Use of a trademark with changes in the context of Article 1486 of the Civil Code

In accordance with Article 1486 of the Civil Code of the Russian Federation, the legal protection of a trademark may be terminated early in respect of all goods or part of the goods for the individualization of which the trademark is registered, due to the non-use of the trademark continuously for three years.

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

At the same time, paragraph 38 of the Review of Judicial Practice in Cases Related to the Resolution of Disputes on the Protection of Intellectual Property Rights, approved by the Presidium of the Supreme Court of the Russian Federation on 23.09.2015, clarifies that for the purposes of applying the provisions of Article 1486 of the Civil Code of the Russian Federation, not any use of a trademark by the right holder is taken into account, but only the performance of actions provided for by Paragraph 2 of Article 1484 of this Code, directly related to the introduction of goods into civil circulation.

It follows from the systemic interpretation of Articles 1484 and 1486 of the Civil Code of the Russian Federation that the right holder is obliged to use the registered trademark as a condition for retaining the right to it. The mandatory use of the right to a trademark is designed to ensure the real functioning of trademarks in civil circulation. The relevant legal position is formulated in the resolutions of the Presidium of the Supreme Commercial Court of the Russian Federation dated 01.03.2011 No 14503/10 and dated 17.09.2013 No 5793/13.

At the same time, paragraph 2 of the above article establishes the obligation of the right holder to use the trademark exactly in the form in which it was registered with the Federal Service for Intellectual Property, or with a change in its individual elements, which does not change the essence of the trademark and does not limit the protection granted to him.

The question of whether the changes made by the right holder affected the essence of the disputed trademark - whether it remained recognizable (distinguishable) for ordinary consumers of the relevant product - is a matter of fact, which is established by the court based on the results of a comprehensive analysis of the registered and used designation.

Since the assessment of the significance of the changes made by the right holder to the trademark is a matter of fact and is evaluated by the court independently according to its inner conviction, it is necessary to consider the judicial practice on this issue.

What does judicial practice say?

In paragraph 164 of Resolution No. 10 dated 23.04.2019 "On the Application of Part Four of the Civil Code of the Russian Federation", the Plenum of the Supreme Court of the Russian Federation stated that when using a designation registered as a trademark with a change in individual elements, the court must assess the presence or absence of similarity between the trademark and the designation used, and the perception by consumers of the designation used as the same trademark, as well as the impact of changes on the essence of the trademark as a result of such use.

The Intellectual Property Court in its ruling dated 30.04.2021 in case No SIP-522/2020 noted that in order to assess the admissibility of making changes based on the general rule, it is necessary to establish whether such changes affect the perception of the claimed designation as a whole or its main elements.

Clause 10 of the Overview of Judicial Practice of the Intellectual Property Court on the Determination of the Materiality of Changes in Trademarks (Designations), approved by the Resolution of the Presidium of the Intellectual Property Court dated 26.07.2024 No SP-22/15, states that since the application of Clause 2 of Article 1486 of the Civil Code of the Russian Federation does not create a new exclusive right to the designation used in the modified form, and the provisions of this rule are aimed at preserving the previously arisen exclusive right of a particular person, the court may recognize the fact of use of a trademark not only in the cases specified in paragraphs 8 and 9 of this Overview, but also in other cases, taking into account the use of dominant and strong elements of the trademark.

According to subparagraph "c" of paragraph 2 of Article 5 of the Paris Convention for the Protection of Industrial Property of 20.03.1883, the use of a trademark by its owner in a form that differs from that registered in any of the countries of the Union only in certain elements that do not change the distinctive character of the mark, does not entail the invalidation of the registration and does not limit the protection granted to the mark.

Consequently, this provision allows for slight differences between the form in which the mark is registered and the form in which it is used, as well as differences from the form in which the mark was first registered. At the same time, a prerequisite for the legal protection of a trademark is to allow the use of only such differences that do not change the characteristic features of the trademark (Resolution of the Presidium of the Intellectual Property Rights Court dated 31.07.2019 in case No SIP-311/2018).

The Presidium of the Intellectual Property Rights Court has repeatedly noted in its rulings dated 29.09.2017 in case No SIP-666/2016, dated 22.08.2019 in case No SIP-883/2018, that when comparing the designations used by the right holder for the individualization of goods and services, and the designation that has been granted legal protection, the court is obliged to take into account that the conclusion about the use of the designation with minor changes should be based on the perception of non-individual elements, and the trademark as a whole (general impression) (decisions of the presidium).

