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Ekaterina Yudina

Ekaterina Yudina

Lawyer

Office: Russia

Ekaterina graduated from Financial University under the Government of the Russian Federation in 2020 with a bachelor's degree in jurisprudence.


Ekaterina has been working in Zuykov and partners since 2020 and is in charge of:

  • performing of the lawyer’s assignments;
  • carrying on correspondence with clients;
  • preparation and filing for registration of license and sub-license agreements, agreements on the alienation of the exclusive right;
  • preparation of agreements on the amendment and termination of the above-mentioned contracts.


Articles

Use of a modified trademark
To run a successful business, you need to sense changes in consumer needs and adapt to them in a timely manner. An important component of success in the market is the external attractiveness of the product and/or service offered, as well as their labeling. The brand image is formed through adaptation to trends in external design, which is directly related to the trademark used by the brand. In this regard, many companies and entrepreneurs are thinking about using an already registered trademark that is familiar to consumers, with changes made to its external design. But how legal is this?According to paragraph 2 of Art. 1486 of the Civil Code of the Russian Federation, the use of a trademark is recognized as its use with changes in individual elements that do not change the essence of the trademark and do not limit the protection granted to the trademark.As a rule, the above rule applies if a third party has violated the exclusive right of the registration owner through the use of a similar designation, however, Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 N 10 “On the application of part four of the Civil Code of the Russian Federation” explains that when using a designation registered as a trademark, with changes in individual elements, the court must assess the presence or absence of similarity between the trademark and the designation used, 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 question of whether the changes made by the copyright holder affected the essence of the disputed trademark - whether it remained recognizable (distinctive) to ordinary consumers of the relevant product - is a question of fact, which is established by the court based on the results of a comprehensive analysis of the registered and used designation.It follows from this that it is the copyright holder who should be primarily interested in the legal use of the “updated” designation. The legislator does not prevent minor changes and allows the copyright holder to deviate from the registered designation. However, the legislator does not define the criteria for insignificance. In other words, using a modified trademark is possible, but only with caution.What should a bona fide copyright holder who has decided to change the style, but does not want to go through the long-term procedure of registering a new designation, do? In this case, it is possible to send a corresponding petition to Rospatent with a request to make changes to the registered designation. The original image, which has already been registered, as well as a new version of the trademark must be presented to the expert for review.Elements occupying a dominant position will play a significant role. Their changes may affect the essence of the trademark, and therefore registration may not take place. At the same time, it is recommended to first seek advice from experts in the field of trademark registration; they will help outline the prospects for registering such changes and, if necessary, adjust the new design of the mark so that it is registered. The number of the mark, its registration date and validity period will remain unchanged; whether the old trademark will take on a new appearance depends on the will of the expert considering the application, as well as on the convincingness of the arguments of the person filing such a petition for changes. After all, one of the main tasks of a trademark is to identify a product and/or service and remain recognizable in the eyes of the consumer without violating the rights of third parties.If the elements proposed by the copyright holder modify the trademark so much that it loses its essence, but the person needs to use the designation in a new design, it will still be necessary to submit such a designation for registration. However, this option is not forced, because by submitting a new designation for registration, a person can expand the list of goods and/or services relative to an already registered designation, which can also be useful for the brand. The legislator does not provide for amendments to expand the list of goods and/or services of a registered trademark.If the legislator allows the use of a mark with changes in individual elements, then is such use acceptable by the licensee? According to Art. 1236 of the Civil Code of the Russian Federation, the owner of the exclusive right to the result of intellectual activity or to a means of individualization (licensor) grants or undertakes to provide the other party (licensee) with the right to use such result or such means within the limits provided for by the contract. In accordance with Art. 1232 Civil Code of the Russian Federation, exclusive right to the result of intellectual activity or a means of individualization is recognized and protected subject to state registration of such a result or such means. From the above it follows that the licensor can grant the right to use only the trademark that has already been registered by Rospatent. At times, a licensee who has been granted the right to use may deviate from using the mark in the form in which it is registered and begin to use the trademark in any form. However, such use is unacceptable from the point of view of law due to the fact that the licensee goes beyond the rights granted to him by the agreement.But can the copyright holder himself grant the right to use a modified trademark, the changes of which are not registered with Rospatent? Many rights holders “allow” their licensees to use the mark without individual elements and even in a different color design, stipulating in the agreement what changes the trademark can be used with. However, such an expression of will may not always be registered. Rospatent may consider such a provision in the contract as exceeding the limits of legal protection and ask the copyright holder to change the provision. Licensors who allow the use of a modified trademark under a contract must be sure that such a designation will remain recognizable in the eyes of the consumer and will not change the essence of the trademark.Based on the above, it should be concluded that any changes regarding the external execution of a trademark should be registered with Rospatent. It is also not recommended to exceed the limits of the legal protection provided. Timely compliance with these simple rules will help maintain your current registration under protection.
