N A22-2191/2024);
• Mentioning a verbal designation as an indication of a well-known method (for example, a method of treatment in psychotherapy, a method of teaching) (Resolution of the Intellectual Property Rights Court dated 19.05.2025 No. С01-480/2025 in the case No. А56-120153/2023).

It is important to take into account that when using someone else's trademarks, you need to act in such a way as not to violate the legitimate interests of copyright holders and third parties. In particular, it should be taken into account that such advertising should be objective, not discredit competitors and not allow incorrect comparisons, and the comparison itself should not create confusion between the advertiser and the competitor or between the trademark and/or the products of the advertiser and the competitor.

In conclusion, it should be noted that when resolving a dispute on the illegal use of a trademark, the courts proceed from the totality of circumstances, taking into account the specific factual composition. Therefore, if you need to use someone else's trademark in one way or another, we recommend that you first consult with professionals who will help you take into account all the nuances and avoid the corresponding claims.