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Arincheva Elena

Trademark Attorney

She received a diploma of the Russian legal Academy of the Ministry of justice of the Russian Federation. Elena is a regular participant and speaker of all-Russian conferences and seminars, devoted to the protection and registration of trademarks. 


Elena has worked with Zuykov and partners LLC since 2011 and specialises in:



Work experience


  • 2008–2009 — secretary of section in the court of General jurisdiction.
  • 2009–2011 — assistant to Patent expert in “Tabella” LLC.


Articles

The use of a trademark in a domain name

Keywords: intellectual property, means of individualization, exclusive rights, trademark, registration of a trademark, protection of the rights to a trademark, domain name, domain disputes, trademark and domain name, use of a trademark in a domain name.

 

In connection with the globalization and peculiarities of the modern information society, the widespread use of computers and the Internet the issue on the protection of the rights to a domain name as a unique means of individualization has become topical. The particular attention in the Russian and foreign practice is paid to finding and maintaining a balance of interests between the owners of domain names and the owners of the intellectual property subject-matters, in particular, trademarks.

The domain name is, in fact, a “website name.” This is a certain symbol (letter-digital) sequence, denoting a website name in the global Internet. Some researchers argue that currently the domain name, in its significance, is approaching to a trademark, a designation that serves to individualize the products of legal entities or individual entrepreneurs. The trademark may be a picture, logo, colour, a three-dimensional form, etc., however, for the purpose of considering the present issue, of course, the word or combined trademarks that consist of words or phrases or contain them along with the figurative elements play a decisive role.

The importance of a domain name in the promotion of products and services of the Russian and foreign manufacturers is universally recognized, however, it is not entrenched at the regulatory level. The issue remains to be topical: what is the correlation of the rights to a trademark and the rights to a domain name? Obviously, the person who has the exclusive rights to a trademark has an indisputable right to use it in the domain name of the website, which belongs to him. However, how is the issue on using in a domain name of the designation identical or confusingly similar to the trademark of another person, without the permission of that person solved?   

Part IV of the Civil Code of the Russian Federation establishes a comprehensive regime for the protection and use of trademarks. Chapter 76 of the Civil Code of the Russian Federation (“The Rights to the Means of Individualization of Legal Entities, Products, Works, Services and Enterprises”) contains exhaustive provisions on the following issues: the concept and kinds of trademarks, the criteria for the protectability and the grounds for the refusal of the state registration, the use of a trademark and the disposal of the exclusive right to a trademark, the entire process of the registration of a trademark, the termination of the exclusive right to a trademark, the protection of the rights to a trademark.

As to a domain name, its regulation is recognized as insufficient.  Thus, according to Paragraph 15 of Article 2 of Federal Law No. 149-FZ “On the Information, Information Technology and the Protection of the Information,” “the domain name is a designation made by symbols which is intended for addressing the websites in the Internet for the purpose of providing access to the information placed in the Internet.” The domain name is a part of the non-material assets of the company.

Unlike trademarks, for the successful registration of which it is necessary that the applied designation complies with numerous conditions of protectability, virtually any word designations expressed in letters and digits can be used in domain names. In addition, if the legal protection of a trademark is carried out strictly on the grounds of the territorial principle (the trademark is protected only in the countries where it is registered), the domain names have an extraterritorial nature: the administrator of a domain name is not actually limited in carrying out his activities.

It should be taken into account that many domain names are registered not for the commercial purposes – they are personal pages and blogs, projects of the public authorities, the information portals, etc. Therefore, the concept of a “domain name” has not a universal character, and the legal regime of such “non-commercial” websites can not be correlated with the legal regime of trademarks.

At the same time, the increasing number of websites and, accordingly, domain names is used and perceived by consumers as a means of individualization due to the widespread popularity of their owners and the products and services they manufacture.

In the issue of determining the status and significance of such “commercial” domain names, it is interesting to mention Resolution of the Presidium of the Supreme Arbitration Court of the Russian Federation No. 1192/00 of 16.01.2001 (the case on the claim for the prohibition of the use of a trademark in the domain name of the page in the Internet): “Modern commercial practice has shown that when choosing domain names for the Internet, the owners of the information resources make a decision to choose the most simple and logical names (a word, a group of letters, etc.) that are usually associated by consumers directly with a particular participant in the economic turnover or with its activities.  Domain names have actually been transformed into a means that performs the function of a trademark, which affords to distinguish respectively the products and services of some legal entities or individuals from the homogeneous products and services of other legal entities or individuals. In addition, the domain names containing trademarks or trade names have a commercial value.”