Architectural object in the right of intellectual property
The entire history of the development of the state and human society was also interested in the legal regulation of the surrounding objects. Many factors contribute to the development of society, the improvement of human living conditions, including living conditions and habitats. In this article, an architectural object will be considered as an object of intellectual property rights.An architectural object is defined as a building, structure, complex of buildings and structures, their interior, objects of improvement, landscape or gardening art, created on the basis of an architectural project - Art. 2 of the Federal Law of November 17, 1995 No. 169-FZ (as amended on July 19, 2011) "On Architectural Activities in the Russian Federation" (hereinafter - the Federal Law "On Architectural Activities in the Russian Federation"). Based on this definition, we can conclude that an architectural object means not only the created structures, but also the documentation that is primary in the implementation of the project, containing architectural solutions that comprehensively take into account social, economic, functional, engineering, technical, fire, sanitary and epidemiological, environmental, architectural, artistic and other requirements for the object in the amount necessary for the development of documentation for the construction of objects in the design of which the participation of an architect is required - Art. 2 of the Federal Law "On architectural activity in the Russian Federation". It should be emphasized that the documentation containing architectural solutions, and not all documents related to construction objects, acts as an architectural object.When determining the methods of legal protection, it is necessary to determine which of the institutions of law the architectural object will relate to. According to the provisions of Art. 1259 of the Civil Code of the Russian Federation, works of architecture, urban planning and gardening art, including in the form of projects, drawings, images and layouts, are objects of copyright.In accordance with paragraph 4 of Art. 1259 of the Civil Code of the Russian Federation , registration of a work or compliance with any other formalities is not required for the emergence, exercise and protection of copyright , however, the author of the work, at his own request, can carry out the deposit procedure. As a rule, the deposit of a work is carried out in order to provide additional evidence of authorship in litigation. The work is registered in special registers with the subsequent issuance of a certificate of deposit.One of the ways to use copyright in a work in accordance with the provisions of paragraph 2 of Art. 1270 of the Civil Code of the Russian Federation stands for the practical implementation of an architectural, design, urban planning or landscape gardening project; and with regard to documentation , the reproduction of the work <…>; distribution of the work by sale or other alienation of its original or copies; public display of the work; import of the original or copies of the work; processing is there.As a rule, the customer turns to the architect for the practical implementation of the project; in this case, the relationship between the parties is subject to settlement by concluding an author's order agreement or an employment contract. In accordance with paragraph 2 of Art. 1288 of the Civil Code of the Russian Federation , an author's order agreement may provide for the alienation to the customer of the exclusive right to a work that should be created by the author, or the granting to the customer of the right to use this work within the limits established by the agreement. It should be noted that an employee work is created under an employment contract, and in accordance with paragraph 2 of Art. 1295 of the Civil Code of the Russian Federation, the exclusive right to an employee work belongs to the employer, unless otherwise provided by the labor or civil law contract between the employer and the author. In other words, it is assumed that under the concluded employment contract, exclusive rights to architectural objects belong to the customer (unless otherwise provided), while the author's order agreement provides the architect with the opportunity to dispose of exclusive rights through the conclusion of license agreements or an agreement on the alienation of exclusive rights.When alienating exclusive rights, the parties must be guided by the provisions of the Civil Code on agreements on alienation. Since an architectural object, as an object of copyright, is not subject to state registration, accordingly, the alienation of the exclusive right to an architectural object is not registered. It should be emphasized that the right of authorship, the right to a name and other personal non-property rights of the author are inalienable and non-transferable. Waiver of these rights is void. Authorship and the name of the author are protected