Olga graduated from the "Moscow State Institute of Electronics and Mathematics" and gained a Specialist degree in "Metrology and Metrology assurance". In 2003 she graduated from the Russian State Institute of Intellectual Property and gained a diploma which giving right to conduct professional activity in the sphere of legal protection and usage of intellectual property.
She also has the status of Patent attorney of the Russian Federation.
Olga is fluent in English.
Olga has worked with Zuykov and partners LLC since 2007 and specializes in:
- Trademark registration of foreign and Russian applicants in the Russian Federation, abroad, including registration under the Madrid agreement. Geographical indication registration as well as registration of public/ well-known trademark.
- Consulting on designation protectability issues which is registering as trademarks.
- Obtaining trademark certificate in case if you file a trademark application independently and need help in obtaining your trademark certificate.
- Trademark search and clearance for estimation of the chances and probability of your product marks or services registration.
- Trademark renewal because of necessity in trademark renewal each 10 year from the application date to Rospatent.
- Introduction of changes to a trademark if you introduce any changes to the name/address of the trademark holder so you must enter such changes into the trademarks register.
- Trademark cancellation due to it non-use by right holder.
- Trademark including into the Customs register of intellectual property objects for protection against counterfeit on customs.
- Contestation of trademark, i.e. contestation of grant of legal protection to a trademark means contesting of decision of Rospatent.
- Prior art search, preparation and filing for design patenting, response preparation on request for substantive examination on design.
She has an extensive experience in consideration of disputes, objections and statements in the Chamber on patent disputes of trademarks. Olga regularly participates in conferences and seminars on the protection of trademarks in Russia and abroad.
In 2005 Olga passed the WIPO distance learning course on the program "Fundamentals of intellectual property".
- 1996–2007 — Deputy Chief of Department of examination of applications for trademarks in the Federal Service for intellectual property.
In the context of this article, using a trademark, an entrepreneur can achieve the following results:
- Let the consumer recognize the product;
- Attract the attention of the consumer to the product;
- Make the product memorable;
- Create the association between trademark, product and manufacturer in the consumer mind;
- Provide the consumer with any information that will interest him or her and stimulate him or her to buy the product.
Based on the above, we can conclude that the trademark is a unique source of information about the product for consumers. And if the entrepreneur will take this into account at the stage of designation, a well-developed design of a visual identity entails the future effective use of the trademark and increase revenue thanks to this.
Civil Code of the Russian Federation does not contain any restrictions on the types of trademarks that can be registered: you can apply for registration of verbal, sound, visual, and even olfactory, gustatory and holographic designations, or their complex as a trademark. It is also important to add that there is no prohibition on registration of a trademark which includes words in other languages than Russian. That is, the limits of creation of a designation are limited to the general conditions of protectability, which are shown to all trademarks registered in Russia. These include the distinctiveness, respect for public interests and consumer rights, compliance with ordinary morality, etc.
Pseudo foreign trademark as a type of visual identity is not specified in the Civil Code. This state of affairs is not accidental, as this is rather a characteristic of the content of the designation itself, rather than one of the types of trademarks. Without referring to additional sources of information, we can conduct an analysis of the concept and conclude that the word “pseudo-foreign” indicates that the designation must include a verbal element in a foreign language and create the impression of a foreign trademark, but in fact it is not.
Examples include the trademark “Chester” which used for the production and sale of shoes, the trademark “Sela”, referring to the field of tailoring and clothing sales, as well as the trademark “Gloria Jeans” in a similar segment and the like.
From the perspective of examination of trademarks, T.P. Sokolova defines it as follows: “A pseudo-foreign trademark is the result of artificial nomination, aiming at disguising the Russian manufacturer of goods and services as a foreign one for the sake of commercial gain.
That is, these are such trademarks, with which Russian companies are trying to give the impression of foreign production of goods. Why may domestic enterprises need such trademarks?
It is worth assuming that there may be the following reasons:
- The rights holder wants to attract increased consumer attention by hinting at the foreign origin of the product;
- As practice shows, many consumers associate the production of goods abroad with good quality. Because of this, products with English names are purchased better, assuming foreign origin. Thus, using a trademark with a foreign verbal element, the entrepreneur can count on attracting this category of customers;
- Perhaps, the entrepreneur plans to enter the markets of other countries and decided to immediately develop and create a universal designation, which will be understandable to both Russian citizens and foreigners.
Analyzing pseudo-foreign trademarks, it is worth noting that in certain cases, such designations may pose a threat of misleading consumers. In such a case, the examiners of the Patent Office may refuse to register the trademark or cancel the certificate afterwards.
Thus, if the designation will use a fancy foreign word, such as in the trademark “Raffaello”, we can say that in this case, the rights holder does not intend to focus consumer attention on the foreign production and rather wants to interest customers with an unusual name. At the same time, for example, the trademark “Carlo PAZOLINI”, widely known in Russia, which was used for the production and sale of shoes in Russia, together with appropriate advertising support caused many consumers to feel that shoes were made in Italy.
In addition, it is also worth noting that modern manufacturers, on the contrary, are increasingly beginning to emphasize domestic production, showing and telling consumers about the strengths of Russian goods. Examples include the domestic clothing manufacturer “ТВОЁ” and the Russian sneakers manufacturing company, using technologies developed in the USSR, produced under the trademark “ДВА МЯЧА”.
To summarize, it should be noted that the registration and use of pseudo-foreign trademarks are not contrary to the Russian legislation and can bring additional benefits to the right holder. However, at the stage of creating a trademark it makes sense to minimize the likelihood of misleading consumers because of the use of foreign words. Otherwise, such a trademark may not be registered.
It would be logical to assume that at the initial stage of trade, the trademark will not be widely known in another country, and, consequently, the threat of illegal use will be low. However, the registration process takes more than one month, so it seems justified to apply for registration of the designation immediately after the decision to expand the territory of trade.
For registration of legal protection in a foreign country the right holder may choose one of the following options:
- File application directly with the office of the country where legal protection is planned.
- Use the international Madrid system for trademark registration.
- Use the regional trademark registration system.
To choose the best option, it is worth answering the following questions:
- Is registration planned in one or more countries?
- Does the right holder consider it important to maintain the original priority date?
- Are the states of intended registration parties to regional agreements?
Filing trademark application with the national patent office
If the trademark owner intends to register a trademark in one or two foreign countries, it is advisable to apply directly to the national office of those countries. The trademark owner should use the services of a qualified professional for this purpose. It is worth noting that the requirements to the contents of the documents submitted for registration of a trademark are basically the same: the applicant has to fill in the application form in the official language of the country, provide full information about the trademark and the right holder, as well as pay the fee for expert examination and registration of a visual identity. After the receipt of documents at the office, the application passes all the stages of review, which have to be passed by the application filed by the applicant who is a citizen of this country and the specialists decide on the registration of the trademark or a refusal of such.
Using system for international registration of trademarks
When an entrepreneur plans to distribute goods or services on the territory of three or more different countries, the best option would be to use the Madrid system for international registration of marks. In this case, also with the help of a patent attorney, the right holder submits an application and the related documents. Unlike applying directly with the office, there is no need to apply in each country separately. A person applies for an international registration with his or her national patent office, and the documents are then sent to the International Bureau of the World Intellectual Property Organization (WIPO), which administers the Madrid System.
The WIPO Office formally verifies the application and sends the documents to the designated countries, where the national offices check the trademark for compliance with the conditions of protectability. This procedure streamlines the procedure in many respects:
- The time for consideration of the application is reduced, as in the national Offices, the application is immediately sent to the stage of substantive examination of the designation.
- The right holder pays a reduced fee.
- The applicant submits a single application in one of three languages: English, Spanish or French.
- The application is checked at several patent offices within the same period of time. Thus, the right holder gets an opportunity to optimize the trademark registration process, because even if the rejection is received at one office, the examination at the office of another state which can take a different decision takes place in the meantime. As a result, within one period of time, the trademark owner will receive a decision on the legality of the trademark of the offices of different countries.
Besides, the use of the Madrid System allows keeping the priority date of the original application, which was filed with Rospatent when registering the trademark in Russia. Perhaps the pros of such a provision are unclear, but for the specialist they are obvious: if a dispute arises over the right to a trademark, the priority date is one of the decisive values.
Trademark registration in countries party to regional agreements
In order to work together in areas of public interest, some states have formed alliances and concluded regional agreements. Such treaties help to optimize and improve the effectiveness of governmental agencies in those areas. The registration and protection of trademarks is undoubtedly one of these areas of activity.
At the moment, we can distinguish the following regional associations of countries aimed at unified registration of trademarks and their protection in the territory of all participating states that are parties to the agreements:
- EU. Filing an application with the European Union Office for Intellectual Property (EUIPO), which was established by the decision of the merged countries, makes it possible to issue a EU trademark certificate.
- Benelux. The Benelux Office for Intellectual Property (BOIP) issues a trademark certificate which is valid in the territory of Belgium, the Netherlands and Luxembourg.
- African countries have set up the Organisation Africaine de la Propriété Intellectuelle (OAPI). OAPI allows the registration of a trademark in one of the 17 member states, including Gabon, Guinea, Mauritania, Congo, Senegal and others.
- Eurasian Economic Union (EAEU). Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia are planning to create a single trademark, which will be valid throughout the territory of the member states. The agreement on this was signed on February 3, 2020. In this regard, it is worth assuming that in the near future, trademark rights holders will be able to take advantage of the registration of a single trademark valid on the territory of the above-mentioned states.
In order to correctly choose the best way to register a trademark abroad, we offer the following alternatives schematized.
Recognition of a trademark as a notorious mark in Russia brings the following benefits.
- A trademark is granted perpetual legal protection.
