Irina Potapkina

Keywords: intellectual property, means of individualization, exclusive rights, trademark, registration of a trademark, use of a trademark, early termination of the legal protection of a trademark in connection with its non-use, use of a trademark under the control of the right holder.             The right holder of a trademark, in accordance with the legislation of the Russian Federation, must use it for all products and services that are contained in the list of the registration. This is due, in particular, to the possibility of an early termination of the legal protection of a trademark in connection with its non-use. In accordance with Article 1486 of the Civil Code of the Russian Federation (“The consequences of the non-use of a trademark”), “The legal protection of a trademark may be early terminated with respect to all products or parts of products, for the individualization of which the trademark has been registered, due to the non-use of the trademark continuously within any three years after its state registration. The application for an early termination of the legal protection of a trademark due to its non-use may be filed to the arbitration court by any interested person upon the expiration of the above three years, provided that the trademark has not been used just before the moment of filing such application. The burden of proving the use rests with the right holder of the trademark.As noted in Resolution of the Presidium of the Intellectual Property Court of July 8, 2016 No. C01-352/2016 in case No. SIP-448/2015, "The norms of Article 1486 of the Civil Code of the Russian Federation correspond with the norms of Subparagraph 1 of Paragraph “C” of Article 5 of the Convention for the Protection of the Industrial Property (concluded in Paris on 20.03.1883), Articles 15 and 19 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (concluded in Marrakech on 15.04.1994), according to which, if the use of a registered mark is mandatory in the country, the registration can be cancelled only at the expiration of a reasonable term (at least three years), and only if the interested person fails to submit proofs justifying the reasons for his inactivity."            Thus, to avoid the cancellation of the trademark for the products and services for which it has been registered, it is necessary to use it for the respective positions of the list. At the same time, it should be noted that the use of the trademark for each product or service in the form in which this product or service is named in the certificate for a trademark shall be subject to be proved.The use of the trademark shall be recognized its placement: “... on products, including on labels, packaging of products that are manufactured, offered for sale, sold, demonstrated at exhibitions and fairs or otherwise introduced into the civilian circulation on the territory of the Russian Federation, either stored or transported with this purpose, or imported into the territory of the Russian Federation; at the performance of works, the provision of services; on the documentation related to the introduction of products into the civil circulation; in the offers for sale of products, works, services, as well as in advertisements, on outdoor signs and in advertising; in the Internet, including in a domain name, and using other ways of addressing” (Article 1484 of the Civil Code of the Russian Federation).Thus, in accordance with Paragraph 2 of Article 1486 of the Civil Code of the Russian Federation  “... the use of a trademark shall be recognized its use by the right holder or the person to whom such right has been granted on the basis of a license agreement in accordance with Article 1489 of this Code, or by another person, who is carrying out the use of the trademark under the control of the right holder, provided that the use of the trademark is carried out in accordance with Paragraph 2 of Article 1484 of this Code, except for the cases when the corresponding actions are not directly connected with the introduction of the product into the civil turnover, as well as the use of the trademark with the change of its individual elements, without changing the substance of the trademark and without limiting the protection granted to the trademark.”It is necessary to dwell upon the above exceptions in more detail.At first, the use of a trademark may be recognized as the use of a registered designation “...with the change of its individual elements, without changing the substance of the trademark.” This exception undoubtedly creates more favourable conditions for the right holders. In practice, it often happens that for some reasons connected, for example, with the change of the market conditions, market activities and other factors, the right holder is forced to use the trademark in a different way, other than it has been registered. However, if any person files a claim to the court for an early termination of the mark, because it is used by the right holder in a different way, other than it has been registered, the question of whether some or other changes change the mark substantially remains at the discretion of the judge. Therefore, ideally, if the right holder uses the mark in a different way, other than it has been registered, it is recommended to file a new application.Further, the use of a trademark shall be recognized the use of it not only by the right holder, but also by the person to whom such right has been granted on the basis of a license agreement, or by another person, who is carrying out the use of the trademark under the control of the right holder. At the same time, it should be noted, that the very presence of a license agreement is not a proof of the use of the designation. It is necessary to submit the documents confirming the performance of the agreement by the parties (invoices, payment orders, acts of work performed, etc.)Within this framework, the contract agreements or franchise agreements, which actually confirm not only the consent of the right holder to use the trademark, but also the quality control of the product are on a par with the license agreements.It should be noted that by the implication of Article 1486 of the Civil Code