Maria Dvornikova

As follows from the provisions of Article 1481 of the Civil Code of the Russian Federation, “A trademark certificate certifies the owner’s exclusive right to the trademark in relation to the goods and services specified in the certificate”. That is, it is obvious that the exclusive right is certified by only one document.Consequently, the above legislative norms do not provide for the possibility of recognizing multiple exclusive rights for the same scope of legal protection of a mark, since this would contradict the absolute nature of the exclusive right and would entail the impossibility of isolating a trademark as an object of civil rights and the exclusive right to it, i.e. would lead to so-called “double registration”.Thus, state registration as a trademark of a designation identical to a registered trademark in the name of the same copyright holder in relation to a matching list of goods and services is contrary to the nature of the exclusive right; therefore, such registration will be contrary to public interests and, accordingly, violate the provisions of paragraph 3 of Art. 1483 of Civil Code of the Russian Federation.It should be noted that in order to avoid refusal due to “double registration”, trademarks must have differences, which may include the following:the declared designation must have a difference, which can be expressed in color combination, compositional arrangement of elements, font design, or the addition of new elements. It is important to note that the addition of the element “®” (trademark protection sign) cannot be regarded as a difference that allows one to avoid receiving a refusal on this basis.the list of goods and services must be different, i.e. Items of goods/services that are available in early registration should be excluded.Thus, when filing an application for registration of a new mark, it is necessary to conduct a detailed analysis of a previously registered mark, focusing on key points. This will avoid receiving notifications from the examination and delaying the paperwork.It is important to remember that from the point of view of legislation in the field of intellectual property, it is unacceptable when the same scope of legal protection is certified by two certificates, since this contradicts the nature of the exclusive right.For clarity, let us turn to the practice of such cases.According to the Guidelines for the implementation of administrative procedures and actions within the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates, approved by order of the Federal State Budgetary Institution FIPS dated January 20, 2020 N 12 (as amended on March 25, 2022), according to the section 4.2.1. Designations contrary to the public interest: Designations that are contrary to public interests include designations that are identical (with minor differences) to a trademark registered in the name of the same person.These provisions are confirmed by court decisions. Thus, the IP's court request to invalidate the decision of Rospatent to refuse state registration of a trademark under application No. 2014712526 was denied. Rospatent made a decision to refuse state registration of the designation “SOUTH GARDEN”, applied for registration as a trademark under application No. 2014712526 in the name of the applicant due to the fact that the applicant at the time of filing the application was already the copyright holder of the trademark “SOUTH GARDEN” under certificate No. 517703 (Resolution of the Presidium of the SIP dated May 2, 2017 in case No. SIP-711/2016).At the same time, in the considered resolution of the Presidium of the IP Court, a reference was made to the provisions of the review of judicial practice, according to which “a series of trademarks are trademarks of one right holder, dependent on each other, interconnected by the presence of the same dominant verbal or figurative element, having phonetic and semantic similarity, as well as insignificant graphic differences that do not change the essence of the trademarks.” At the same time, in the resolution of the Presidium, in disclosing the above provisions, it is also established that “trademarks in which the existing differences are so insignificant that the consumer may not notice them cannot be qualified as a series of trademarks.”At the same time, with regard to the above designation under application No. 2014712526, which was the subject of consideration, it was established “that the senior trademark and the designation on the junior application are identical, and the fact that the designation on the junior application is made in a bolder font than the senior trademark is not influences the perception of the compared trademarks as identical.”It is also noted that “based on the provisions of the law, there cannot be two or three exclusive rights, identical in content, to the same means of individualization, since in this case the right ceases to be exclusive.” In the considered resolution of the Presidium of the Council of IPs, it is established that in the provisions of the legislation the list of cases when state registration of a trademark may be contrary to public interests is not exhaustive, and in a similar situation, when a designation has been applied for in the name of the same applicant, which has minor differences from the registered trademark, registration of such a designation is contrary to public interests (clause 3 of Article 1483 of the Civil Code of the Russian Federation).As noted above, in order to avoid refusal due to “double registration”, a trademark may have a difference, including in color combination, i.e. the list of goods and services for two marks of the same copyright holder will be similar, but the marks must be made in different colors.As a rule, this practice is used by large companies that have a large package of trademarks in their portfolio. Thus, a series of trademarks are registered in various color combinations - mainly a designation in a corporate style and in black and white.Examples include the following trademarks:trademarks "Russian Railways" No. 341333 and No. 341334 (copyright holder OJSC "Russian Railways", 107174, Moscow, Novaya Basmannaya str., 2/1, building 1 (RU);trademarks “MTS” No. 327460 and No. 311393 (copyright holder PJSC Mobile TeleSystems, 109147, Moscow, Marxistskaya St. , 4 (RU);trademarks “Megafon” No. 544687 and No. 544688 (copyright holder OJSC MegaFon, 