- According to paragraph 3 of Article 1508 of the Civil Code, the scope of protection of a notorious trademark extends to all classes of goods and services, provided that the use of the designation: “...will be associated with the owner of the exclusive right to the notorious trademark and may infringe the legitimate interests of such owner”. This rule allows the holder of the notorious trademark to deal with the so-called “blurring” of the designation by reducing the volume of identical and registered in Russia trademarks for other classes of the Nice Classification and to prevent the registration of new trademarks that could lead to mixing of designations in the Russian Federation.
- Registration is a public recognition and confirmation of the widest recognition of the brand and product. Familiarity provides a high level of consumer demand, and thus the transfer of rights to such a trademark will bring more tangible profit to the right holder.
As a notorious trademark has a number of distinctive features in comparison with other trademarks, a number of additional requirements are imposed for its registration. Thus, the right holder must prove the following:
- The claimed trademark is intensively used.
- The designation is widely known in Russia.
- Consumers identify the trademark with the goods produced by the applicant.
The Administrative Regulations of the Federal Service for Intellectual Property Rights for Recognition of Trademark or Designation Used as Trademark a Notorious Trademark in the Russian Federation contains an extended description of the procedure and conditions for the recognition of a trademark as notorious in the Russian Federation. In accordance with sub-paragraph 3 of paragraph 17 of the above normative act, in order to confirm the publicity of the trademark, the right holder should provide the following information to the Patent Office at the stage of filing the application:
- On intensive use of the trademark or designation, in particular in the territory of the Russian Federation;
- List of the countries where the trademark or designation has become widely known;
- On the expenditures made to advertise the trademark or designation, e.g., annual financial reports;
- The cost (value) of the trademark according to the data contained in the annual financial statements;
- The results of a survey of consumers of goods on the question of the publicity of the trademark or designation conducted by a specialized independent organization, which can be drawn up taking into account the recommendations posted on the Rospatent official website.
The applicant may also provide additional information confirming the wide popularity of the used designation.
It is worth noting that for a foreign company, it will be difficult to obtain and process the above-mentioned information independently. In addition, it is important to add that the interaction between Rospatent and foreign persons is conducted through authorized patent attorneys.
Therefore, I would recommend that you seek legal assistance from Zuykov and Partners law offices. Over 2019-2020, thanks to the efforts of the company’s staff, Rospatent has recognized as notorious the following trademarks: RF Trademark No. 218 “Слобода”, RF Trademark No. 214 “Вязанка” and RF Trademark No. 210 “ZARINA”.
As a practicing patent attorney specializing in the recognition of trademarks notorious in Russia, I would like to note that the procedure of registration of such a trademark requires the participation of a competent specialist, but the benefits of such outsourcing is really worth it.
Every day, a person uses his or her own name. In informal settings and in business relationships, the name and surname are a visual identity. Pursuant to Article 19 of the Civil Code of the Russian Federation (hereinafter the Civil Code), an individual must use his or her own name when exercising rights and obligations. Using another person’s name or pseudonym is not allowed without the person’s consent.
Evolution of the Internet, social networks, as well as development and popularization of personal brands has led to the fact that many famous and media personalities have begun to use their own names and pseudonyms, as well as virtual names not only as a self-identity, but also as an object of commercial activity. Thus, singers, actors and bloggers begin to offer for sale clothes, athletes sell sports nutrition and equipment issued under their name, etc.
At the same time, they are usually not directly related to the production of goods. However, the use of their names increases sales and attracts fans of these people to the products. Great demand generates attempts by unscrupulous entrepreneurs to counterfeit such products and use other people’s names and pseudonyms without the consent of the owners.
This quite logically raises questions of how in such a case the name and the rights of the person are protected, and what actions need to be taken to get the fullest scope of rights to protect their own interests.
According to clause 1 of Article 150 of the Civil Code, the name of a citizen is an intangible asset, which belongs to him or her from birth or by virtue of the law. It is inalienable and non-transferable in any way. Pursuant to Article 151 of the Civil Code: “If a citizen suffers moral damage (physical or mental suffering) by actions that violate his or her personal non-property rights or infringe on non-material benefits belonging to the citizen, as well as in other cases stipulated by law, the court may impose on the violator the obligation of monetary compensation for the said harm”. Thus, if someone illegally uses the name of another person in any way, the latter has the right to demand the recovery of pecuniary compensation for the moral damage caused.
If we consider the name and surname as well as the pseudonym in the aspect of intellectual property, it should be noted that, unlike the corporate name of a legal entity, they are not listed among the objects of intellectual property in Article 1225 of the Civil Code. This is due to the fact that it is the name and surname of a person that most often is not the result of a person’s creative activity. Usually, parents choose a name from those already known and available. Thus, it is difficult to claim that a person’s name will be absolutely unique. At the same time, if one person will own the exclusive rights to the name, then others will not be able to use that name, which sounds absurd.
Part 4 of the Civil Code has somehow provisions dedicated to a person’s name. They are located in the section of copyright and related rights. This is due to the fact that it is in this area that the name of the creator of intellectual property has the greatest importance. The results of creative activity after publication become the object of public access and thanks to the name or pseudonym, people can associate the person with his or her works. General analysis of these norms indicates that similarly to the general provisions of the Civil Code, dedicated to the name of a citizen, the right to the name and pseudonym of the author are non-property and inalienable rights.
As for the branch of patent law and visual identity, there are no provisions devoted separately to the name of the creator of the object.
Given the name or pseudonym are not objects of intellectual property, as a general rule, a person who simply uses his or her own name to mark any goods, in the case of illegal use can only claim compensation for moral damages.
However, the current legislation allows the registration of a name or pseudonym as a trademark. In such a case, if the owner takes the necessary actions, and the object will be registered in the Register of Trademarks and Service Marks of the Russian Federation, the right holder will be able to use all the means of protection provided for the field of trademarks. This includes recourse to the court with claims: to prohibit the use on goods, labels, etc., the registered designation, the recovery of compensation and the destruction of goods with an illegally applied trademark. Agree that such sanctions cause more tangible damage to the offender.
Does anyone have the right to register a name or pseudonym as a trademark?
The legislator imposes a number of requirements for designations that can be registered as a trademark. To summarize, it is allowed to register a name or pseudonym as a trademark in the following cases:
- In such a case, the person can prove that he or she really owns the listed objects and their use is not contrary to the ethics standards and morality (in this case it means a pseudonym).
As an example, a trademark completely identical to the name and surname of the famous Russian singer Alla Pugacheva can be mentioned. Trademark No. 213030 “ALLA PUGACHEVA” is registered in Rospatent for use in respect of more than 15 classes of goods of the Nice Classification. The stage name “Дима Билан” is also registered as a trademark. Noticeably, at the time of his birth this famous performer was named Victor Belan, but in 2008 he changed it to Dima Bilan.
At the same time, subclause 2 of clause 9 of Article 1483 of the Russian Civil Code contains a direct indication of the cases when a name or a pseudonym may not be registered as a trademark: if the name or a pseudonym belong to another person and he or she has not given his or permission for registration.
Trademark applications which include names and pseudonyms, do not differ in legal status from applications for other trademarks and also undergo two stages of expert examination after the receipt of documents in Rospatent: formal examination and examination of the designation on the merits.
To increase the probability of registration of a trademark, which includes or consists of a name, we recommend strengthening its distinctiveness and uniqueness at the stage of creation of the designation. To this end, the applicant can add fancy elements, for example, perform the writing of the designation in a special font or add a graphic element.
In this case, even if the name is considered not protectable, and it will be withdrawn from legal protection, the trademark as a whole will be original and can be registered. And then offenders will not be able to use not only this trademark, but also identical and confusingly similar designations. An example of “enhancing” distinctiveness of a trademark, which includes the name and family name of a celebrity can be considered a designation with the name of Anastasia Volochkova, the famous Russian ballerina. Thus, the registered trademark № 270757 (currently legal protection is terminated), contains the name and surname of the ballerina, and a graphic element in the form of a swan with a crown.
In conclusion, it seems important to highlight the following:
- Any person can apply for registration of a trademark consisting of his or her name, surname or pseudonym.
- There are no special requirements for such trademark applications. However, the applicant must submit documents proving that it is his or her name, etc.
- If the applicant wishes to register someone else’s name or pseudonym, it is necessary to attach to the application a written consent of that person.
- In the case of a positive decision of the experts and the registration of the trademark, the right holder may make any requirements to the offenders provided for in cases of illegal use of trademarks. At the same time, the list of possible claims is much wider in comparison with the illegal use of the name and surname of a citizen.
- Possession of a trademark allows the owner to grant others the right to use the designation, which gives an opportunity to generate additional income to the right holder of the trademark.
One of the functions of Rospatent is to collect statistical data and compile annual reports, which are published on the official website of the patent office.
Such activity is due to a number of reasons. The information obtained allows to draw conclusions with regards to the following:
Increase or decrease of the applicant activity in different types of intellectual property rights.
Identify trends in the field of patenting and registration of trademarks.
Outline the priority activities for the Patent Office in the next year.
It should be noted that the statistical reports are of interest not only to Rospatent specialists, but also to patent attorneys and other persons interested in the development and trends in the field of patenting and registration of visual identity.
The measures taken by the states to contain the pandemic caused by COVID-19 led to a significant economic decline. In this regard, it is advisable to study the statistical data presented in the reports of Rospatent and assess the situation in the field of trademark registration. In this article we review the statistics for the period from 2018 to 2020. This interval is not chosen by chance: the first year will show the level of trademark registration before the pandemic, and the last two years will reflect the degree of influence of COVID-19 on the industry.