However, the adoption of this resolution, in fact, has not affected the legal and regulatory framework and the judicial practice. The comprehensive legal regime for a domain name (in contrast to the legal regime of a trademark) has not been entrenched in the Russian legislation so far. As a result, in the event of a collision between the rights of the trademark owner and the domain administrator, the priority will be given to the owner of the exclusive rights to a trademark, and the disputes are settled in the majority of cases in his favor.

Here is how the issue on a collision of the rights to a trademark and a domain name is settled in the legislation.

Article 1484 of the Civil Code of the Russian Federation contains a fundamental provision stating that: “The person in whose name the trademark is registered (the right holder) has an exclusive right to use the trademark in accordance with Article 1229 of this Code in any way that is not contrary to the law (the exclusive right to a trademark), including by the ways specified in Paragraph 2 of this Article. The right holder may dispose of an exclusive right to the trademark.” Accordingly, “No one has the right to use without the permission of the right holder the designations similar to his trademark in respect of the products for the individualization of which the trademark has been registered or homogeneous products, if as a result of such use the possibility of confusion appears.”

In accordance with Paragraph 2 “The exclusive right to a trademark may be exercised for the individualization of products, works or services in respect of which the trademark has been registered, in particular by placing the trademark: ... 5) in the Internet, including in a domain name and with other ways of addressing.”

Obviously, the collision of the rights to a trademark and to a domain name is possible when the issue is about homogeneous products or services. According to the Rospatent's Methodological Recommendations (Methodological Recommendations for Determining the Homogeneity of Products and Services During the Examination of Applications for the State Registration of Trademarks and Service Marks approved by Rospatent Order No. 198 of December 31, 2009), “...When determining the homogeneity of the products, the principal possibility that the consumer will start to perceive these products as belonging to one manufacturer shall be defined. To establish the homogeneity of products, the following circumstances shall be taken into account: in particular, the nature (kind) of products, their consumer properties and the functional purpose (the scope and purpose of the use), the kind of material from which they are made, the complementarity or interchangeability of the products, the conditions for their sale (including the general place of sale, the sale through a retail or wholesale network), the circle of consumers, the traditional or preferential way of using the products and other characteristic features." The special situation is with a well-known trademark, the legal protection of which is also applicable to the products that are not homogeneous to those in respect of which it is recognized as well-known: “... if the use by another person of this trademark in respect of the indicated products is associated by the consumers with the owner of an exclusive right to a well-known trademark and may infringe upon the legitimate interests of such owner” (Article 1508 of the Civil Code of the Russian Federation).

The entrenchment of the indicated principle means, in fact, the priority of the right to a trademark in judicial disputes. However, even prior to the moment, when the use of a trademark in a domain name was recognized as referring to the illegal ways of the use of the trademark, the state bodies and courts had recognized the preferential rights of the trademark owner, including within the framework of the prohibition of an unfair competition. Thus, Article 10-bis of the Paris Convention for the Protection of Industrial Property, states that “In particular, the following shall be prohibited: all actions that are capable by any means of causing confusion with respect to an enterprise, products or industrial or commercial activities of a competitor”: this is also applicable to the use of someone’s trademark in a domain name without the permission of the right holder.

Obviously, the use by the administrator of a domain name of someone’s trademark with the intention to divert the consumers from the product or website of the very right holder, with the purpose of making profit from the reputation of the owner of the trademark, will be recognized illegal and unfair. In addition, many unfair administrators deliberately register such websites for the purpose of their subsequent resale to legitimate trademark owners, who may not want to spend time and money to filing a claim to court and to the protection of their rights. Further, the administrator of a domain name may intentionally place at such website the false or misleading information about the right holder of the trademark and his products, discrediting his reputation.

Of course, when considering the dispute on the illegal use of a trademark in a domain name, the court will take into account various circumstances, for example, whether the owner of the domain name has an unfair intention to make profit from someone’s trademark. The legality of the actions of the administrator of the domain name can be confirmed by the fact that he himself has the rights to the trademark or other intellectual property subject-matters used in the domain name, for example, the company name. Or that he uses someone’s trademark in good faith with the permission of the owner or for non-commercial purposes.

