When using someone else's trademark in the address bar of the site is not a violation

According to Article 1477 of the Civil Code of the Russian Federation, a trademark, i.e. a designation that serves to individualize goods, is recognized as an exclusive right certified by a trademark certificate.

The exclusive right to use a trademark belongs to the person in whose name the trademark is registered (the right holder). Thus, only the right holder may use or allow other persons to use his trademark in any way that does not contradict the law to individualize homogeneous (identical) goods, works or services in respect of which the trademark is registered (Article 1484 of the Civil Code of the Russian Federation).

In particular, one of the ways to use a trademark is to place it on the Internet, including in a domain name and with other methods of addressing (Clause 5 of Clause 2 of Article 1484 of the Civil Code of the Russian Federation). Such use of a trademark by other persons without the permission of the right holder is considered an infringement and gives the owner of the mark the right to use the following methods of protection:

• to stop actions that violate the right (Clause 2 of Clause 1 of Article 1252 of the Civil Code of the Russian Federation). For example, to demand to stop addressing the violator's website if the violation continues [1];
• to oblige the infringer to compensate for losses (Clause 3 of Clause 1 of Article 1252 of the Civil Code of the Russian Federation) or to recover compensation from him for the illegal use of the mark (Clause 3 of Article 1252 of the Civil Code of the Russian Federation).

Following these rules, the courts of three instances recognized [2] as a violation the use by the defendant of someone else's trademark in the address bar of its website (URL), on which the defendant sold goods similar or identical to the plaintiff's goods, and recovered compensation from the defendant for the illegal use of the mark in the amount of 3,400,000 rubles.

The courts concluded that in this way the defendant used someone else's trademark to identify its company, the website of which consumers could get to when entering a query (keyword) corresponding to the plaintiff's trademark in a search engine. This situation allows consumers to form a false assumption that all goods offered for sale on the defendant's website may belong to the plaintiff or be related to it.

However, the Supreme Court of the Russian Federation (hereinafter referred to as the Supreme Court) considered the conclusions of the lower courts to be premature [3].

First of all, the Supreme Court drew attention to the fact that not every use of a trademark is its use for the purpose of granting legal protection to the mark. Within the meaning of Clause 1 of Article 1477 of the Civil Code of the Russian Federation, the consolidation of the legal protection of a trademark consists in the identification of goods (works, services) produced or provided by legal entities and individual entrepreneurs legal entities or individual entrepreneurs [4].

Thus, the mere mention of a designation included in the scope of legal protection of a trademark is not a qualifying sign of infringement of an exclusive right. 

The Supreme Court noted that in disputes over the illegal use of a trademark, the main criterion is the category of confusion, which violates the associative relationship between the goods (services) and their commercial source. At the same time, actions that are not aimed at individualization of goods and services, as a result of which there is no possibility of confusion of designations, do not violate the exclusive right to the trademark, even if these actions are directly named in Clause 2 of Article 1484 of the Civil Code of the Russian Federation as ways of using the trademark.

It follows from this that the use of verbal elements forming a trademark is not a violation if such use does not reveal the distinctiveness of the designation, does not distinguish one market participant from others and does not create a competitive advantage.

The Supreme Court has formed an important legal approach, according to which the presence of a designation (someone else's trademark) in the address bar of a website where goods similar to the goods of the trademark owner are sold is not an unconditional evidence of the use of the trademark. 

The approach of the Supreme Court is based on the fact that the consumer, focusing on keywords when entering a search query on the Internet, expects to receive the addresses of the most relevant web resources and only after familiarizing himself with the site forms an idea of the activities of its owner. At the same time, the parameters of the address bar do not allow for unambiguous identification of whether a verbal element is mentioned as a means of informing or a means of individualization.

In this regard, in order to recognize the use of a trademark as illegal, the lower courts had to find out the following:

• whether the method of addressing chosen by the defendant is intended to attract buyers in order to promote its own goods (the defendant's intent). The Supreme Court explained that in order to do this, first of all, it is necessary to establish the circumstances under which the disputed designation appeared in the address lines of the site. In this dispute, the appearance of the disputed pages on the defendant's website is dated to the period when the latter legally used the trademark on the basis of a license agreement, and after the termination of the license, removed the trademark from the content of the site visible to the consumer;
• whether consumers may be influenced by the specific content of the pages of the site to believe that the site is owned by or associated with the trademark owner. The Supreme Court pointed out that this is influenced by the degree of consumer awareness of the presence of a designation similar to a trademark in the market for similar goods. Accordingly, the decisive importance for the correct resolution of this dispute was the study of the defendant's arguments about the inaccessibility of the disputed pages of the site to consumers when specifying the search sample of web resources regarding the disputed keyword.

In other words, when making a decision, the courts had to establish the intention of the defendant to take advantage of the reputation of the trademark owner and the risk of misleading consumers, which was not done.

As a result, the Supreme Court of the Russian Federation reversed the acts of the lower courts and remanded the case for a new trial.

Sources:

1. Clause 57, Clause 158 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"
2. Resolution of the Intellectual Property Rights Court dated 10.01.2025 No. S01-1707/2024 in the case No. A45-25305/2023
3. Ruling of the Judicial Chamber for Economic Disputes of the Supreme Court of the Russian Federation dated 03.07.2025 No. 304-ES25-1782 in the case No. A45-25305/2023
4. Clause 157 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"