Well-known Trademark in Cases of Early Termination of the Legal Protection of Trademarks due to Non-use

Article 1486 of the Civil Code of the Russian Federation provides for the right of an interested person to terminate the legal protection of a trademark in respect of all goods or part of goods for the individualization of which it is registered, if the right holder has not taken actions to use it without valid reasons within three years from the date of state registration of the means of individualization.

Consequently, having established the possibility of early termination of registration of a trademark in connection with its non-use within a certain period, the legislator considers it as an antimonopoly tool, depriving the right holder of a legal monopoly (exclusive right) in relation to the designation registered by him in accordance with the established procedure (Ruling of the Constitutional Court of the Russian Federation of 02.10.2003 No 393-O).

In view of the long-term presence of the said antitrust instrument in the Civil Code of the Russian Federation, a fairly stable practice has developed on many issues arising in the framework of consideration of a case with its application, especially with the participation of "ordinary" trademarks. Nevertheless, interesting approaches can be found in cases of this category, where a well-known trademark is mentioned, at least due to the specifics of its legal protection, some of which will be considered in this article.

The presence of a well-known trademark on the side of the plaintiff

The plaintiff's possession of a well-known trademark confusingly similar to the disputed trademark of the defendant may be one of the circumstances evidencing the plaintiff's interest in the early termination of the legal protection of such a trademark.

As it is known, a person whose rights and legitimate interests are affected by the fact of the existence of legal protection of the relevant trademark may be recognized as interested in the termination of the legal protection of a trademark.

Consequently, due to the extremely high degree of distinctiveness of a well-known trademark, a disputed trademark that includes a confusingly similar verbal element can cause the Russian consumer to believe that the compared designations belong to the same enterprise or come from the same commercial source, causing the emergence of an association with the plaintiff and misleading consumers. Accordingly, infringing not only on the private interests of the owner of a well-known trademark, but also on the public interests of Russian consumers.

The presence of a well-known trademark was repeatedly taken into account by the courts when establishing the fact of the plaintiff's interest in the early termination of the legal protection of the trademark.

For example, in its decision dated 14.09.2015 in case No SIP-328/2015, the Intellectual Property Court took into account that the plaintiff is the owner of the rights to a well-known trademark, the legal protection of which, in accordance with paragraph 3 of Article 1508 of the Civil Code of the Russian Federation, extends to goods that are not homogeneous with those in respect of which it is recognized as well-known, if the use of this trademark by another person in relation to these goods will be associated by consumers with the owner of the exclusive rights to a well-known trademark and may infringe on the legitimate interests of such owner, as a result of which it recognized the plaintiff as interested.

In another decision dated 08.02.2022 in the case No SIP-1153/2021, the Intellectual Property Court noted that the plaintiff is the owner of a series of trademarks, among which there was also a well-known trademark, which were registered in relation to goods of the same kind/identical to the goods for which the defendant's trademarks were registered, as a result of which it recognized the plaintiff as interested.

In its decision dated 27.12.2022 in case No SIP-884/2022, the Intellectual Property Court took into account that in order to confirm the existence of an interest in the early termination of the legal protection of the disputed trademark, the plaintiff submitted, among other things, a certificate for a well-known trademark, as a result of which it recognized the plaintiff as interested.

It is interesting to note that in judicial practice there are cases where the courts take the position that the disputed trademark of the defendant will cause associations with a well-known trademark and its right holder, regardless of the product on which it will be placed (i.e. when marking any product with it).

Thus, in the decision dated 23.12.2022 in the case No SIP-821/2022, the Intellectual Property Court indicated that the wide knowledge of the consumer of the trademark [of the plaintiff] is confirmed by its recognition as well-known in accordance with the procedure established by law, therefore, consumers may associate any goods and services marked with this designation with the owner of the exclusive right to a well-known trademark.