Summing up, it can be said that the domain name is now recognized not only as a means of addressing (a technical way of placing and finding the information in the global Internet), but also as a means of individualization – distinguishing the products and services of a particular manufacturer from a mass of homogeneous products and services of other manufacturers. Some researchers of this issue recognize the domain name to be even as a subject-matter of the exclusive rights, intellectual property. Such form of the use of a trademark, as its use in a domain name (legal or illegal) is recognized by law. However, it is obvious that the legal regimes of a trademark and a domain name are absolutely not homogeneous, unbalanced, and in the event of a dispute between the legal owner of the rights to the registered trademark and the administrator of the domain name containing the designation, which is confusingly similar with this trademark, in case of the homogeneity of products/services the priority will be given in the majority cases for the owner of the trademark.

Peculiarities of making changes in the application and in the certificate for a trademark.

Keywords: intellectual property, means of individualization, exclusive rights, trademark, registration of a trademark, application for a trademark, examination as to form of the application for a trademark, certificate for a trademark, change of a trademark, making changes in a trademark, making changes in the application for a trademark, making changes in the certificate for a trademark

 

The trademark is, in accordance with the Civil Code of the Russian Federation, “a designation used for the individualization of products of legal entities and individual entrepreneurs”. To get exclusive rights to a trademark in Russia, it is necessary to register it at Rospatent. In case of a successful registration, according to a general rule, the legal protection shall be granted to the applied designation in the volume as it is indicated in the application.

However, in practice it often happens that for some reasons related to the changes of the market conditions, marketing activities, the reorganization or change of the company name of the applicant company, the change of its purposes for the registration of a trademark and other factors, it is necessary to make changes in the application or certificate for a trademark – depending on the step of the registration process. In this article, the conditions and procedure for making such changes will be considered.

In accordance with Article 1497 of the Civil Code of the Russian Federation (“The Examination of the Application for a Trademark and Making Changes in the Documents of the Application”), “During carrying out the examination of the application for a trademark, the applicant has the right to supply, clarify or correct the materials of the application materials, including by filing supplementary materials before the decision on it is made. If the supplementary materials contain a list of products not indicated in the application at its filing date or the applied designation of the trademark has been essentially changed, such supplementary materials shall not be accepted for consideration. They shall be drawn up and filed by the applicant as an independent application.” If the decision of the examination has already been made (the decision on the registration has been made or the notification has been sent to the applicant on the results of checking the compliance of the applied designation with the requirements of the legislation), the applicant can make only those changes in the application that relate to the information about the applicant, including in case of the assignment or transfer of the right to the registration of a trademark or due to the change of the company name or the name of the applicant, as well as the correction of obvious and technical errors in the documents of the application.

            When examining the regulatory framework for making changes in the application for a trademark it is necessary to mention the Rospatent Rules (“The Rules of Composing, Filing and Considering the Documents, Which are the Basis for Committing Legally Significant Acts Related to the State Registration of Trademarks, Service Marks ..,” approved by Order of the Ministry of Economic Development and Trade of the Russian Federation of July 20, 2015 No. 482). To make changes it is required to pay an official fee and to send the documents confirming the payment of the documents to Rospatent. The peculiarities of making changes in the application for a trademark depend on which information the applicant wants to change.

            To change the information about the applicant due to the change of the company name (name) or the location (place of residence), the corresponding application shall be filed, to which the copy of a confirming document shall be enclosed for an individual entrepreneur, for example, an extract from the Unified State Register of Individual Entrepreneurs, for a legal entity it shall be an extract from the Unified State Register of Legal Entities, a copy of the Charter, etc., from which the fact of renaming this legal entity, as well as the change of the address, clearly follows.

            If it is necessary to change the information about the applicant, since the rights to the application have been assigned to a third party, the power of attorney confirming the authority of the representative of the successor applicant, the agreement on the assignation of the right to the registration of the trademark to another party (or its certified copy or the extract) must be enclosed to the application.

            It is possible to make changes in the applied designation itself, if they relate to “the individual elements of the trademark without changing its essence.” The changed applied designation shall be enclosed to the application.

            If the applicant intends to change the list of the products, the changed list of products shall be enclosed to the application.

            The applications on making changes in the address for correspondence or on correcting obvious and technical errors in the documents of the application do not require any mandatory enclosures.

It is also possible to make changes into the already registered trademark, even after the certificate has been issued. According to Article 1505 of the Civil Code of the Russian Federation, upon the application of the right holder, the Federal Executive Authority on Intellectual Property (Rospatent) may make changes in the State Register of Trademarks and the issued certificate concerning, inter alia, “... the information on the right holder, his company name, the name, the location or place of residence, the address for correspondence, the changes related to the reduction of the list of the products and services for the individualization of which the trademark has been registered, the changes of the individual elements of the trademark without changing its essence, as well as the changes to correct obvious and technical errors.”