indefinitely - paragraph 2 of Art. 1228 of the Civil Code of the Russian Federation.Despite the direct reference in the law to the institution of copyright, it should also be noted that an architectural object can be protected using the mechanisms used in the field of patent law. In other words, the owner of exclusive rights to a work can register an architectural object as an invention and obtain a patent for it. An invention is granted legal protection if it is new, has an inventive step and is industrially applicable - paragraph 1 of Art. 1350 of the Civil Code of the Russian Federation. An example is patent for invention No. 2632793. As indicated in the abstract to the invention, the invention relates to the field of construction of mobile buildings transformable into the volume of a transport container. Patenting architectural objects expands the ways of protecting exclusive rights, in addition, the right holder has the opportunity to issue licenses for granting the right to use the result of intellectual activity. The legal relations that have arisen between the licensor and the licensee will be governed by the provisions of the Civil Code on the license agreement. In this case, when an architectural object is registered as a patent, the contracts confirming the disposal of the exclusive right must be transferred to the authorized body in order to register the said disposal of the exclusive right.In addition to the methods of disposing of exclusive rights listed in the Civil Code, an architect has the right to take part in the process of bringing an architectural project to life. The rights of an architect are listed in Art. 12 of the Federal Law “On Architectural Activities in the Russian Federation” and include the right to request and receive from the relevant authorities an architectural and planning task, other information and source documents <…>; protect architectural solutions agreed with the customer (developer) during their examination and consideration by the relevant authorities; participate in the development of all sections of documentation for construction <…>; involve on a contractual basis in the development of documentation for the construction of the necessary assistants, consultants and technical workers < ...>; represent and protect the interests of the customer (developer) on his behalf when concluding a contract for the construction of an architectural object; assist in the organization or conduct of tenders (auctions or competitions) for the conclusion of construction contracts ; carry out architectural supervision <…>; take part in the acceptance of an architectural object for operation or, on behalf of the customer (developer), be his responsible representative when accepting the specified object for operation ; consult on investment, construction and operation of architectural objects, as well as perform other functions of the customer (developer).Based on the provisions of the Civil Code on objects of copyright, it should be noted that an architectural object must be an independent result of the author's creative work - paragraph 7 of Art. 1259 of the Civil Code of the Russian Federation. As a rule, the authors really independently develop architectural objects, due to the complexity of their implementation in the material world, these objects require an individual approach from the project developers, but we must not forget that creative activity gives rise to the formation of an individual style. Style in architecture is included in the general concept of style as an artistic worldview, covering all aspects of the art and culture of society in certain conditions of its social and economic development. In the field of architecture, which represents one of the spheres of material production, Style acts as a unity of ideological, artistic, functional and constructive content. Style is formed on the basis of certain conditions for the development of society in a particular time period, in conjunction with the ideological and artistic perception of the world around the author. The law does not define such a concept as the author's style, in this regard, we consider it necessary to pay attention to the fact that the developed style of the author, especially if it is recognizable, can be copied by other persons. The closest concept from the legal sphere to the definition of style can be considered design, however, in our opinion, the concept of design is still narrowly focused. The object of design can be an already embodied building, structure, complex of buildings and structures, their interior, objects of improvement, landscape or garden art , that is, a completed construction object, while the style covers all architectural objects, starting with the relevant documentation.Proceeding from the foregoing, it can be concluded that despite the sufficient number of rules governing legal relations relating to architectural objects, there are currently many issues that require more thorough theoretical and practical study.