Flow chart 1
Source: Rospatent: 2020 Annual Report
The flow chart shows that, despite the difficult economic situation, the trademark industry continues to actively develop. At the same time, the number of trademarks that have received legal protection over the past three years has increased slightly. Consequently, applicants began to file more unregistrable trademarks.
It is also useful to consider the ratio of activity of domestic and foreign applicants separately.
Flow chart 2
Source: Rospatent: 2020 Annual Report
As noted by Rospatent specialists, the number of applications filed by foreign applicants decreased. These flow charts show a decrease in the number of trademark applications submitted by foreign applicants to the indicators of 2018. Apparently, due to the difficult economic situation, companies are trying to strengthen their positions primarily in domestic markets. Taking into account the growth of the total volume of applications filed with Rospatent, we can conclude about the high activity of Russian companies, which ensures an increase in indicators even taking into account the decline on the part of foreign applicants.
The following chart shows the top 10 countries from which most often trademark applications were sent to Russia in 2020.
Source: Rospatent: 2020 Annual Report
Also, we propose to consider the top 10 foreign countries in which Russian applicants most frequently applied for trademark protection under the Madrid system of trademark registration.
The information presented in the chart reflects the data received by WIPO for 2019, taking into account all classes of the Nice Classification indicated in the trademark applications.
Flow chart 4
Source: WIPO «World Intellectual Property Indicators 2020
Despite the fact that the data in Flow Chart 3 and Flow Chart 4 show data for different years, some similarity can be found between them. Thus, apart from Flow Chart, in Chart 4 and France in Flow Chart 3, the list of the first five states is identical. This indicates an active interaction between Russia, China, the U.S., the European Union and Germany in the field of goods turnover and registration of trademarks.
To summarize the above, we can conclude the following: despite the pandemic caused by Covid-19, Russia has seen an increase in trademark filing activity. At the same time, the increase is achieved mainly due to domestic entrepreneurs and companies. This contributes to the strengthening of the position of Russian producers on the domestic market and the restoration of economic balance.
Head of Department / Trademark Attorney
In June 2016, the UK’s referendum on EU membership resulted in majority of the votes cast being in favor of leaving the EU. In practice, it turned out to be a very complicated and difficult process, as the common space of the union states that existed for a long period of time led to the unification of trade markets, unification of the legal status of citizens of member states, application of generally accepted rules of law and the like.
Common legislative provisions were also generally applied to the objects of intellectual property and visual identity. As a result, the exit of Great Britain from the European Union took more than 4 years and for today there are still issues to be agreed and settled.
In this article, we propose to consider the current state of the trademark industry from a Brexit perspective. The most interesting issues are as follows:
What is the status of trademarks that were previously registered within the European Union?
How will pending EUTM applications be handled in the UK?
How should a Russian organization willing to register a trademark in the UK proceed now?
Are European Union trademarks valid in the UK?
Yes, trademarks that were previously registered with the European Patent Office will retain full protection in the UK. For this purpose, all signs registered by December 31, 2020 will be cloned into the register of trademarks in the UK. Similar action will be taken in respect of trademarks registered in the European Union through the Madrid system for the international registration of trademarks. It is worth noting that this will not entail additional material costs for the right holders and the process will take place automatically and free of charge.
The trademark will retain its original priority date.
After cloning, trademarks become completely independent of the mark registered in the EU.
The legal status of such a mark will be entirely similar to that provided for trademarks registered under the laws of Great Britain.
The right holder will obtain an electronic certificate of trademark.
What happens to pending EUTM applications
Given on January 1, 2021 no decision was made on the EUTM application, the applicant will have to reapply for registration of the trademark in the UK. At the same time, if such application is filed during the transition period which is established till September 30, 2021, then in case of positive decision on registration, the right holder will be able to keep initially established date of priority. The prerequisite for the above is the filing of a trademark application in respect of an identical list of goods and services as previously filed.
How to register a trademark in the UK now?
In order to a Russian or any other company obtain legal protection for a trademark in the territory of the UK now, it should choose one of the following options: to apply directly to the patent office of the country or use the Madrid system for the international registration of trademarks. The first option looks a better choice when registration is planned in one foreign country, in other cases it is better to use the Madrid system, which is designed to enable the right holder to optimize the time and cost of registering a trademark in different countries around the world.
To summarize the above, the following conclusions can be made:
Trademarks registered with the European Office prior to December 31, 2020 will be cloned and entered in the UK Trademark Registry. No action is required of the right holder for this. However, once entered into the register, the trademark becomes completely independent of the European Union trademark. This means that it can be separately challenged by interested parties and a separate payment of State duty will be required to maintain protection.
If by January 1, 2021 a decision on the application for registration of a trademark in the European Patent Office has not been taken and the applicant wishes to have the trademark protected in the UK territory, it should reapply to the UK Patent Office.
If a person or a legal entity want to register a trademark in the UK, it can now be done by contacting the national office directly or by using the Madrid system for the international registration of trademarks.
A trademark is used to distinguish and isolate products. The ultimate goal of using a visual identity is improving consumer awareness. A trademark is designed to highlight the product in the minds of buyers, to make the product memorable. Therefore, conducting sociological surveys allows professionals to determine the degree of familiarity of a trademark, or the likelihood of misleading consumers through the use of identical or similar trademarks by different manufacturers.
There are several cases where the results of a sociological survey can help the competent authorities to assess the recognizability of a trademark by consumers and the distinctiveness of the designation, as follows.
- Right holder files application with Rospatent for recognition of the trademark as well-known.
- Third party disputes the trademark applied for registration or files an opposition against the validity of an already registered trademark.
- Rights of a trademark owner are infringed due to the use of an identical or confusingly similar mark and the right holder takes legal action for protection of rights.
A sociological survey, regardless of the reason for conducting it, has the following common features.
- Conducting a survey is a right, not an obligation of the right holder or another person. The procedure is carried out on their own initiative, without the involvement of state authorities considering an application for recognition of a trademark as notorious, an opposition to the registration or operation of a trademark or a dispute on the protection of the rights of a trademark owner.
- Purpose of research is to determine whether or not there is a certain level of trademark recognition by consumers, its familiarity to the average consumer, the mixing of signs in the perception of the consumer, etc.
- Research is conducted by independent organizations, specializing in conducting sociological research.
- Consumer chooses the company that conducts the research and pays for it independently.
It is worth noting that the survey can be carried out both at the initiative of the trademark owner, and at the request of another interested person, if there is a legal dispute about the right to a trademark.
Sociological survey when recognizing notorious status of a trademark
According to the provisions of Article 1508 of the Civil Code of the Russian Federation (hereinafter the Civil Code), at the initiative of the right holder who believes that its trademark has become notorious in Russia through intensive use, such a designation may be recognized as a notorious trademark.
In order for a designation to acquire such a status the trademark owner must confirm the recognizability of the visual identity. The Civil Code does not contain a list of information that may serve as evidence of common knowledge. Thus, the right holder may attach to the application any documents which, in its opinion, confirm the publicity of the designation.
The use of the results of a sociological survey in this case can be considered a successful and justified way of proving notorious status. For explanatory purposes, the Ministry of Economic Development of the Russian Federation approved in 2001 Guidelines on Conducting Consumer Surveys on Publicity of Trademark in Russia.1
These Guidelines refer to the following.
- Territory of the survey. According to paragraph 3.3 of the above-mentioned enactment: “It is desirable to cover at least six localities of the Russian Federation with the survey. At the same time, it is a good idea to conduct the survey in the cities of Moscow and St. Petersburg. The right holder chooses the remaining localities independently, based on the territory where the goods are sold to a greater extent, the peculiarities of production of the goods and other indicators.
- Number of respondents. According to paragraph 3.4 of the Guidelines, it is advisable that the number of respondents interviewed should be not less than: “... 500 in any two localities and less than 125 in every other locality.” The maximum number is unlimited.
- Questions, the presence of which is a priority in the study (paragraph 3.6 of the Guidelines):
- whether the consumer is aware with the trademark;
- which person, in its opinion, is the owner of the trademark or the manufacturer of goods marked with this trademark;
- how long has the consumer been aware of the trademark;
- the source of information about this trademark for the respondent.
Sociological survey as evidence of the presence or absence of trademark similarity and confusion in the minds of consumers
Currently, there are no legal provisions governing the procedure for conducting sociological research in this area. There is no uniformly described methodology or list of questions to be posed. Drawing an analogy with a survey in the field of notorious trademarks, we can assume that it is appropriate to ask the following questions:
- Whether the consumer is aware with the trademark;
- Whether the consumer knows which company owns the trademark;
- What is the source of information about the trademark;
- Whether the presented trademarks seem similar to each other;
- Does it seem to the consumer that he or she could confuse these marks if they were on goods in the same range of products.
The results of the survey are attached as evidence of the person’s perception. The authorized body has the right to take into account the results of a sociological survey, but they do not necessarily influence the decision made.
To summarize the above, it is worth noting the following:
- Conducting a sociological survey is optional. The interested person has the right to conduct a survey, and the authorized body has the right to take the results of the survey into account. At the same time, there are no obligations of the designated subjects in this field.
- There are no strictly established requirements to the order of conducting sociological surveys or a clearly described list of questions to be answered by respondents.
- The results of a sociological survey provide data on the perception of the trademark by the end user, which helps the competent authorities to conclude on the presence or absence of similarities between trademarks, as well as to assess the recognizability of the designation and the existence of a connection in the perception of consumers between the trademark and the goods.
1Order of the Ministry of Economic Development of Russian Federation of June 1, 2001 No. 74 On Approval of Guidelines on Conducting Consumer Surveys on Publicity of Trademark in Russia.