            This procedure is regulated by the Administrative Procedure approved by Order No. 704 of the Ministry of Economic Development and Trade of the Russian Federation of September 30, 2015, which regulates the procedure for providing by Rospatent the relevant state service for making changes. This Procedure contains an exhaustive list of documents that the applicant must provide in order to make changes.

            First of all, in respect of each certificate the application shall be filed according to a prescribed form – the form is provided in the first annex to the Procedure.  The document confirming the payment of an official fee in the prescribed amount, the power of attorney for the representative, and, if necessary, the document confirming the changes made shall be enclosed to the application.

            The changes, as in case with the application, may relate to the following information.

            The company name or the surname, name, patronymic (the last one is if available) of the right holder: the former and changed company name or surname, name, patronymic (the last one is if available) shall be provided.

            The address of the place of residence of the individual or the location of the legal entity: the changed address of the place of residence of the individual or the location of the legal entity shall be provided.

            The address for correspondence: the changed address for correspondence shall be provided.

The changes of the list shall be the products (services) excludable from the list of the products (services) in respect of which the state registration of the trademark has been carried out and which are grouped according to the classes of the International Classification of Products and Services for the Registration of Trademarks. The examination checks whether the new list indicated in the application on making changes contains any new products or services for which the trademark has not been registered and whether this new list expands the scope of the exclusive rights to the trademark.

To add products/services to the already existing registration is not possible.

The image of the trademark: it is necessary to enclose the changed image of the trademark in two copies. As it has been mentioned earlier, when filing an application, two copies of the image of the changed trademark shall be provided. If the colour combination changes, the description of the changed colour or the colour combination shall be also provided.

When studying the possibility of making changes, the examination checks whether the changes made have changed the essence of the trademark, the perception of the trademark as a whole or its basic, dominant elements. In case if the change of the trademark is essential, for example, as a result of re-branding, it is recommended to re-file an application for the registration of a new trademark.

            And some others.

The same confirming documents as in case of the application for the registration of a trademark shall be enclosed to the application.

In case of compliance with all requirements and making changes in the certificate successfully, these changes shall be placed in section “Changes and Supplements” in the State Register. The entries shall be recorded with the indication of the date of the change or supplement. The term for making changes shall be about two months.

Some right holders may have a question: why should he bother to register changes made in the trademark?

The answer is quite simple: making changes late limits significantly the ability to protect and use the rights to the trademark.

So, for example, the use of the exclusive rights to the trademark (the registration of an alienation agreement, license agreement, etc.) will be refused, if the information on the company name or the legal address of the right holder indicated in the certificate has not been brought in time in line with the information of the Unified State Register of Legal Entities and does not correspond to the actual information indicated in the agreement.

In addition, if the address for correspondence indicated in the Register is not true to fact, the rights holder may not be aware of the threats to the effect of his exclusive rights to the trademark, for example, in connection with filing a claim for non-use by a third party, since all correspondence between the right holder and Rospatent shall be done according to the address indicated for correspondence.

The allocation of an individual registration shall be a special case of making changes in the certificate for a trademark. This possibility is a novel in the Russian legislation on the intellectual property.

Thus, according to Paragraph 2 of Article 1505 of the Civil Code of the Russian Federation, In case of challenging the provision of the legal protection to a trademark (Article 1512) from the state registration of a trademark, which is in force in respect of several products, according to the application of the right holder the individual registration of such trademark can be allocated for one product or a part of the products from the ones indicated in the initial registration, which are not homogeneous with the products, the list of which remains in the initial registration. Such application may be filed by the right holder before making a decision on the results of the consideration of the dispute concerning the registration of a trademark.” Therefore, any registration the list of which contains more than one position, can be divided formally to preserve the rights of the right holder to at least a “part” of the registration. At the same time, it is clear that the positions provided in the application on the allocation should be included in the list of the products of the initial certificate and should be not homogeneous with the positions, the list of which remains in the initial registration.

It is necessary to distinguish the allocation of an individual registration from filing an allocated application for the registration of a trademark from the initial application, which is possible before the examination makes a decision on the above initial application.

As we see, making changes in the application and the certificate for a trademark seems to be a fairly simple procedure, which, in practice, however, has many peculiarities that require a careful and scrupulous approach.

Trademark and Patent: What is the Main Difference?
Keywords: intellectual property, means of individualization, trademark, exclusive right, registration of a trademark, patent, subject-matters of patent law, patenting, invention, utility model, industrial design.