115035, Moscow, Kadashevskaya embankment, 30 (RU).As you can see, these marks are made in color and black and white, as well as in different colors - they are registered in the name of one copyright holder in relation to a matching list of goods and services. Thus, in the cases under consideration, the examination quite rightly registered the indicated trademarks for a matching list of goods and services, since it considered them to be a continuation of a series of marks.Thus, when preparing to register a trademark, it is necessary to take into account all the above criteria in distinguishing the designations in order to avoid receiving a notification due to “double registration”. It is important to remember that each trademark is unique and it can only be one; another is not provided for by the current legislation. It is the individuality of a trademark that determines its exclusive right.Sources:Civil Code of the Russian Federation (part four) dated December 18, 2006 N 230-FZ (as amended on June 13, 2023) (as amended and supplemented, entered into force on June 29, 2023)Rules for the preparation, submission and consideration of documents that are the basis for performing legally significant actions for the state registration of trademarks, service marks, collective marks, approved. By Order of the Ministry of Economic Development of Russia dated July 20, 2015 N 482 (as amended on March 1, 2023)Guidelines for the implementation of administrative procedures and actions within the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates, approved by Order of the Federal State Budgetary Institution FIPS dated January 20, 2020 N 12 ( ed. dated March 25, 2022)

The creation of any business begins with the development of the concept of the company, its name, trademark. It is on the name that the main emphasis is placed, because it is not in vain that they say: “whatever you call a ship, so it will sail” (the phrase belongs to Captain Vrungel, the hero of the popular Soviet animated series “The Adventures of Captain Vrungel”). The success of the enterprise and the business as a whole depends on what emotional coloring the name will bear, what associations it will evoke, and, consequently, consumer confidence in it is formed.Let us analyze in more detail such means of individualization as a trade name, commercial designation and trademark and service mark and clash of rights to them.Trademark and service markAccording to Art. 1477 of the Civil Code of the Russian Federation “ A trademark (service mark) is a designation that serves to individualize goods, work performed or services provided. »Registration of a trademark is carried out in the federal executive body for intellectual property (Rospatent). A trademark is recognized as an exclusive right certified by a certificate.The person in whose name the trademark is registered (right holder) has the exclusive right to use the trademark in accordance with Article 1229 of the Civil Code of the Russian Federation in any way that does not contradict the law (exclusive right to the trademark).The term of the trademark is 10 years, renewable an unlimited number of times, each time for 10 years.Brand nameAccording to paragraph 2 of Art. 1473 of the Civil Code of the Russian Federation “ The company name of a legal entity must contain an indication of its organizational and legal form and the actual name of the legal entity, which cannot consist only of words denoting the type of activity."Thus, the company name consists of two parts: an indication of the organizational and legal form + the name of the legal entity, it is subject to mandatory registration in the Unified State Register of Legal Entities (EGRLE).A legal entity whose company name is registered in the established manner has the exclusive right to use such name in any not prohibited way, and also has the right to demand the termination of the illegal (without its consent) use of such name by other legal entities and compensation for losses caused by such use.The company name is protected indefinitely (as long as the legal entity operates and is registered in the Unified State Register of Legal Entities).Commercial designationAccording to Art. 1538 of the Civil Code of the Russian Federation “Legal entities engaged in entrepreneurial activities (including non-profit organizations that are granted the right to carry out such activities in accordance with the law by their constituent documents), as well as individual entrepreneurs, can use for the individualization of their trade, industrial and other enterprises ( article 132 of the Civil Code of the Russian Federation) are commercial designations that are not company names and are not subject to mandatory inclusion in the constituent documents and the unified state register of legal entities. A commercial designation can be used by the right holder to individualize one or more enterprises. For the individualization of one enterprise, two or more commercial designations cannot be used at the same time.Thus, legal entities and individual entrepreneurs can be owners of a commercial designation.A feature of a commercial designation is that it is not included in the constituent documents and the unified state register of legal entities; its special registration is not required. It should be noted that the exclusive right to a commercial designation arises from the moment of its actual use. A commercial designation is protected indefinitely, but it is important to note that the exclusive right to a commercial designation is terminated if the right holder does not use it continuously for one year. Thus, the basis for the termination of the exclusive right to a commercial designation is the fact of its non-use.Often, a commercial designation is confused with a brand name, however, these are different means of individualization that have their own characteristics.Article 1541 of the Civil Code of the Russian Federation determines the correlation of the right to a commercial designation with the rights to a trade name and trademark:“1. The exclusive right to a commercial designation, including the trade name of the right holder or its individual elements, arises and operates independently of the exclusive right to the trade name.2. A commercial designation or individual elements of this name may be used by the right holder in a trademark belonging to him. A commercial designation included in a trademark is protected independently of the protection of the trademark.Disputes very often arise when a company considers that a third-party trademark containing a distinctive part of its company name violates its rights, and can file an objection to the registration of this mark with the Chamber for Patent Disputes of Rospatent on the basis of its inconsistency with the provisions of paragraph 3 of this Article. 