of the Russian Federation, as a general rule, for the purposes of preserving the legal protection of a trademark, the license agreement is still required. However, “... in exceptional cases and in the absence of a license agreement, the fact of using the trademark under the control of the right holder may be recognized; then the actual agreement between the right holder and another person, and coordinated actions aimed at maintaining the quality of the product are required” (see Protocol No. 12 of the proceedings of Scientific Advisory Board of the Intellectual Property Court of June 29, 2015).Since “the use under the control of the right holder” is a rather vague wording, in determining what is included in this concept, it is possible to be guided by the Certificate on the use of the trademark under the control of the right holder, approved by Resolution of the Presidium of the Intellectual Property Court of August 7, 2015 No. SP-23/21. According to this Certificate, the following approaches have been revealed in the judicial practice of the Presidium of the Intellectual Property Court.At first, when establishing the fact of the use of the trademark by another person under the control of the right holder, the court assesses whether the use of the trademark has been carried out according to the will of the right holder – even if the concluded license agreement has been declared invalid or due to some reasons it has not been registered at Rospatent. Therefore, for the purpose of proving the use of the trademark, it is of no critical importance to what degree the use of the trademark under a license agreement has been legal or illegal (if the agreement does not comply with the Russian legislation).Further, the use of the trademark according to the will of the right holder shall be recognized as the use of the designation under a contract agreement or an agreement for the paid rendering of services (Chapters 37, 38 of the Civil Code of the Russian Federation), the subject of which is the manufacture of a product with the placement on it of the customer's trademark and/or the distribution of such product/rendering services with the use of a service mark.The relevant is the point of the Certificate, according to which the presence of a corporate relationship between the right holder and another person, who is using the trademark, including within the holding or other group of persons, the organizational and legal interaction between them, based on the provisions of the constituent documents or the terms of the agreement shall be an additional confirmation of the “will” and “control” of the right holder.In the current conditions of the globalization, information and the extremely high significance of the Internet for the promotion of products and services, the important provision is that administering a domain name by any person (not the right holder of the disputed trademark), as well as the use by another person of the right holder’s trademark in the Internet for the distribution of the product can be recognized as the use of the trademark under the control of the right holder, subject to the consent of the latter.            Finally, with respect to the imported products, the right holder's control over the use of the trademark for the purposes of Article 1486 of the Civil Code of the Russian Federation can be confirmed, when the right holder appeals to the customs authority (the Federal Customs Service of Russia) to place the trademark in the Register of intellectual property subject matters.In accordance with Paragraph 3 of Article 1486 of the Civil Code of the Russian Federation, “When resolving the issue on an early termination of the legal protection of the trademark due to its non-use, the proofs submitted by the right holder that the trademark has not been used due to circumstances beyond his control can be taken into account.” It should be noted that, on the basis of this provision, the cases of maintaining the legal protection for the trademark that is not used are very rare. At the same time, they exist. For the court to establish that the mark has not been used due to the circumstances beyond the right holder’s control, such circumstances should not really depend on his will (for example, it may be import/export restrictions imposed by the state, etc.); the circumstances should be weighty, that is, they should objectively prevent the right holder from using his trademark, as well as they should be lasting.  At the same time, the right holder must have a proof that during the indicated period, he has been taking all the necessary measures to use the trademark.Thus, as we see, the duty of the right holder to use his trademark is one of the fundamental norms in the field of the intellectual property protection. On the basis of the above norm of the Civil Code of the Russian Federation, the large number of claims for the non-use are filed, since the early termination of the legal protection of a trademark is a very pragmatic and often effective way of resolving the problem of a preliminary refusal of the registration on the basis of the existence of identical/similar marks. This mechanism removes the obstacle for the applicants who are really ready to manufacture and sell the products and services under the identical or similar designations.And for the right holders, in order to avoid the risks of the cancellation of their marks, the recommendations are as follows: from the very beginning of using the trademarks, it is extremely undesirable to change and modify them arbitrarily. It is necessary to store the proofs of the use of one’s registered trademarks. If it is not possible to use the trademark, it is advisable not to allow the non-use during three consecutive years, since Rospatent has not yet developed a common practice regarding the issue to which extent which the use of the mark is considered to be “sufficient” and preventing its cancellation.In extreme cases, if for some reasons the mark has not been used, but the applicant is interested in maintaining its legal protection, the new application for the registration can be filed.  In this case, the new application should not “duplicate” the existing registration.