Changes to a trademark are recognized as significant if they significantly change the perception of the designation as a whole or its main (i.e., occupying a dominant position and affecting the perception of the designation as a whole) elements (Resolutions of the Presidium of the Intellectual Property Court dated 20.05.2020 in case No SIP-762/2019).

An analysis of this provision allows us to conclude that the use of a trademark in a significantly changed form (type of font, verbal element, the presence of figurative and unprotected elements), i.e. in a form that changes its distinctiveness, is not the use of a trademark within the meaning of the provisions of Article 1486 of the Civil Code of the Russian Federation.

At the same time, the similarity of the actually used designation and the registered trademark for the purposes of application of Clause 2 of Article 1486 of the Civil Code of the Russian Federation is assessed on the basis of their strong elements of analgia with the approach specified in Clause 162 of Resolution No 10.

In order to establish the use of a trademark with minor changes, the court of first instance must first determine the strong elements of the specific disputed trademark and the specific designations used, and then make a proper comparison between them, in which case such strong elements must be identical or to a very high degree of similarity (Resolution of the Presidium of the Intellectual Property Court dated 30.07.2021 in case No SIP-555/2020).

In accordance with the preamble of the Overview No SP-22/15, changes to the claimed designation are recognized as significant if they significantly change the perception of the designation as a whole or its main (i.e., occupying a dominant position and influencing the perception of the designation as a whole) elements.

Such changes, in particular, include:

• inclusion in the claimed designation or exclusion from it of a dominant verbal or pictorial element;
• phonetic or semantic change of the main verbal element;
• a graphic or semantic change in the main pictorial element or a combination of colors that affects the perception of the designation.

Thus, for example, based on the current judicial practice, the use of a designation in another language changes the essence of a trademark within the meaning of the provisions of Clause 2 of Article 1486 of the Civil Code of the Russian Federation, in connection with which the individualization of goods (services) by a designation that is a transliteration of registered trademarks does not confirm the fact of the use of such marks in relation to Article 1486 of the Civil Code of the Russian Federation, since the writing of this designation in letters of a different alphabet significantly changes its perception (Resolutions of the Presidium of the Intellectual Property Rights Court dated 06.09.2023 in case No SIP-1079/2022, dated 07.02.2022 in case No SIP-1092/2020, dated 06.12.2021 in case No SIP-880/2020, dated 21.05.2018 in case No SIP-335/2017, dated 06.09.2023 in case No SIP-1079/2022, dated 07.02.2022 in case No SIP-1092/2020, dated 06.12.2021 in case No SIP-880/2020, dated 21.05.2018 in case No SIP-335/2017).

Another example of a significant change in a registered trademark may be the use of one instead of two strong elements of such a trademark, which cannot be recognized as its use within the meaning of the provisions of paragraph 2 of Article 1486 of the Civil Code of the Russian Federation, since such changes change the essence of the trademark (Resolution of the Presidium of the Intellectual Property Court dated 16.11.2018 in case No SIP-269/2018).

The use of a designation that is part of a trademark can be equated to the use of a trademark only if the difference between the trademark in the form in which it is registered and the designation used by a person and which is part of the trademark does not constitute the distinctive character of the mark (Ruling of the Supreme Court of the Russian Federation dated 01.12.2023 in case No A43-26747/2021).

At the same time, it should be borne in mind that the preamble of the Review No SP-22/15 clarifies that the provisions of Article 1486 of the Civil Code of the Russian Federation take into account the fact that ordinary consumers have an average memory, remember trademarks not accurately, but more or less reliably (a similar approach is reflected in paragraph 2.464 of the WIPO Intellectual Property Handbook), rely on the general impression of the mark, seen earlier, while the consumer, as a rule, remembers the distinctive elements of the mark (Ruling of the Supreme Court of the Russian Federation dated 01.12.2023 in case No A43-26747/2021), and therefore, individual changes may not affect the perception of a particular designation as the same trademark.

Summing up, it should be noted that based on the needs of the market economy and efficient business, the legislator has provided the right holder with the opportunity to change the trademark previously registered by him when individualizing the relevant goods and/or services, however, in order to maintain a balance of public and private interests, he limited such a possibility to a small degree of such change, which should not lead to a decrease in the recognition of the designation among consumers precisely in the as an initially registered trademark.