Features of the alienation of the exclusive right in relation to an international patent for an industrial design in Russia
One of the ways to dispose of exclusive rights is their alienation. It is the transfer of rights in relation to the object to another person in full. Under an agreement on the alienation of an exclusive right, one party (right holder) transfers or undertakes to transfer its exclusive right to the result of intellectual activity or to a means of individualization in full to the other party (acquirer) - clause 1 of Art. 1234 Civil Code of the Russian Federation. In accordance with the norms of Russian law, it is necessary to conclude an alienation agreement in writing in order to avoid its invalidity. In addition, the transfer of rights is subject to state registration - in accordance with paragraph 2 of Art. 1234 of the Civil Code of the Russian Federation.The Civil Code provides for a rule governing the relationship between the right holder and the acquirer of the exclusive right to an invention, utility model or industrial design - Art. 1365 of the Civil Code of the Russian Federation.The condition for registering a change in ownership also applies to international patents for industrial designs, however, in this case, the party submitting an application for registration of alienation must be guided by international legal acts, as well as the regulations established by the World Intellectual Property Organization. Registration is carried out at the WIPO Office, one of the Contracting Parties sends a special completed form DM/2. After passing the verification, in case of a positive decision, information about the change in the right holder is reflected in the International Register. Also, updated information on the international patent for an industrial design will be reflected in the International Designs Bulletin. The provision of an agreement is not required, however, the registration of the alienation of rights has its own characteristics.When submitting Form DM/2 to the Registrar, Contracting Parties should be aware of the restrictions that apply in some countries: in accordance with Art. 16(2) of the Geneva Act 1999, the recording of a change in ownership of an international registration in the International Register has the same effect as if that recording had been made in the register of the Office of each Contracting Party concerned. In doing so, account must be taken of the fact that any Contracting Party may, in a declaration addressed to the Director General, notify that the record of the change in ownership of an international registration has no effect in that Contracting Party until the declarations or documents listed in such declaration have been received by its Office. The following Contracting Parties have so far made such declarations: Russia, China, Denmark, Jamaica, Mexico, Republic of Korea, United States of America.In accordance with paragraph 6 of Art. 1 of the Federal Law of April 3, 2017 N 55-FZ "On the Ratification of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs", an entry in the International Register on a change in the owner of an international registration of an industrial design will not be valid until its office receives the relevant documents on transfer of rights.Thus, after the form DM/2 is sent to WIPO and after passing the appropriate verification, the change of the right holder in respect of an international patent for an industrial design will be made, however, in the Russian Federation, the transfer of an exclusive right will be recognized as carried out only if an additional condition is met: one of the Contracting Parties must submit to Rospatent a set of documents confirming the transfer of rights. In accordance with paragraph 3 of Art. 1232 of the Civil Code of the Russian Federation, supporting documents can be: a notice signed by the parties to the contract on the disposal of the exclusive right or an extract from the contract certified by a notary or the contract itself. Only after sending the relevant documents, the disposal of the right will be recognized as valid.