8 art. 1483 of the Civil Code of the Russian Federation. Here it is important to keep in mind the importance of a commercial designation, which can serve as a weighty argument even if the right to a trade name arose before the priority date of the challenged mark.In accordance with paragraph 8 of Article 1483 of the Civil Code of the Russian Federation, “Designs that are identical or confusingly similar to a trade name or commercial designation protected in the Russian Federation (separate elements of such a name or designation) cannot be registered as trademarks in relation to homogeneous goods, or with the name of the selection achievement registered in the State Register of Protected Selection Achievements, the rights to which in the Russian Federation Federations arose with other persons before the priority date of the registered trademark.In accordance with paragraph 6 of Article 1252 of the Civil Code of the Russian Federation “If various means of individualization (company name, trademark, service mark, commercial designation) turn out to be identical or similar to the degree of confusion, and as a result of such identity or similarity, consumers and (or ) contractors, the priority is given to the means of individualization, the exclusive right to which arose earlier, or in cases of establishing a convention or exhibition priority, the means of individualization, which has an earlier priority .According to Art. 1225 of the Civil Code of the Russian Federation, a commercial designation is the result of intellectual activity and equivalent means of individualization of legal entities, goods, works, services and enterprises that are granted legal protection.When considering the issue concerning the clash between a trade name and a trademark, it is important to note that the owner of the disputed mark has older rights to such a means of individualization as a commercial designation. So, as noted above, in accordance with clause 6 of Article 1252 of the Civil Code of the Russian Federation, in the event of a collision of confusingly similar means of individualization, the advantage is given to the means of individualization, the exclusive right to which arose earlier.In this regard, it is important to note that if a company conducts business under its commercial name continuously and uses it for a long period of time (long before the registration of the trade name of the person trying to challenge the trademark), then it has a priority right over its trade name.Since a commercial designation, unlike a trade name and a trademark, is not subject to registration, the fact of the existence of an exclusive right to it can be established on the basis of documents confirming its actual use.It should be noted that determining the degree of popularity of a commercial designation in a certain territory is an important factor in determining the moment of the emergence of the right to it, and it is very important to competently approach the collection of such documents.In accordance with the position of the IP Court, reflected in the decision of the Court for Intellectual Property Rights dated May 23, 2017 in case No. SIP-81/2017, the circumstances of the long-term and (or) intensive use of the designation in a certain territory, the costs incurred for advertising , significant volumes of sales of goods and provision of services under this designation, the results of a survey of consumers of goods on the issue of the popularity of the designation in a certain territory.Thus, in order to prove the fact of the use of a commercial name, it is necessary to provide documents on its continuous use - it is important that they be dated earlier than the date of registration of the trade name of the company acting as an opponent in the dispute.Thus, it is necessary to provide evidence that confirms that the company continuously uses its commercial designation in relation to the goods and services listed in the registration, the products have long been present on the Russian market and during this time have gained a certain reputation and fame among consumers. A commercial designation can be used by the right holder to identify his enterprise, including by indicating on goods or their packaging, waybills, contracts, signs, in announcements and advertisements, in invoices, materials on participation in exhibitions and in other documents.The priority of a commercial designation is a weighty argument, and it is necessary to prove that the right to a commercial designation arose earlier than the right to a trade name and became known in a certain territory earlier than the date of registration of the opponent's trade name.Thus, a well-assembled package of documents will make it possible to prove that the commercial designation arose much earlier than the date of registration of the company name of the company acting as an opponent in contesting the trademark, and will allow the trademark to remain valid.Sources:1.Civil Code of the Russian Federation (Part Four) dated December 18, 2006 N 230-FZ (as amended on June 13, 2023) (as amended and supplemented, effective from June 29, 2023)2.Rules for the preparation, submission and consideration of documents that are the basis for the performance of legally significant actions for the state registration of trademarks, service marks, collective marks, approved. By order of the Ministry of Economic Development of Russia of July 20, 2015 N 482 (as amended on November 23, 2020)3.Guidelines for the implementation of administrative procedures and actions in the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates, approved. Order of FGBU FIPS dated January 20, 2020 N 12 (as amended on March 25, 2022)4.Information message “On checking the compliance of signs applied for registration as trademarks with the requirements of paragraph 8 (in terms of trade names and commercial designations) of Article 1483 of the Civil Code of the Russian Federation”5.Judgment of the Intellectual Property Rights Court dated May 23, 2017 in case No. SIP-81/2017