Keywords: intellectual property, means of individualization, exclusive rights, trademark, registration of a trademark, refusal of the registration of a trademark, confusing similarity, letter of consent to the registration of a trademark             The trademark is the main means of individualization of the products and services of one manufacturer among the products and services of other manufacturers. The person in whose name the trademark is registered has an exclusive right to use it. The right holder may also freely dispose of his rights to the registered designation, permit or prohibit its use by third parties.            For the successful registration of a trademark, it is necessary that it meets particular criteria. Thus, in accordance with Article 1483 of the Civil Code of the Russian Federation, “The designations shall not be registered as trademarks, if they are identical or confusingly similar to: 1) the trademarks of other persons applied for the registration ... with respect to the homogeneous products and which have an earlier priority, if the application for the state registration of the trademark has not been withdrawn, not recognized as withdrawn or the decision on the refusal of the state registration has not been made for it; 2) the trademarks of other persons protected in the Russian Federation, including in accordance with the international treaty of the Russian Federation, with respect to the homogeneous products and which have an earlier priority; the trademarks of other persons recognized in the manner stipulated by this Code as well-known trademarks in the Russian Federation, with respect to the homogeneous products with the date, which is earlier than the priority of the applied designation.”            If the results of the preliminary search carried out before filing the application have revealed identical or similar designations, registered/applied with respect to the homogeneous products or services, one of the ways to increase the chances of the registration of the mark is, of course, to change it – so that it will become less similar to the found designations. But what is there to do, if the preliminary search has not been carried out and the applicant learned about such problem only from the notification of the Office – a preliminary refusal of the registration? Or has he deliberately filed the chosen designation for the registration, knowing about the presence of similar marks, because any circumstances (the company policy, the funds already spent for the development and advertisement of the brand, etc.) were justifying such a risk?            One of the ways to overcome a preliminary refusal based on the fact that the examination has revealed a similar registered mark is obtaining by the applicant of the consent from the right holder for the registration of this mark. Thus, in accordance with Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation, “The registration as a trademark with respect to the homogeneous products of the designation, which is confusingly similar to any of the trademarks... shall be allowed with the consent of the right holder, provided that such registration may not be a reason for confusing the consumer. The consent can not be withdrawn by the right holder.” Thus, the applicant, who is aware of the presence of a confusingly similar trademark with an earlier priority, may submit to Rospatent either at filing an application, or during the examination, or at filing an objection to the Chamber for Patent Disputes a document confirming the consent of the right holder of such similar trademark for the registration of the applied designation.            The consent of the right holder takes the form of a Letter of Consent – a tool to which the applicants often resort so that to overcome preliminary refusals of the registration.  The issuance of such Letter of Consent can be carried out both for a fee and for free. In practice, foreign individuals and legal entities are more willing to give Letters of Consent for free. The Russian entrepreneurs, as a rule, require some monetary compensation.            Because of the “popularity” of Letters of Consent, it has been necessary to regulate them more thoroughly. For the consideration of this issue, the Recommendations on the Application of the Provisions of the Civil Code of the Russian Federation Concerning the Consent of the Right Holder to Register a Similar Trademark, adopted by order of Rospatent No. 190 dated 30.12.2009 have a direct relevance.            Thus, the Recommendations establish that the consent of the right holder of a similar trademark is made in a simple written form, and arbitrary. In practice, it can be a unilateral written statement or even a bilateral civil law agreement. Such document must include: the full information about the right holder, who is giving his consent to the registration; the full information about the applicant of the application; the very expression of the consent for the registration – with the condition that it can not be withdrawn; the application number (or, if the application has not yet been filed, the applied designation and its description must be enclosed), a particular list of products and services, as well as the conditions under which the right holder consents to the registration. The document must contain obligatory the date of drawing it up and the signature of the authorized person(s), for legal entities, as usual, the seal is necessary.            