Today, consumers are faced with an abundance of homogenous products, and the entrepreneur has to constantly act and work on product characteristics in order to maintain interest in the product. In this regard, rebranding, which some firms do on a regular basis, becomes particularly important. It is worth noting that, although the brand is a set of intangible assets of the enterprise, for the purposes of this article we will talk about trademarks.
The main reason for rebranding is the desire to maintain or increase the level of consumer demand. Based on this, it is possible to identify the following set of premises, which indicate the need for change.
- A drop in demand for a product. Vedomosti published a great example of how a bad designation can become “ballast” for a business. For example, the article describes how entrepreneurs who owned a fleet of RVs used the Turnberry Holiday Park brand. Over time, the owners noticed a decline in visitors. A community survey found that: “...nearly a third of potential customers are unlikely to come to them because they believe Turnberry Holiday Park has something to do with the nearby Turnberry Golf Club, which Donald Trump bought in 2014.”  That is, it was not the quality of service or other characteristics that affected the decline in visitor numbers. It was the designation the entrepreneurs used that played a negative role. Thus, the need for rebranding to change this situation became apparent.
- Changing consumer preferences. Tracking the priorities and interests of the group of consumers for whom the manufacturer’s product is designed is the main condition for the successful sale of products. The product has to be transformed in accordance with changes in the preferences of potential buyers, including, when possible, its price, quality and designation. So, taking into account the period when the healthy lifestyle related hype for started, the Coca Cola Company not only registered in 1982 a new Diet Coke trademark, but also launched a new sugar free low-calorie product. It is worth noting that from 1886 until 1982 the company's trademark remained unchanged. 
- Cultural and political trends and movements. Because of the mass and extensive media coverage of various world events, the latter now quite often become the reason to change trademarks, which that companies could successfully use for a long time before. The most vivid example is the rebranding of products of a number of corporations in the aspect of the American movement in support of Black Lives Matter, the largest movement in U.S. history in support of African-American population. So, the Nestle company decided to rename the Redskins and "Chico candy, where the names use words that can cause discomfort among consumers. As they point out in the RBC publication, Redskins is a slang term that could offend the Native American people, and Chico, which means kid, humiliates the Latin Americans”.  Likewise, PepsiCo decided to rename a line of breakfast products that used the Aunt Jemima designation, which is the name of a dark-skinned heroine from a famous American song.  Additionally, in support of racial equality, Dreyer’s chose to change the name of its Eskimo Pie ice cream referring to the Eskimo people, an indigenous group inhabiting the Arctic regions from Greenland and Nunavut, Canada and Alaska, USA, to the eastern edge of Chukotka, Russia.
The above facts indicate that the prerequisites for rebranding may be different. But, in fact, they all lead to the same thing which is a trademark change. Let’s see how this process looks from a legal perspective.
So, the entrepreneur has decided to rebrand. To understand what legally significant actions are required to perform, the following questions should be answered.
- Will the trademark become fundamentally new or the right holder wishes to change some elements of the designation?
- Does the entrepreneur plan to use the mark for the same classes of goods and services or not?
If the right holder has decided to make partial changes to the trademark, in certain cases it is possible not to register the new trademark. It is allowed to make minor design changes to the registered visual identity, provided that these transformations do not affect the main elements of the trademark. And also allow to change the list of goods and services in the direction of reduction. A detailed description of the procedure for making such changes can be found here.
In the case where the manufacturer decides on the complete transformation of the trademark, regardless of whether it will use a certain identity for similar classes of the Nice Classification or not, the entrepreneur has to re-register the trademark.
To summarize the above, it should be noted that most global corporations, such as Coca Cola, Nestle, PepsiCo and others regularly rebrand products, which indicates the justification and paying back of such a corporate policy.
Analysis of the existing provisions in the Civil Code of the Russian Federation and other legal acts shows that only trademark is legally described and enforceable. In accordance with article 1477 of the Civil Code of the Russian Federation, “... An exclusive right certified by a trademark certificate is recognized for the trademark, i.e., a designation serving for individualizing goods of legal entities or individual entrepreneurs”. This provision also indicates the possibility of registration of a service mark, i.e., to “designations serving for individualizing the works or services performed/provided by legal entities or individual entrepreneurs respectively”. In practice, these types of intellectual property are not separated and the concept of trademark is commonly used.
The other two types of intellectual property, i.e., corporate identity and brand name have no definitions in the domestic legislation. Can we use these terms as equivalent? To answer this question, let’s examine their origins. The use of the term “trademark” is due to the translation of this word from English. When translated this literally into Russian, it soundыexactly the same. That is the definition according to which trademarks are legally protected in foreign countries.
Hence, we can argue that trademark and service trademark are synonymous. However, such use is possible in periodicals or in informal conversations. In legal terms, it is correct to use the term “trademark” for designations used in Russia.
The “brand name” term has recently been actively used in publications in connection with the promotion of regional brands. The very concept of brand is complex and includes brand name, trademarks and other brand identities, business reputation and other intangible assets of the enterprise, which represent the company’s image. There is no legal concept, as well as a limited range of objects that can be attributed to the brand of the firm or region. Accordingly, it can be assumed that the head of the enterprise has the right to decide which objects belong to the brand of the own company and which do not.
However, if we compare the concepts of brand name and trademark, it should be noted that the first concept is broader, as using this term a person may have in mind not only a sign, but also a business reputation or a company name. When mentioning regional brands, people usually mean registered place of origin or geographical indication, which, like trademarks, are brand identity, but point to the territory of origin of a product, thereby attracting consumers to the product of a local manufacturer.
Thus, speaking of the equivalence of the concepts of trademark, corporate identity and brand name, it is worth noting the following.
- Trademark and corporate identity can be considered synonymous, but in Russia, the first concept is more correct from a legal standpoint.
- The brand name is a set of intangible assets of a company. When using “brand name” as a synonym for “trademark”, it is important to make sure that the interlocutor understands exactly what is being talked about.
- A company’s brand may also include other brand identity, such as a company name or a geographical indication.
- Currently, there is an increase in the number of registrations of “regional brands”, i.e., designations that draw the consumer’s attention to the connection between the quality of the product and the geography of its origin.
- Of the compared concepts, only a trademark is legally protected in Russia. Therefore, regardless of whether an entrepreneur considers the use of a corporate identity or a brand name, these objects need to be registered in the form of a trademark to ensure the exclusive rights of the owner. Alternatively, it is possible to register a designation in the form of another brand identity, for example, a geographical indication.
Often a trademark is already registered but not currently used by its holder or is used only nominally. This limits opportunities of others to use identic or similar mark.
In case when a trademark is registered but not used any interested person has the right to apply to the Intellectual property protection court for early cancellation of legal protection of the trademark.
Early cancellation of legal protection of the trademark can have the following results:
- Early cancellation of legal protection in regard to all goods and/or services mentioned in the trademark certificate
- Early cancellation of legal protection in regard to some goods and/or services that trademark holder cannot prove using or that the applicant is not claiming
A trademark is considered as a trademark in use when it is used to identify those goods and services for which it is registered. In this case the trademark is placed on goods that are in civil commerce and trademark is used when services to the third parties are rendered.
After three years in use a trademark becomes vulnerable.
- Legal protection of trademark can be terminated early in regard to all or some goods for the identification of which this trademark is registered due to its non-use within any three consecutive years after the state registration.
- The application for cancellation of legal protection of the trademark due to its non-use can be filed by the interested party to the Intellectual property protection court after the three years period mentioned above and if the trademark was not used before the date of the application.
- The trademark holder has to prove that the trademark is being used.
- When the court decides to cancel earlier the legal protection of the trademark due to its non-use the court can consider evidence provided by the trademark holder proving that trademark has not been used due to reasons beyond his control.
- Cancellation of the legal protection of the trademark means cancellation of the exclusive rights for this trademark.
Proper Trademark Use
- Trademark is used by the trademark holder.
- Trademark is used by the person who has the right to use it under the license agreement and in accordance with the article 1489 of the Civil Code of the Russian Federation.
- Trademark is used by the person who has the right to use it under the supervision of the trademark holder and in accordance with the p. 2 of the article 1484 of the Civil Code of the Russian Federation.
It is allowed to use a trademark with the alteration of some elements which does not influence its distinctiveness and does not limit the protection of the trademark.
Early cancellation of a trademark is a kind of civil sanction and is an effective measure preventing illegal and improper use of legally protected means of individualization of goods.
When a trademark becomes well-known
Any trademark can be cancelled early if it becomes well-known.
It happens quite often that goods marked by a certain trademark become very popular due to their high quality. The more popular such products become the more unfair competitors are trying to fake such products and sell them under the trademark which is used by the official manufacturer.
If the trademark holder does not prevent counterfeit production and does not protect his trademark then several manufacturers of one and the same product under the same trademark appear in the market. This leads to the fact that consumers perceive trademark as a kind of a certain product.
“Thermos” can be used as an example. It used to be registered as a trademark but now it is perceived solely as the product – a special container that keeps temperature of the product that was placed inside it.
If the trademark holder does not control the market and does not prohibit his trademark use then any interested person has the right to apply to Rospatent with the application to cancel early the legal protection of the trademark.
A trademark becomes well-known if a trademark is a specific designation which has been used for the identification of similar goods produced by different manufacturers. Consumers do not perceive this trademark as trademark of a certain manufacturer.
Such assumptions are also confirmed by the existing norms of the Civil Code of the Russian Federation (Articles 1508 and 1509 of the Civil Code). In order to register a trademark as notorious, the right holder must provide evidence that the designation is known. Click here to find out more about the peculiarities of registration of notorious trademarks.
The following circumstances may be an obstacle to registering a trademark as notorious:
- Confirmation of a notorious status requires significant tangible investments. For example, to confirm the claimed status, the trademark owner must submit to Rospatent the data of a sociological survey, information on the intensive use of the designation, etc.
