Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney
Court Clarifies Conditions Under Which Consent to Register Confusingly Similar Trademark on Behalf of a Liquidated Legal Entity May Be Granted
In the course of examination of the designation submitted for registration as a trademark under application No. 2016717886, Rospatent established the presence in the register of a mark confusingly similar and registered in respect of homogeneous goods. As a result, the registration was denied.
In court, the applicant explained that the original owner of the trademark in question no longer existed as a legal entity, as did its successor. Because of the need to distribute the property of the liquidated legal entity, an insolvency administrator was appointed andsent the applicant a letter of consent to register the similar trademark in the name of the successor of the first right holder.
In the first instance, the Court for Intellectual Property Rights (hereinafter the CIP) ruled that such consent is admissible and proves “the existence of a valid will of the right holder to grant appropriate consent to the registration of the disputed designation as a trademark”[i].
However, the CIP Presidium pointed out that by the time the decisions of Rospatent and the CIP had been made, the change of the right holder was not recorded in the register because the transfer of the right without a contract could not be registered.
The CIP stressed that “the exercise of the powers constituting the content of an exclusive right ... is possible ... only under the condition of state registration of the transfer of the right (which at the time of the decision of the court of first instance did not take place)”[ii].
Sergey Zuykov, Managing Partner of Zuykov & Partners, Russian Patent Attorney and Eurasian Patent Attorneycomments:
“In accordance with paragraph 6 of Article 1483 of the Civil Code of the Russian Federation,[iii]the consent of the actual right holder of the similar trademark is required. The law does not limit the form of such consent. In this case, the court of the first instance mistakenly considered proved the agreement between the right holder of a similar trademark and the applicant, and therefore unreasonably applied the explanations of the Resolution of the Plenum of the Supreme Arbitration Court of the Russian Federationdated July 18, 2014 No. 50 that the consent of the right holder for the registration of the trademark, obtained in the course of the trial can also be recognized as appropriate. In the first instance, the CIP considered that the consent given by the insolvency administrator is a basis for cancellation of Rospatent decision, while it is not proper without registration of the reside right transfer”.