Since all office work in Rospatent is carried out only in Russian, the Letter of Consent also must be drawn up in Russian. If, however, it is submitted in another language, the certified translation into Russian must be enclosed to it.            It must be remembered that the compliance with the formal requirements is not enough. As it has been indicated above, the acceptance of the Letter of Consent by the examination and the removal of the opposition to the similar trademark are possible only if it is not a cause of confusing the consumer. Accordingly, the higher the probability of the confusion of designations in the civil circulation is, the lower the chances of registering a mark on the basis of a Letter of Consent are.            According to the Recommendations, "The probability of the confusion of the applied designation and the opposed trademark increases significantly, in particular if: the applied designation and the opposed trademark have a degree of similarity, close to the identity; there is no doubt about the homogeneity of the products; the opposed trademark is widely known among the potential consumers of the product and is associated with a particular manufacturer (for example, if it is recognized as a well-known trademark in the Russian Federation); the opposed trademark is intended for the individualization of consumer products and fast moving consumer products (for example, for cosmetic and hygiene products, food, wine and tobacco products)..."            Thus, if the designations are identical (they coincide in all elements), it is impossible to overcome the opposition of the identical mark to the applied designation on the basis of the Letter of Consent. But even if the designations are not identical, the more similar they are – the lower the chances of the registration are. Although, it all depends on the circumstances of the case – “in some cases, in the presence of particular special circumstances, the probability of confusing the consumer may be excluded, or confusing in these cases can not lead to negative consequences for the consumer.” The examination considers each particular case individually, and its conclusions can be quite different.            If the applied designation is almost identical to the registered mark, in accordance with the Recommendations, the registration is appropriate only if the applicant and the right holder are somehow connected legally, for example, they are affiliated entities: this removes the probability of confusing the consumer. The new application and the already available certificate in this case can be perceived simply as “variations” of the same mark, when the differences are only in the colour, fonts, transliteration, etc. However, even the presence of “family ties” will not save the situation if the opposed trademark, for example, is widely known among consumers and associated with a particular manufacturer, intended for the individualization of consumer products/fast moving consumer products or medicines and in some other cases.            In addition to the kind of a trademark, the list of products and services is of great importance. According to the Rospatent's 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 products, the principal possibility that the consumer will start to perceive these products as belonging to one manufacturer shall be determined. 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."            Obviously, the products from the lists of the application and the similar trademark are more homogenous, the higher the probability of their confusing is and the lower the chance of the acceptance of a Letter of Consent by the Examination is. In this case, the right holder of the opposed trademark may give his consent to the registration of a confusingly similar designation only for a part of the homogeneous products or services. The Recommendations contain the following example: “... the designation with respect to the product “vehicles” has been applied for the registration as a trademark. The opposed list of products has included the homogeneous products “buses, cars.” The right holder of the confusingly similar trademark submitted his consent for the registration of the designation for the products “bicycles, baby carriages.” In this case the registration of the applied designation can be made for the particular products indicated in the document confirming the consent, namely, for the products “bicycles, baby carriages.”            Summing up, it can be said that the Letter of Consent is a sufficient effective tool to overcome the refusal of the registration on the basis of the presence of a confusingly similar trademark registered in the name of a third party with respect to homogeneous products or services. However, it does not guarantee obtaining the registration (the higher the probability of the confusion of the marks is – the lower the chances are), and the acceptance of a Letter of Consent always remains at the discretion of the examiner.