Works of art as objects of design in intellectual property law
The concept of "work of art" is not disclosed in Russian legislation and doctrines, however, we can try to highlight its main features to reveal the essence in order to determine the further way of interacting with the object.The legislator places a "work of art" in the list of objects of copyright, given in paragraph 1 of Art. 1259 of the Civil Code of the Russian Federation - objects of copyright are works of science, literature and art, regardless of the merits and purpose of the work, as well as the way it is expressed: works of painting, sculpture, graphics, design, graphic stories, comics and other works of fine art. Design works are included in the list of objects of copyright. In patent law, the concept of "work of art" does not occur at all, however, the product can form the basis of an industrial design, which will be discussed later.To determine the protection mechanisms, it is necessary to determine the area of law to which the selected object will relate. Without a clear understanding of the definition, it will be impossible to choose a further method of protection.In our opinion, in order to define the concept of "work of art", one should first of all interpret the meaning of the word "work". A work in copyright is understood as such a manifestation of the intellect of a person, where a thought is developed, clothed in an accessible form for perception, which has sufficient originality and can be reproduced, communicated to the public and processed. The creative product must be original, new, not known from the state of the art. (The concept of "prior art" is used when considering a design object as a patent for an industrial design). As a rule, the product of creativity is unique, since each author has his own style, developed on the basis of skills, practice and his own worldview. From this definition, the following features of the work can be distinguished:has a personal, original nature - the work is a product of the mental activity of a particular person, that is, exclusively and uniquely - two or more people will not be able to create exactly the same work;it is a product of processing the non-material – thought – into an objective form that can be perceived by other people;reproducible and recyclable.Based on the definition and features of the concept of a work, it should be noted that ideas, concepts, principles, methods of solving problems, methods, processes, systems, methods, solving technical, organizational or other problems, discoveries, facts, programming languages, geological information about the subsoil are not are objects of copyright and patent law and are not subject to protection - clause 5 of article 1259 of the Civil Code of the Russian Federation. Only the embodiment of ideas is protected.Art is understood as an artistic reflection of reality. It can be expressed in pictorial form, sound (music), in verbal form (fiction), as well as through the synthesis of certain types of art (theater, cinema).Combining together the definitions of "art" and "work", we can interpret the concept of "work of art" as follows: it is an original, unique artistic reflection of reality, expressed in an accessible form for perception and reproduction. The most important properties of a work of art, which distinguish it from the results of mass production, are aesthetic, constructive and artistic properties. A work of art has a non-utilitarian character and is capable of evoking an emotional response.In order for us to consider the areas of legal regulation of works of art, we also need to understand what design is.Based on the definition of the word " design " given in the Oxford Dictionary, design is the activity of creating, designing, planning something. In other words, this is a creative activity to create an object or transform an already created object into an object that is exceptional in its characteristics. As a rule, the design object performs aesthetic and technical functions. For example, a designer dress performs both functions, because it is unique and satisfies the need for aesthetic pleasure, as well as practical - it can be used in everyday life, satisfying a person's need for clothing. At the same time, a dress embroidered with precious stones, which has many complex additional decorative elements, is unlikely to be practical and, most likely, will be displayed as a work of art.Considering the technical side of the design object, it should be noted that the created object can form the basis of an industrial design, which in the future will be used in mass production.It is important to note that design objects can be such works of art as works of decorative and applied art - the results of creative activity that perform utilitarian and decorative functions, as well as fashion design objects - fashionable clothes, accessories, jewelry.To single out works of art from design objects, it is necessary to correlate the features and find common and unifying points. Design is divided into areas - environmental design, industrial design and graphic design, which have a certain functionality: social, functional-technical, ergonomic, aesthetic. Based on this, we can conclude that theatrical performances, cinema, photography, fiction, as works of art, cannot be objects of design due to their failure to fall into the division of design by direction. However, the design of a literary work, the exterior of the theater, furniture - may well be works of art, which will be the objects of design.The regulation of relations, the subject of which is the object of design, is handled by copyright and patent law. Earlier we touched upon the area of copyright, defining the concept of "work". As mentioned earlier, the legislator does not define the concept of "work of art", he only lists the groups of objects to which it may relate. In patent law, design refers directly to industrial designs: objects of patent rights are the results of intellectual activity in the field of design that meet the requirements for industrial designs established by the Civil Code - Part 1 of Art. 1349 of the Civil Code of the Russian Federation. We consider it necessary to note that the design of a product can form the basis of a trademark or service mark that serves to individualize goods, works or services of legal