- Consideration of the application for legal protection of a notorious trademark in the Russian Federation requires the payment of the state duty in the amount of 40 thousand rubles .
- The federal government agencies pay additional attention to the activities and goods of a company possessing a well-known trademark.
The last of these reasons should be considered in detail. A comprehensive analysis of law enforcement practice reveals that some foreign companies could not register well-known designations simply by filing an application and documents with Rospatent. To do so, they had to come into conflict with the patent office and defend their interests in court. Examples include such well-known marks as DOSIRAK, RAFFAELLO and ROLLTON . For these trademarks, Rospatent refused to grant a notorious status. Then the companies appealed against the decision of the federal government agency.
The case of Lindt, a well-known manufacturer of chocolate products, can be considered as another example of control by the federal government agencies over the activities of major manufacturers. As it is stated in the material published on the Federal Antimonopoly Service of the Russian Federation (hereinafter the Federal Antimonopoly Service) official website: “When promoting Lindt chocolate, the company emphasized long-standing traditions of production, immaculate reputation of the manufacturer and guaranteed quality of products” . Representatives of the antimonopoly service believed that such a statement caused a false sense among consumers that the company’s products supplied to the domestic and foreign markets had the same quality. As a result, the Federal Antimonopoly Service issued a reprimand in December 2019: “On the Need to Stop Actions That Bear Attributes of Violating Antitrust Law” . However, the manufacturer did not agree with the stance of the federal government agency and challenged the administrative act in court.  As Izvestia newspaper noted, representatives of Lindt chocolate noted: “...We supply the same products to Russia as we do to other countries of Europe and the world. It is produced in four factories: in Switzerland, France, Germany and Italy” .
Such a rigid stance of the federal government agencies is due to the fact that the quality of goods produced abroad and products supplied to the Russian market under the same trademark may differ, sometimes dramatically. If we look at it from the perspective of the patent office or the Federal Antimonopoly Service of the Russian Federation, as representatives of citizens’ interests, the reason for controlling such companies is obvious: the state protects consumers from being misled about the qualities and characteristics of the goods. After all, many buyers believe that a foreign firm is supplying goods of foreign manufacture or similar qualities.
However, it is worth noting that many big companies are ready for control by authorized institutions, seek recognition of the notorious status of their trademark and achieve that. This position is due to a number of substantial advantages of a notorious trademark compared with ordinary trademarks, as follows.
- Registration of a designation as notorious is a public recognition and confirmation of the widest popularity of the brand and goods on the territory of the Russian Federation and their unambiguous association with the right holder company.
- Both registered in Russia and unregistered trademarks may be recognized as notorious. This provision allows foreign companies not registering a designation in our country to provide the necessary level of protection for the reputed or famous visual identity and to prevent possible unfair practices by third parties.
- When a trademark acquires the notorious status, the object receives a legal protection without limit of time. Obviously, this is due to the fact that once the designation is widely known, then the rights holder has spent a lot of effort and money on the reputation of the trademark, the quality of products and is unlikely to stop using the designation.
- Yes, the recognition of a trademark as notorious requires tangible investments, but the indefinite validity of legal protection does not require renewal of registration every 10 years and accordingly pay the state duty for the maintenance of the trademark in force.
- Paragraph 3 of Article 1508 of the Civil Code indicates that the scope of protection of a well-known trademark applies to all classes of goods and services, provided that the use of the designation: "...will be associated with the owner of the exclusive right to the well-known trademark and may infringe the legitimate interests of such owner". The said norm aims to protect the interests of the right holder, as well as consumers who may be misled.
- Also, the provisions of the above rule of law allows the holder of a notorious trademark to deal with the so-called dilution by blurring of the designation. That is, trying to reduce the number of identical registered designations for other classes of the Nice Classification and prevent the registration of new trademarks that could lead to mixing of designations.
- Transfer of rights to use a notorious trademark brings much more profit than the conclusion of a license agreement for a standard trademark. This is due to the degree of familiarity of the designation and, consequently, the perceived high level of consumer demand for products highlighted by a notorious trademark.
Zuykov & Partners have a successful track record of registering notorious trademarks. For example, over 2019-2020, thanks to the efforts of the company’s employees, Rospatent recognized such notorious trademarks as trademark No. 218 Слобода, trademark No. 214 Вязанка and trademark No. 210 ZARINA. As a patent attorney specializing in the recognition of notorious trademarks, I would like to note that the procedure of registration of a designation requires efforts and participation of a competent specialist, but the benefits of using a notorious trademark definitely pay off.
While at the moment of filing the documents with Rospatent the applicant updates and specifies the related information, and then the information is analyzed by the experts at the stage of formal verification and substantive examination, the right holder, immediately after the issuance of the certificate or after a certain time, may apply for the modification to the data contained in the Register and the certificate.
It is allowed to edit information about the right holder, correct errors or make insignificant changes to the merchandise mark. Thus, according to paragraph 1 of Art. 1505 of the Civil Code of the Russian Federation, the following information is subject to possible modifications.
- Information about the right holder, including mailing address, name, location, etc.
- Data containing obvious and technical errors.
- List of goods and services for which the property designation is registered (list shortening)
- Essential elements of the trademark, if they do not change the essence of the property (only minor changes are allowed.
It seems justified to disclose in detail the last two items on the list. Correction of the list of goods and services in the form of reduction, as a rule, is due to the following fact. During the use of the property designation, the right holder may conclude that the trademark is used only for a part of the listed names from the Nice classification of goods and services applied for the registration of marks. Optionally, the right holder may have been sent a letter of claim, in which the owner of the early trademark asks to reduce the list of goods/services contained in the trademark registration to resolve a possible conflict. The decision whether to shorten the list or not remains at the discretion of the trademark owner. In some cases, it is advisable to apply for a shortening of the list of goods/services. For example, that will help to avoid disputes with third parties, which have the right to challenge the trademark registration. When extending the term of validity of the trademark, it will reduce the fee paid by the right holder for the maintenance of protection upon the expiration of the certificate.
As for the correction of the designation, the nature of amendments is due to the threat of infringement of the rights of owners of other trademarks in case of significant change of the already registered trademark. Therefore, Rospatent experts pay special attention to the significance of the changes made to the designation. Insignificance means those transformations which do not affect the dominant element of the trademark and do not affect the perception of the designation by the consumer in general.
To make use of the public service for modification of the certificate for the trademark, the right holder must submit the following documents.
- Document, confirming or describing the nature of the proposed modifications.\
- Receipt of payment of state duty. The calculation tool is available at the website of Rospatent: https://rospatent.gov.ru/ru/activities/dues/table
- Consent to the processing of personal data.
- Power of attorney, if the actions are performed through a representative.
The right holder has the right to personally apply to Rospatent, if it is not a foreign company, send an application by mail or use the electronic method of filing an application through the user web-interface.
Upon receipt of the documents, the specialists of the patent office shall establish the fact of payment of the state duty and check the documents on formal grounds. Then the experts assess the validity and possibility of modifications. The average time to consider an application is 75 work days.
Based on the results of the administrative procedure, the patent office staff decide to satisfy the request and make amendments or refuse to correct the previously recorded information. If the applicant gets a refusal, it is executed in the form of a reasoned decision, where the reasons for such position of the experts are indicated. If the right holder disagrees with the conclusion by Rospatent, the adopted decision may be appealed.
If the decision is positive, the changes are made to the Register and the certificate. The result of the procedure is reflected in the following documents:
- Public Register of Trademarks and Service Marks of the Russian Federation;
- Document on modifications;
- Notification on the application satisfaction.
Then the changes are published in the Rospatent official bulletin.
In accordance with paragraph 4 of Art. 1393 of the Civil Code, it is allowed to make the following types of modification:
- Information about the holder and / or author: change of name, location or residence, address for correspondence;
- Corrections of obvious and technical errors.
It should be noted that the list of cases described by the rule of law is open, and thus allowed other modifications within the types above.
To make modifications, the right holder should apply to the patent office and submit a modification in typewritten form in Russian.
The following data shall be specified:
- When the applicant is a natural person: full name, place of residence, address for correspondence, phone number, fax, e-mail;
- When the patent holder is a legal entity: full name, location, official name of the state of the patent hoder, mailing address for correspondence on the territory of the Russian Federation, phone number, fax, e-mail and company details: Main State Registration Number, Primary State Registration Number of the Individual Entrepreneur, TIN taxpayer reg. No. / RRC registration reason code and Individual Insurance Account Number;
- The number of the patent in the State Register;
- Type of changes according to the list below:
- Name of the IPR Holder;
- Name, Surname and Patronymic of the author;
- Address of the location, place of residence of the rights holder or the author;
- Address for correspondence;
- Correction of an obvious, technical error;
- Change in the composition of authors or rights holders.
- Also, when necessary, indicate a representative (patent attorney).
The applicant shall sign each page of the application. Legal entities stamp each page of application.
If a representative submits an application, a document confirming authority has to be attached. Also, together with the application, the consent to the processing of personal data in the form established by Rospatent shall be submitted.
In order to check the received information and make corrections, the applicant must pay fees for the following:
- Consideration of the owner's application for amendments to the State Register and taking a decision on the results of its consideration: 2,000 rubles for each modification to a patent;
- Consideration of the application of the right holder on introducing amendments to the design patent and taking decision on the results of its consideration: 2,000 rubles.
Filing of documents with Rospatent is possible in electronic form, by mail or directly with the patent office. Upon receipt of the application, specialists check the documents on their completeness and correctness of submitted information. The application shall be assigned a registration number and a date of receipt shall be recorded. Then the application shall be considered by Rospatent experts and as a result, the information shall be corrected or the applicant shall be refused to make corrections. In the latter case, the Applicant is sent a justified refusal.