Obtaining the legal protection for a trademark in the USA has a number of differences compared to a similar procedure in the Russian Federation, which should be taken into account by the entrepreneurs who want to enter this attractive market. We have asked the patent attorney Irina Potapkina, an expert of company Zuykov and Partners, to tell us about what these peculiarities are.Perhaps the most important and significant difference between the procedure for obtaining the legal protection for a trademark in the USA and the similar actions in the Russian Federation is the fact that in the United States the applicant does not have a possibility to obtain the legal protection for a trademark and to “lay it on a shelf” until better days. In the USA, the registration of a trademark is rigidly linked to its use, which either must have been already realized (the Declaration of Use is included in the package of the documents required for the registration) or will begin in the very nearest future (in such case the applicant shall enclose the Declaration of Intent). In the latter case, the certificate for a trademark can not be issued to the applicant until he confirms the commencement of the use of the trademark with the submission of the Declaration of Use, as well as the documents confirming such use with respect to each of the applied products or services. Thus, the applicant can commence the procedure of the registration without using the trademark; however, he can not complete it until he confirms the commencement of such use.The United States Patent and Trademark Office, or the USPTO, deals with the registration of trademarks in the USA. This Office considers the applications received from citizens and legal entities of the United States, as well as from non-residents of the USA. The legislation prohibits the registration of trademarks containing the elements that are contrary to the public interests, the state symbols of the USA and other countries, the descriptive marks, the marks that can confuse the consumers, as well as the marks that contain the names and portraits of people, if they have not given their written consent.After filing the application to the USPTO, the examination shall be conducted for it, during which the compliance of the application with the requirements of the legislation shall be established. In case of a negative verdict, the applicant, within 6 months, shall have the right to send to the USPTO a substantive response to the preliminary refusal to grant the legal protection. In case of a positive outcome, the application for a trademark is published in the official bulletin (updated weekly). After that, within 30 days, any person, in case, if he considers that the registered trademark may violate his legal rights and interests, shall have the right to file a pushback with respect to the indicated application. Subject to filing a corresponding petition to the USPTO, the pushback's 30-day period may be extended. In case, if there are no objections received from third parties regarding the registration of the trademark, the USPTO issues a document similar to the Russian decision on the registration of a trademark. If the initial package of the documents has included only the Declaration of Intent, then upon the receipt of such document, the applicant must submit the Declaration of Use of the trademark enclosing the documents confirming the use, or extend the deadline for filing such Declaration.Some important remarks on the topic.The Declaration of Use of a trademark, as well as the Declaration of Intent of its use, should be applicable to all products indicated in the application. Thus, it seems inappropriate to indicate the positions for which the registered trademark will not be used in the future. In addition, when filing an application for the registration of a trademark in the USA, it is not allowed to indicate in the list of products too broad, “general” concepts, for example: “clothes,” “shoes.”  To obtain the legal protection in the USA, the products and/or services should be as specific as possible.It should be remembered that the Declaration of Use must be systematically confirmed: the first time – between the fifth and the sixth year from the date of the issue of the certificate for the registration of a trademark, the second time – between the ninth and the tenth year from the date of the issue of the certificate for the registration of a trademark and further – once every ten years. At the same time, there is no a criterion of massiveness in the Declaration of Use. That is, from the point of view of the American law, there is no a fundamental difference between a single-piece, small-scale production or sales and a multibillion-dollar trade turnover.Another difference in obtaining and realizing the legal protection for a trademark in the USA from, for example, the similar actions in the Russian Federation, is that in the United States, the legal protection for a trademark is granted for 10 years from the date of the issue of the certificate, and not from the priority date over the application (as in the Russian Federation).It should be noted that in case of granting the legal protection not according to the national, but according to the international procedure, the necessity to submit the Declaration of Use when filing an application ceases to exist, sending the Declaration of Intent to the USPTO (which is an additional advantage of filing an application according to the international procedure) will be enough. However, the Declaration of Use will need to be submitted at the expiration of a five-year period from the date of granting the legal protection for the trademark.The original article was published in newspaper “Delovaya Tribuna,” January 24, 2017.