entities or individual entrepreneurs, however, the legal regulation of means of individualization is different from the regulation of objects of copyright and related rights.The creation of objects of copyright gives rise to the emergence of legal relations at the time of their creation. Exclusive rights to works are recognized for the authors - individuals whose creative work created this work. The author can be a person of any age. It follows from the definition that a prerequisite for recognizing a citizen as an author is the presence of his creative work. Creative work is mental (intellectual) work, mental activity, the result of which is the creation of a work, that is, the consolidation of the stated thought in an objective form. Objective form is recognized not only as a written form, sound recording, video recording, drawing or photograph, but even an oral form - the pronunciation of a work in the presence of the public. The performance of a work on a musical instrument will also be considered its expression in an objective form. It can either be associated or not associated with a material carrier. Moreover, the absence of such signs as novelty, originality and uniqueness does not indicate that the work was not created by creative work. The legislator provides for the possibility of co-authorship when creating a work. It is worth paying attention to Art. 1228 of the Civil Code, which says that in order to be considered an author, a person is obliged to make a personal creative contribution to the creation of the result of intellectual activity. Also, persons who provided only technical, consulting, organizational or material assistance will not be considered authors. In accordance with the provisions of paragraph 1 of Art. 1258 of the Civil Code, co-authors are citizens who have created a work by joint creative work, regardless of whether such a work forms an inseparable whole or consists of parts, each of which has an independent value. Based on the provisions of these articles, we can single out the most important unifying moment - the creative contribution. In other words, the legislator protects any original creative result.After the creation of a work of art by the author, he is endowed with a set of rights that determine the protection of his work in the future. These rights can be divided into two groups:exceptional;personal non-property.The theory of exclusive rights is that the primary authority on the object of creative activity belongs to one person and the law that protects this right prohibits the misuse of intellectual property rights by others, prosecutes violators and provides for sanctions against them. Analyzing the provisions of the following articles: Part 4 of Art. 129, Art. 1229, art. 1233, Art. 1294 of the Civil Code, it should be noted that the property nature of exclusive rights is the right to use, dispose and protect the object.The non-property right includes the right of authorship, the right of the author to a name, the right to inviolability of the work, the right to publish the work. In addition, the author has other rights, including the right to remuneration for an employee's work, the right to recall, the right to follow, the right to access works of fine art. These rights are perpetual and inalienable and maintain the link between the author and the work. Personal non-property copyrights are characterized by inalienability and non-transferability - part 1 of Art. 150 and part 1 of Art. 1265 of the Civil Code.Works subject to copyright must be expressed in an objective manner. Often there is a problem in the relationship between the right to a work and the right to a material medium. It arises from the fact that the work is intangible. The Civil Code determined that intellectual rights do not depend on the ownership of the material medium in which the object is expressed. It should also be noted that the transfer of ownership of a thing does not entail the transfer of ownership of an object - Part 1, Part 2 of Article 1227 of the Civil Code of the Russian Federation.Speaking about protection, it should be noted that objects of copyright are protected in connection with their form, that is, from the moment the results of creativity are created. In order to establish an exclusive right, it is necessary to individualize an object, to separate it from adjacent objects. Difficulties do not arise if the object is unique, has a number of distinctive features characteristic only of it, is inimitable. In this case, copyright arises from the moment the object is created. In the case when a design object is registered as an industrial design, the legislator provides for a certain number of provisions to regulate legal relations. Regulation of legal relations is carried out on the basis of the provisions of Chapter 72 of the Civil Code of the Russian Federation. In accordance with paragraph 2 of Art. 1345 of the Civil Code of the Russian Federation, the author of an invention, utility model or industrial design has the exclusive right and the right of authorship. The protection of an exclusive right certified by a patent can be carried out only after the state registration of an invention, utility model or industrial design and the issuance of a patent - clause 1 of Article 1363 of the Civil Code of the Russian Federation.Based on legal norms and practical experience of their application, it should be emphasized that works of art are a broad category that includes many results of intellectual activity, including results - design objects. Understanding the concept of "work of art" contributes to a more accurate analysis of design objects from the point of view of law. However, the lack of a legislative definition of the concept makes this process difficult. It is necessary to independently identify the signs of art and work, based on the analysis of different points of view. Only then the definition of a work of art among the general mass of design objects becomes real. We have highlighted the key difference between such works of art in the category of design objects - the material form of expression. The design object is tangible, and can be perceived not only visually, but also tactilely, while such works of art as musical works do not correspond to the general features of design objects and, therefore, cannot be considered as such.