The procedure for making amendments includes two stages: correction of information in the State Register (within three work days from the date of the decision); and correction of information in the patent (within two work days from the date of making amendments to the State Register). At the end, the applicant is sent a notice of satisfaction of the application and a document on making amendments.
The results of the administrative procedure are reflected in the following documents:
- State Register;
- Document on changes;
- In the notification of the applicant about the satisfaction of the application.
In accordance with paragraph 5 of Article 1393 of the Civil Code of the Russian Federation, Rospatent publishes information on amendments to the State Register in the official bulletin. Thus, any interested person gets an access to up-to-date information on the patent and design of interest to him.
Therefore, trade and business are major fields of use of trademark and service mark. It means that the main subjects interested in trademark registration are manufacturers or sellers of products or service companies. Under the Russian law, all these businesses are registered as legal entities or individual entrepreneurs.
Since 2017, Russia has been developing a legal framework for individuals who chose self-employment, also known as independent contractors or freelancers. This is a category of workers, which provides services on an individual basis and for this reason, they have the right to pay taxes in accordance with the special tax treatments. If we consider these persons from the point of view of trademark registration, it is important to highlight the following:
- Despite the fact that the business does not have the status of a legal entity or individual entrepreneur, it provides services.
- Such business may express a desire to register a service mark to shape perception and create an impression through the visible elements of its brand on the market.
- Thereupon, the service mark will fulfill the task specified in the Civil Code: individualization of services rendered by the person among other homogeneous ones.
In author’s opinion, the foregoing makes it clear that registration of a trademark by an individual is possible and justified. At the same time, the existing regulations do not allow that. Thus, paragraph 3 of Article 1512 of the Civil Code allows those concerned to challenge the certificate of the trademark during the entire period of its validity in case of violation of Article 1478 of the Civil Code, which states that the right holder must have status of a legal entity or individual entrepreneur.
When filling in the application for registration of the trademark, the applicant specifies the state registration numbers of the record on creation of a legal entity or an individual entrepreneur. If the field remains empty, the application will be turned down.
In addition, the legal provisions of paragraph 4 of Article 1514 of the Civil Code indicate the possibility of early termination of the mark, specifically, on the basis of a federal decision by the Federal Executive Authority on Intellectual Property on early termination of legal protection of the trademark in connection with the winding up of a legal entity or registration of winding up of an individual entrepreneur who are the right holders.
So, what the future may hold for trademark registration by individuals in Russia?
Answering this question, it is worth saying that the legislation of some countries provides for the possibility of registration of the trademark by individuals. Such countries, in particular, include the entire territory of European Union, as well as, for example, Ukraine.
Since the beginning of the development of the legal framework of self-employment in Russia, lawmakers and government officials have also focused on improving the intellectual property regulation with regard to the self-employed. As of August 2020, Mikhail Mishustin, the Russian Prime Minister charged the Ministry of Economic Development, Ministry of Education and Science and Russian Agency for Patents and Trademarks with the development of regulations for further improvement of the registration of trademarks by individuals. As announced on the official website of the Russian Agency for Patents and Trademarks, the proposed amendment should be submitted to the government in May 2021, for consideration of the State Duma it is proposed to submit it by the III quarter of next year.
The published information on the proposed amendment to the civil legislation makes it highly probable for the self-employed contractors who are in fact, individuals to be entitled to register trademarks in Russia in their own name.
A prerequisite was a disproportionate ratio of the high level of the development and promotion of the products manufactured with the use of the preserved folk crafts in the regions of Russia, and the relatively low volume of the registered means of individualization, where an indication to the geography of the place of origin of such products is used. Thus, according to the data presented during the Rospatent conference, only about 150 designations were registered since the establishment of the Institute of the name of the places of origin of products from 1992 and up to 2017.
There are several reasons for such state of affairs. Firstly, local manufacturers do not always understand the expediency of registering the designations that distinguish the product according to a territorial feature. Secondly, many entrepreneurs prefer to register trademarks because of the absolute and monopoly nature of having the exclusive rights. However, not all applicants are aware of the fact that the element indicating to the place of the manufacture in this case will likely be withdrawn from the scope of legal protection and it will become unprotected. Thirdly, in order to register a subject matter as the name of the place of origin of the product, the legislator lodges a number of requirements that not all regional manufacturers can fulfill. Namely: all stages of the manufacture of the products should take place on the territory of the geographical subject matter and the authorized state body should issue its opinion that the product is actually manufactured on the territory of the subject and it complies with the requirements of Paragraph 1 of Article 1516 of the Civil Code of the Russian Federation.
In 2017, the promotion and popularization of regional brands began. From 2017 up to 2019, 133 names of the place of origin of the products were registered. Thus, the indicators obtained over three years of the active state policy in this direction almost reached the number of the subject matters registered over the previous 19 years.
In order to continue the development of the regional manufacture, the increase of the level of the registration of the designations related to the geography of the origin, as well as within the framework of the fulfilment of international agreements, it was decided to introduce a new subject matter of intellectual property – a geographical indication.
The scope of legal protection of this means of individualization and the differences from the name of the place of origin of the products are considered and disclosed in detail in the article: “A name of the place of origin of the product and a geographical indication: what will the difference be?”.
In this article, we offer to consider the specific issues of the registration and the use of the geographical indications, which were raised by the specialists of Rospatent during an online conference:
- According to Paragraph 3 of Article 1522 of the Civil Code of the Russian Federation, to register the geographical indication, one should provide: “... the documents confirming that the applicant manufactures the product that has the relevant characteristics, which are largely related to its geographical origin, as well as the information indicated in Paragraph 2 of this Article.”
When filing an application regarding the name of the place of origin of the product, the opinion of the authorized body plays a confirming role. In the case of the geographical indications, the legislator does not disclose a list of the documents that should be provided. However, it is necessary to confirm a certain quality, reputation or other properties of the products, which are largely related to its geographical origin (the characteristics of the product). The representatives of the Patent Office explained that these should include: the specifications or the standards of the manufacture developed by the manufacturer; a test report of the finished products; publications in scientific, historical and literary sources and mass media; the copies of the diplomas of the national or international exhibitions or the fairs, where the product with that designation had been displayed; the results of the consumer surveys on the special qualities or characteristics of the product, which were largely related to the geography of the place of the manufacture, as well as other documents that, in the applicant’s opinion, confirmed the relationship between the properties of the product and the territory of origin.
- How long will the procedure for the state registration of the geographical indications last?
The Rospatent experts noted that due to the existing legal norms, the minimum period for considering the application and making a decision will be 4 months.
- Is it permitted to register the trademark that includes the geographical indication as an element?
Yes, if the applicant is the owner of the right to the geographical indication, the designation itself will be the unprotected element included in the trademark. The Rospatent representatives also paid special attention to some legal consequences of registering such designation: if the right holder lost subsequently the possibility to use the geographical indication, the trademark could also be invalidated.
- What will the Register of the Geographical Indications look like?
It was decided to create the Unified State Register of the Geographical Indications and the Names of the Places of Origin of the Products of the Russian Federation. Numbering the new registered subject matters will be continued taking into account the certificates that have already been granted.
Despite the fact that less than a month passed since the changes came into force, 3 applications were already filed by the applicants for the registration of the geographical indications. According to the official information, it is planned to protect such designations as:
- “NALCHIKSKIY” for such products as “soft drinks; mineral and sparkling beverages; fruit beverages and juices; syrups and other compositions for the manufacture of soft drinks.”
- “NALCHIKSKIY” for such products as “sparkling beverages and other soft drinks, including sparkling juice-containing beverages and lemonades manufactured in the city of Nalchik from the local fruit and berry raw materials and the local mineral water” (in respect of another applicant).
- “NAPA VALLEY” for the product “wines.”
In conclusion, it should be noted that the main purpose of the introduction of the geographical indications in Russia is to support and to encourage the manufacture of the products at the territory of the regions. The analysis and the character of this legal concept allows making the optimistic forecasts for increasing the applicant activity in the field of the registration of the designations indicating to the territory of the manufacture.
The analysis of the cited norm shows that the domestic legislator gives the manufacturer or other person a possibility to obtain the exclusive powers to the original design or to the appearance of the article.
An application for the registration shall be filed in respect of one subject matter or an interconnected group of solutions. The latter variant is also used by applicants to save money. Thus, the author of the result of intellectual activity gets a possibility to file the application for the registration of various variants of the subject matter, the set that makes up the common composition or the group of the parts of an integral unit.
However, it should be borne in mind that the norms of the Civil Code of the Russian Federation contain the condition, which is necessary to be fulfilled in order to make permissible the registration of such subject matters within the framework of one industrial design. It is indicated in Paragraph 1 of Article 1377 of the Civil Code of the Russian Federation that the application may relate to: “... the group of the industrial designs that are interconnected so that they form a single creative concept (the requirement of the unity of the industrial design).” Only if the requirement of the unity of the industrial design is observed, it shall be allowed to indicate the group of the subject matters. If the described condition is not observed, the Patent Office experts advise to divide the subject matters and to divide them out of the office proceedings regarding the original application into the separate office proceedings. In this case, it is advisable for the right holder to file the divisional applications to maintain a priority. As a result, the applicant shall receive several applications regarding the different subject matters, while the priority shall be maintained and it shall be established according to the date of filing the first application.