The people who do not have experience in the field of registration and protection of the rights to subject-matters of intellectual property frequently ask: what is the difference between a trademark and a patent? This issue is most important for the entrepreneurs who want to get an effective legal protection for the developed and/or used marks, technical knowledge and design solutions.

At first, it should be noted that the trademark and the patent are absolutely different concepts. The trademark is a word, image or any other designation (“in everyday life” it can be called “logo,” “brand,” “trademark,” etc.), which is used for the individualization of goods and services. The certificate shall be issued for a trademark.

The following shall be patented: inventions (the invention shall be “... technical knowledge in any field related to a product (in particular, to a device, substance, microorganism strain, plant or animal cell culture) or a method (the process of performing actions over the material object with the help of the material means), including to the application of the product or method for a specific purpose”), utility models (technical knowledge relating to devices) and industrial designs (the industrial design shall be “a design of the article’s appearance of an industrial or handicraft production”). In order to obtain protection, such knowledge must have certain characteristics (novelty/originality/industrial applicability, depending on the subject-matter). The patent shall be issued for such a subject-matter in case of a successful registration.

Among the subject-matters of the patent law the industrial design seems to have the greatest similarity to a trademark: it is possible to draw some parallels between them, in particular, in the field of the legal protection of three-dimensional designations – the original form, the appearance of the product, its packaging, which can be registered as a trademark or industrial design. Both the three-dimensional trademark and the industrial design will perform in this aspect, in fact, the same function – to attract the consumer's attention to a particular product and to individualize this product due to its aesthetic properties, which produce a certain visual impression, while protecting the manufacturer/seller of this product from the infringement of his rights, that is, from the use of this three-dimensional designation by third parties without his.

Inventions and utility models have much less similarity with trademarks.

In general, inventions, utility models and industrial designs differ from trademarks by their legal nature. The trademark shall be a means of individualization, which identifies the goods or services of a particular manufacturer and allows distinguishing them from the goods and services of another manufacturer. The subject-matter of the patent law shall be a result of a creative activity. This is a technical or artistic and design knowledge, and it should have an author obligatory. It is also important that only the legal entity or individual entrepreneur may be the right holder of a trademark, and the patent holder may be an individual as well.

These subject-matters differ by the periods of validity of the legal protection, too. The period of validity of a patent for an invention is 20 years. The period of validity of a patent for a utility model is 10 years, and since January 1, 2015, the period of validity of the exclusive right to a utility model shall not be extended. The period of validity of the legal protection of an industrial design is 5 years, and this period can be extended for five years repeatedly by the application of the patent holder, but not more than for twenty-five years totally. The period of validity of a trademark is 10 years with the possibility of extending it repeatedly.

Further, the trademark and subject-matters of the patent law differ in the scope of the legal protection granted to them. The legal protection of a trademark shall be applied to those goods (and/or services) that are specified in the list, for which this trademark has been registered. Thus, in accordance with Clause 3 of Article 1484 of the Civil Code of the Russian Federation, “No one has the right to use, without the permission of the right holder, the designations similar to his trademark in respect of the goods for the individualization of which the trademark has been registered, or similar goods, if the possibility of confusion appears as a result of such use.” As to the subject-matter of the patent law, there is no criterion of identity of the goods here, although there may be a criterion of similarity of the destination. That is, with some references, its legal protection shall be applied to all goods, and third parties are prohibited to use it without the consent of the right holder. 

Finally, the protection of a trademark is tied to its use. In accordance with Article 1486 of the Civil Code (“Consequences of the non-use of a trademark”), the legal protection of a trademark may be terminated early in respect of all goods or a part of goods due to the non-use of the trademark continuously for any three years after its official registration. Along with this the application for an early termination of the legal protection of a trademark due to its non-use can be filed by any interested person (who, however, will have to prove his interest). The validity of the patent is not connected with the use. The patent shall be granted for a certain period. Moreover, during this period it can not be canceled due to the application of any third party only for the reason that this protected subject-matter is not used by its patent holder.

At the same time, it should be noted that the processes of registration of trademarks, inventions, utility models, industrial designs have some similar features: the application shall be filed, the formal examination shall be carried out, the substantive examination/examination of the designation applied as a trademark shall be carried out, the decision shall be made, the document of protection shall be issued.

However, as we see, the subject-matters of the patent law and trademarks have absolutely different destinations and the scope of the legal protection provided by the state. Therefore, as a practical matter, if you intend to protect your rights from attacks of third parties and implement them to a maximum effect, it seems reasonable to use all means provided by the Russian civil legislation, to create a “portfolio” of the subject-matters of intellectual property (trademarks and patents) and to manage the portfolio properly.