In another decision dated 13.03.2024 in case No SIP-1163/2023, the Intellectual Property Court pointed out that Rospatent correctly established that, due to the well-known trademark with a high degree of distinctiveness, the use by the defendant of the designation in the application filed by him may cause the Russian consumer to believe that the compared designations belong to the same enterprise or come from the same commercial source. regardless of the product on which it is placed, due to which it will violate the exclusive right to a well-known trademark.

Despite the fact that these cases were considered in relation to the invalidation of the decision of Rospatent, we believe that the position regarding the extension of the legal protection of a well-known trademark to heterogeneous goods is also relevant for cases of early termination of trademarks due to non-use.

The presence of a well-known trademark on the side of the defendant

In cases of early termination of the legal protection of trademarks due to non-use, the presence of a well-known trademark on the side of the defendant may also affect the conclusions of the court when considering the relevant case. 

First of all, attention should be paid to the legal position set forth in the second paragraph of paragraph 166 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated 23.04.2019 No 10 "On the Application of Part Four of the Civil Code of the Russian Federation", according to which, when establishing the circumstances of the use of the disputed trademark, the homogeneity of goods and services is not taken into account, unless the wide popularity of this mark is proven. If the trademark is used for individualization of specific goods and in relation to these goods it is widely known, then legal protection is subject to leaving in force in relation to goods similar to those for the individualization of which the trademark is used and widely known.

In this case, the wide popularity of trademarks must be proven in relation to goods and services similar to those in respect of which the trademark is not actually used, in such a way that the wide popularity of the trademark, when used in relation to specific goods, extends in the eyes of consumers to other goods in respect of which the trademark is not used.

A similar legal position is presented in the decision of the Intellectual Property Court dated 09.12.2019 in case No SIP-372/2018, dated 26.10.2022 in case No SIP-177/2021, dated 13.10.2023 in case No SIP-671/2023, etc.

At the same time, since the concept of a well-known trademark is directly related to wide popularity, when proving the use of a trademark by the defendant in cases of early termination, the court may take into account the fact of inclusion in it of a designation recognized in the Russian Federation as a well-known trademark, given that the well-known trademark is established on the basis of evidence of its active use and familiarity with consumers for previous periods. if they include a disputed three-year period (Resolution of the Presidium of the Intellectual Property Court dated 21.07.2022 in case No SIP-942/2021).

Meanwhile, when it comes to assessing the plaintiff's interest, the right holder of the disputed trademarks has the right to an undisputed well-known trademark is not a circumstance that is subject to investigation and accounting, which was drawn to the attention of the Presidium of the Intellectual Property Court in its ruling dated 20.10.2023 in case No SIP-888/2022.

Finally, a special regime of legal protection of a well-known trademark may be important for its right holder, in cases where such a well-known trademark itself is subject to early termination.

Thus, the court may qualify the actions of the plaintiff on the early termination of the legal protection of such a trademark as unfair and abuse of right, if it establishes that the deprivation of such a trademark of legal protection (even in part) for the purpose of subsequent use of this designation by other persons will contribute to misleading consumers about the manufacturer of the goods, as well as parasitizing on the popularity of such a trademark and its reputation. That is, the extraction of unjustified advantages of the plaintiff in the conduct of business activities.

As noted in the ruling of the Supreme Court of the Russian Federation dated 11.01.2016 in case No SIP-530/2014, such circumstances are grounds for refusing to satisfy the claims for early termination of the legal protection of a trademark, which establishes the protection of a well-known designation with reference to Article 10 of the Civil Code of the Russian Federation and Article 10.bis of the Convention for the Protection of Industrial Property concluded in Paris dated 20.03.1883.

This position was also expressed in the resolutions of the Presidium of the Intellectual Property Court dated 18.01.2016 in case No SIP-299/2015, dated 10.08.2022 in case No IPC-932/2021.

Summing up, it should be noted that the presence of an exclusive right to a well-known trademark may present certain advantages for both the plaintiff and the defendant, which can be used within the legal framework.