As practice shows, in Russia, there are quite high requirements for the unity of the solutions claimed within the framework of the application for an industrial design. Some company addressed the patent attorneys of Zuykov and Partners with a request to file to Rospatent an application for the registration of the industrial design “A Gun to Spread Sealing Foam” based on the Convention Chinese application. The application included the description of two variants of the same subject matter; the difference was in the presence of a small button on a housing. During the examination, the experts of the Russian Patent Office concluded that the above difference was “an essential feature determining the aesthetic peculiarities of the appearance of the claimed solutions,” therefore it was impossible to include two variants in one application. The applicant was offered to divide the solutions and to file the divisional application or to exclude one of the claimed variants.
A number of the creative solutions that fall under the concept of an industrial design also comply with the conditions of protectability required for trademarks. In this case, the owner can register them as one of the above subject matters of intellectual property or simultaneously in two industries, what will serve a reason for cross protection.
The application for the registration of an industrial design shall pass a standard check procedure at the Patent Office. The applicant shall be authorized to file the divisional application at any step of the examination. This application is a new submission based on the original documents received earlier by Rospatent together with the different application. It is logical to assume that certain conditions must be complied for the division:
- Both applications are filed by the same person.
- The earlier submission is not withdrawn and it is not recognized as withdrawn.
- The industrial design is disclosed in the original application.
- If a decision to grant a patent is made regarding the original application, the divisional application shall be filed before the date of the registration of the industrial design.
The right holder shall file the divisional application in the same way as the ordinary one. However, the form should contain the date of filing of the original application as the priority of the industrial design and its number should be written in the special field of the document. In addition, the applicant shall attach his request to divide the application out of the original application into the separate office proceedings requesting to establish the priority according to the date of filing the original application. The relevant request shall also be filed to the original application indicating that the application is divided out of this application into the separate office proceedings, as well as indicating the number of the divisional application.
After the registration of the submission, the Rospatent specialists shall carry out an examination as to form and they shall find out whether the above conditions are complied, and they shall also determine:
- Whether both applications are identical.
- The scope of the requested legal protection, which should be less than the one claimed in the original application.
If all the requirements are complied, the application shall be recognized as a divisional one and it shall be accepted for consideration. The priority according to the original application shall be established regarding it. The applications shall be checked then by the experts as the independent submissions.
Otherwise, the applicant’s application shall be refused to be accepted for consideration as a divisional one, and due to this reason the priority according to the date of the original application shall not be established regarding it.
The advantages of dividing the application
Such actions of the right holder of the result of intellectual activity are due to a number of positive consequences:
- If there are the problems with the consideration of the application, the person shall be entitled to execute the divisional application, to claim the smaller scope of legal protection, but to speed up the registration process (for example, when registering the group of the solutions that form the single creative concept).
- According to Paragraph 4 of Article 1381 of the Civil Code of the Russian Federation, the priority of the divisional application shall be established based on the original submission. This allows the applicant maintaining the competitive advantage obtained thanks to the original submission to Rospatent.
In conclusion, it is important to note that the divisional application is a kind of the submission that is based on the previously filed application and, under certain circumstances; it allows the right holder of the subject matter maintaining the priority and continuing the examination procedure regarding the claimed industrial design.
Programs for Electronic Computing Machines
Other Subject Matters
Thus, it is obvious that the number of the claimed trademarks is impressive and it accounts for more than a half of the total number of the requests received by the Patent Office.
What the trademark priority is established for
Taking into account the fact that the main task of the means of individualization is the individualization of a product, creating a new and unique designation becomes more and more difficult every year. The probability of filing the similar marks for the homogeneous products by different applicants is high, as well as the illegal use of the registered subject matter by unfair competitors. In these situations, the established date of the trademark priority will play a significant role.
The registration of the trademark has two important legal consequences for the applicant:
- It is exactly the right holder, whom rights to the registered subject matter are conferred to.
- The owner of a protection certificate may dispose of the exclusive rights to the means of individualization and regulate the further circulation of the mark belonging to him. And also, if necessary, he may apply for the defense of his legitimate interests.
The trademark priority is an officially confirmed date from which the right to the claimed and “disclosed” trademark is recognized as belonging to the subject. The designated period acts as a sort of a starting point for the beginning of the legal protection of the means of individualization (if the trademark is subsequently registered).
Rospatent assumes the authority to protect the means of individualization from the registration of the identical and confusingly similar designations for the identical products and uses the priority date in the case of filing for the registration two identical or confusingly similar marks in respect of the similar classes of the ICGS. Also, it should be taken into account that the priority date is used by judicial authorities in the case of disputing the Rospatent’s decisions to grant or to refuse the registration of the trademark.
How the experts of the Patent Office determine the priority
The fundamental provisions in this issue are the ones of Article 1494 and Article 1495 of the Civil Code of the Russian Federation. There are several ways to establish the date of the trademark priority:
- According to a general rule. In Article 1494 of the Civil Code of the Russian Federation, the legislator points out that the priority shall be determined on the date of filing the application to the Federal Executive Authority.
- On the date of the receipt of the original application, in the case of filing the divisional application. If in the course of the examination the applicant decides to file the divisional application, the priority date of the latter will be the same as the priority date of the original application.
- Taking into account the Convention priority. Russia is a member country to the Paris Convention for the Protection of Industrial Property. In this regard, the obligation to grant the Convention priority is executed within the framework of the international Agreement. In the case, if Rospatent receives the application for the trademark that has been previously received for the registration in one of the member countries of the Paris Convention, the priority shall be determined on the date of filing the original application. Paragraph 1 of Article 1495 of the Civil Code of the Russian Federation outlines the period for filing the application for the Convention priority – not later than 6 months from the date of filing the application in the member state to the Agreement.
- With the use of the exhibition priority. Thus, the legislator protects the rights of the holders of the trademark that have been disclosed during various international exhibitions on the territory of the countries that ratified the Paris Convention. In this case, according to Paragraph 2 of Article 1495 of the Civil Code of the Russian Federation, the priority shall be calculated from the date of the open display at the exhibition of the exhibit with the trademark, if the applicant files the application during subsequent 6 months.
If the owner of the designation claims to the use of the Convention or exhibition priority, it is necessary to fulfill a number of the requirements: to inform about his wish to use the chosen kind of the priority in the application or during 2 months from the date of the receipt of the documents by Rospatent, and also to confirm the lawfulness of the claims, and to submit evidence to the Patent Office not later than 3 months from the date of filing the application.
5. On the date of the international registration of the trademark. The norms of the Civil Code of the Russian Federation allow establishing the trademark priority on the date of the international registration of the designation in accordance with international agreements. Currently, Russia participates in the Madrid System of the registration of trademarks and it supports the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. Thus, when filing the international registration to Rospatent, for which the Madrid System has been used, the priority date can be established on the date of filing the international application in the country of origin or on the date of the receipt of the documents by the International Bureau. In addition, if the international registration is filed on the basis of the national application during six months from the date of its filing, the Convention priority may be established in respect of it on the date of filing the basic application to the Office of Origin.
6. In conclusion, it should be noted that the applicant may use the right and choose one of the above priorities, if he has the relevant documents and he can confirm the right to the priority sought, for example, the Convention one. In this case, it is preferable to choose the one by which the earliest date of the trademark priority is established.
To ensure the legal protection of a means of individualization abroad, there are several international systems of the registration of trademarks. They differ in the composition of the member countries, the procedure of the registration, and the authorities authorized to implement it. The most well-known and frequently used system is the Madrid System for the registration of trademarks. Obtaining protection under such system requires the registration of the designation in the national Patent Office. If the registration is cancelled within 5 years from the original date at the national Patent Office, a certificate on the international registration shall also be cancelled.
Despite the fact that more than 120 states are the members of the system, there are still some states that do not support the Agreement. Or for certain reasons, the person does not wish to use the Madrid System of the registration. In this case, depending on the presumed countries of the use of the means of individualization, the owner of the trademark may use other foreign systems of the registration of designations. The most popular among them include:
• The European Union Intellectual Property Office (EUIPO).The institution allows obtaining the registration of the trademark of the European Union (Community Trademark — CTM) in 27 countries of the European Union. The general information is available on the organization’s website: https://euipo.europa.eu/. This registration does not require the registration in the national Patent Office. It shall not be allowed to grant protection in one or more countries of the European Union. If the grounds for a refusal occur in one of the states, the registration shall be rejected. The trademark shall be valid during 10 years, but if the designation is not used during 5 years, then the protection may be terminated. The total costs for obtaining the European trademark are lower than when obtaining the registration in each member country separately. If the registration of the common trademark is refused, it is possible to convert the application into the national application in one of the states.
• The Benelux Office for Intellectual Property (BOIP).According to the information provided on the official website https://www.boip.int/en, the registration of trademarks in the Benelux countries (Belgium, the Netherlands, Luxembourg) implies the existence of a single legal space. In accordance with the legislation of the countries, only the registered trademarks shall be defended. Before the registration, the trademark shall be checked for its distinctive ability or uniqueness.
• The African Intellectual Property Organization (Organisation Africane de la Propriete Intellectuelle — OAPI) — http://www.oapi.int/index.php/en/.The institution grants defense to intellectual property of the French-speaking states — the former colonies. The system allows registering the trademark in one of 17 member countries: Gabon, Guinea, Mauritania, Congo, Senegal and others. Such protection shall cover the territory of all allied states.
The owner of the trademark is also entitled to file the application for the registration of the designation directly to the national Patent Office of the chosen country. The list and the email addresses are publicly available on the Rospatent website: https://rupto.ru/ru/links/pat_vedomstva. At the same time, it is important to take into account the requirements imposed by the institutions, as many Patent Offices accept documents from foreign citizens only through authorized representatives. These are the patent attorneys, who have the national certificate.
The registration of the trademark in the Offices of other states is preferable in a number of cases:
1. When the designation is not registered in the Patent Office of the applicant’s country (for Russia — in Rospatent). This allows registering the designation in the foreign countries without having the national registration or after a refusal in it.
