As stated in paragraph 1 of Article 1483 of the Civil Code of the Russian Federation, state registration as trademarks of designations that do not have a distinctive ability or consist only of elements is not allowed:
These elements may be included in the trademark as unprotected elements, if they do not occupy a dominant position in it.
The exclusive right to a trademark is conditioned by the ability to use it in any way that does not contradict the law, including the methods specified in paragraph 2 of Article 1484 of the Civil Code of the Russian Federation, namely:
In order for the use of any designation to be recognized as a violation of the exclusive right to a trademark, it is necessary to establish their identity or confusing similarity.
In view of the foregoing, non-protectable elements included in a trademark are those elements that should be freely used in relation to a particular product/service.
Examples include the following trademarks:
If the court considers a dispute on the protection of the exclusive right to a trademark, the courts, when comparing the designations, are guided by the following.
As stated in paragraph 162 of the Decree of the Plenum of the Supreme Court of the Russian Federation of April 23, 2019 N 10 “On the Application of Part Four of the Civil Code of the Russian Federation” (hereinafter referred to as Decree No. 10), the likelihood of confusion between a trademark and a disputed designation is determined based on the degree of similarity of designations and the degree of homogeneity goods for the specified persons. At the same time, confusion is also possible with a low degree of similarity, but identity (or proximity) of goods or with a low degree of homogeneity of goods, but identity (or a high degree of similarity) of the trademark and the disputed designation.
Establishment of similarity is carried out by the court based on the results of a comparison of the trademark and designation (including graphic, sound and semantic criteria), taking into account the evidence presented by the parties, according to their inner conviction. At the same time, the court takes into account in respect of which elements there is a similarity - strong or weak elements of the trademark and designation. The similarity of only unprotected elements is not taken into account.
Also, to compare the designations, the criteria specified in paragraphs 41-44 of the Order of the Ministry of Economic Development of Russia dated July 20, 2015 No. 482 (Rules No. 482).
At the same time, judicial practice has developed an approach that the difference between unprotected elements of a trademark can be taken into account when establishing the overall impression of the designation and influence the degree of their similarity. Taking into account the influence of unprotected elements of compared designations on the perception of their compositional solutions as a whole contributes to the assessment of the likelihood of their confusion in civil circulation from the point of view of an ordinary consumer and does not lead to an expansion of the scope of legal protection of the respective trademarks (decision of the Presidium of the Intellectual Property Rights Court dated 04.03. No. SIP-344/2020).
Thus, when assessing the defendant's use of a trademark, the court also takes into account unprotected elements, but they are taken into account in combination with other elements, as an assessment of the perception of the average consumer of compositional solutions (comparable designations) as a whole.
If the court establishes the similarity between the compared designations solely on the basis of unprotected elements, then such similarity should not be taken into account and affect the court's conclusion about the similarity of such designations as a whole.
The above is also confirmed by judicial practice: the use of an exclusively unprotected element of a trademark cannot be recognized as an infringement, since unprotected elements cannot be the basis for determining the presence or absence of similarity to the point of confusion of trademarks and cause the threat of their confusion to consumers. A similar legal approach is determined by the highest court in the ruling of the Supreme Court of the Russian Federation of December 12, 2014 N 301-ES14-1129.
As the Supreme Court of the Russian Federation pointed out in the above definition, unprotected elements of a trademark cannot be the basis for determining the presence or absence of similarity to the point of confusion of a trademark and cause the threat of their confusion by consumers.
Otherwise, it would mean expanding the scope of legal protection of a trademark containing such unprotected elements, which would make it meaningless to direct an administrative body to disclaim them , and would also harm good faith economic relations.
The above circumstances must be taken into account when applying to the court for protection of the exclusive right to a trademark that includes unprotected elements.