2. The registration in the foreign national Offices is economically justified, when it is necessary to register the trademark in a limited number of countries.
An individual fee shall be paid to each chosen Office, usually in national currency. If there are no obstacles to the registration, the applicant becomes the right holder of the trademark and he receives the certificate. Due to the territorial principle of protection, the right holder may use the mark and defend the rights to the designation only in the country, where it is registered.
In the end, a number of conclusions should be noted:
⎯ The applicant is entitled to choose how to file the application for the registration of the trademark: using the international system or the national Office of the particular state.
⎯ The registration of the designation through the international organizations is advantageous, if the right holder intends to use the means of individualization in the majority or all countries that are the members of the chosen system.
⎯ Obtaining the certificate for the trademark in the national Offices is preferable, when it is necessary to register the subject matter in one or two countries, or the state is not the member of the established systems of the international registration. Such application does not depend on the Russian application or the certificate, what allows the applicant, if necessary, avoiding (bypassing) the registration of the designation in Russia.
⎯ The correct choice of the system of filing the application allows saving money on the payment of the state fee and time for carrying out an examination.
The World Intellectual Property Organization (WIPO) is a link between Patent Offices, and also, it simplifies significantly for a right holder the registration of a designation in the foreign countries.
It should be taken into account that filing an application under the Madrid System shall be allowed only after filing a national application or the registration of a trademark in the country of origin.
The application for the international registration must be filed to the national Patent Office, and for the citizens of Russia such Office is the Russian Patent Office.
In order to file the documents for the international application, the documents must be filled out in English or French, at the applicant’s choice. An MM2 form is publicly available on the WIPO website (http://www.wipo.int/madrid/en/forms).
The applicant must indicate in the application:
• The Patent Office through which the international application is filed.
• The name of the applicant. If the name of the person is written in non-Latin letters, it must be indicated in the form of transliteration into Latin letters in accordance with the phonetics of the language of the international application. When the applicant is a legal entity, transliteration may be replaced by a translation into the language of the international application.
• The address of the owner of the designation or his representative, including the address for correspondence, the telephone, the Fax, the e-mail address, the preferred language of correspondence (English, French or Spanish).
• Whether the applicant is a resident of the country, which Office is filing the application for him.
• The information about the basic national application or registration. As well as the priority date of the application, if the applicant claims to the priority of the earlier filing. At the same time, the place, the number, and the date of filing the earlier application shall be indicated.
• The image of the claimed trademark. The reproduction may be two-dimensional, graphic, or photographic and it must fit into an 8 x 8 cm square. The mark must be identical to the object indicated in the original application or the basic registration.
• The peculiarities of a colour design, if any. The right holder shall describe the claimed colour in words (one or more) and he may indicate additionally in which colour the main parts of the means of individualization are made.
• The description of the designation. If the description is present in the basic application, the applicant may make a decision to include or to omit the latter in the international application. If the mark does not belong to any of the traditional types of the trademarks provided for in the international application, the space for the description may be used to clarify the nature of the designation, for example, the applicant may indicate that the object is a hologram or a traffic sign. However, in this case, the description must still correspond to what is contained in the basic designation. However, the International Bureau shall not check the accuracy of the description.
• A refusal from protection. If the applicant wishes to refuse from the protection of any element of the mark, this should be mentioned in the application.
• The list of the products and services for which the international registration is requested. The right holder shall indicate the class and the list in accordance with the latest version of the ICGS. For this purpose, it is advisable to use the Manager of Products and Services of the Madrid System located on the WIPO website: https://wipo.int/mgs/.
• The list of the countries, where the applicant requests protection for the means of individualization.
Taking into account the international nature of filing the documents, the subsequent registration and the use of the trademark in the foreign countries, the indication of the following is of particular significance:
• Transliteration of the letter and digital elements. The person shall indicate the phonetic representation of the designation in Latin letters following the phonetics of the language of the international application. If the object consists of the letters other than Latin symbols, or the digits other than Arabic or Roman digits, then transliteration must be provided for them.
• A translation of the word elements. The translation may be made into English and/or French, and/or Spanish, regardless of the language of the international application. The International Bureau shall not check the accuracy and it shall not put in question any translation of the mark. In the case, when in the applicant’s opinion the trademark cannot be translated, this should be indicated in paragraph 9 (c) of the form. These actions are necessary in order to prevent a request for the translation.
When filing the application for the international registration, the person shall pay the following fees:
• a basic fee;
• an additional fee for carrying out an examination in the listed states;
• the additional fee for each indicated class of the products and services, if there are more than three of them.
The application shall go through the following steps since the date the documents have been filed to the Office of origin by the trademark right holder:
1. Receiving by the national Patent Office, where the documents shall be certified and then sent to the WIPO.
2. Carrying out the formal examination within the framework of the WIPO, registering the application and notifying the countries indicated by the right holder, where the registration is planned.
3. Carrying out the check of the designation as to substance in the Patent Offices of the claimed states and making decisions by them.
4. In the case of a positive decision, the trademark shall be registered, the WIPO shall make an entry in the International Register and notify the owner of the means of individualization.
In conclusion, it should be noted that the registration of the trademark under the Madrid System is valid during 10 years with the possibility of a further extension for the same period an unlimited number of times.
If the owner of an intellectual property object decided to register it in Russia and obtain an official certificate of his own exclusive rights, then the first step on this path is to apply to the patent office with the necessary package of documents.
After the specialists of Rospatent accept the application for consideration, the submitted documents and information should be checked during a two-phase examination. At each of these phases, various difficulties and ambiguities may arise, that’s why an expert request will be sent to the applicant. It should be noted that in this way the owner of the result of intellectual activity gets the opportunity to clarify the issues that have arisen and save time, which otherwise would have to be spent on re-submitting documents for a new examination.Expert request during formal examination
In accordance with the provisions of the Civil Code of the Russian Federation, at the stage of formal examination, Rospatent specialists can send the applicant a request in the following cases:• When there are no documents confirming the payment of the official fee.• If you need to amend the information or provide missing documents.If the person who submitted the documents for registration of the intellectual property object responded to the request of Rospatent and submitted the documents and information required, the experts will examine these materials and, in case of a positive decision, send an application for substantive examination.An expert request during the substantive examination of the declared object
The second stage of the examination is the study of the claimed intellectual property object for its compliance with the requirements of patentability. The list of such conditions is contained in part 4 of the Civil Code of the Russian Federation.So, during the examination, experts can send a request to the applicant with a proposal to:• Clarify the list of goods and services. When the application contains a list that is not correctly grouped in accordance with the ICGS classes. Its presence allows specialists to conduct a full and objective examination of the designation in the future.• Provide additional materials (for example, various types of holographic, three-dimensional trademark), without which a full verification of the object is impossible. It is important to know that there can be several such requests, and each of them can be crucial in making the final decision on the basis of substantive examination.
In conclusion, worth to note that the applicant who received the examination request should be aware of the following circumstances:• The expert request is primarily aimed at supporting the applicant and interacting with the state authority.• Thus, experts are trying to help a person obtain the registration of the intellectual property object that he applied for.• It is important to comply with the specified deadlines for sending a response to a received request.• It is worth paying special attention to the correctness of the information specified in the answer and the completeness of the materials provided.• The absence of the applicant’s response to the request within the specified period leads to the withdrawal of the application and the termination of further prosecution.• In the case of sending a request or response using postal service, it is possible to skip the acceptable deadlines due to circumstances beyond the control of the parties to the correspondence. In this case, a subsequent appeal to Rospatent with a request for acceptance of documents and restoration of missed deadlines is acceptable. If this does not help, then the applicant has the right to file an objection with the Rospatent Chamber for Patent Disputes on the decision to declare the application withdrawn.
It is possible to distinguish your product in a number of similar products and significantly increase the volume of sales using the designation of origin. The effectiveness of using this means of individualization is confirmed by an active state policy in the framework of promoting and popularizing regional brands. The main feature of these designations is to attract consumer attention to the geography of the place of manufacture of goods and services. Thus, buyers get the opportunity to purchase products that have special properties and qualities that are due to the traditions of Russian manufacturers.
The right to use designation of origin registered by the manufacturer allows, on the one hand, to emphasize the uniqueness of the product, its quality, properties and gain advantage in its promotion, and on the other hand, to protect the manufacturer from unfair competition, which is significant, state-guaranteed, support for entrepreneurship.The legal definition of the designation of origin as an object of intellectual property is contained in part 1 of article 1516 of the Civil Code of the Russian Federation: “... a designation representing or containing a modern or historical, official or unofficial, full or abbreviated name of a country, urban or rural settlement, locality or other geographical object, as well as a designation derived from such a name and made known as a result of its use in relation to the goods ..."
You can apply for registration of the designation of origin by yourself or using the services of a patent attorney, whose skilled work will significantly save time and labor.An application may be submitted by both an individual and a legal entity. In the case of filing documents by traditional methods on paper, it is allowed to submit:• to the documents of correspondence receiving window in Rospatent or FIPS;• by post to Rospatent and FIPS;• by fax, followed by the provision of original documents.
It is also possible to submit documents using electronic networks. Electronic submission of the application is carried out on the website of Rospatent (https://new.fips.ru/podacha-zayavki/podacha-zayavki-na-tovarnyy-znak/) or on the unified portal of the State Service of the Russian Federation (https://www.gosuslugi.ru/ 16376/1).
It should be noted that the submission of documents in electronic form has several advantages:- registration of applications is carried out 24/7, including weekends and holidays;- when filing an application in electronic form, the cost of the duty is reduced by 30% compared with other options for filing applications;- the speed and reliability of the workflow, sending and receiving documents is recorded in the user's personal account with an accuracy of a second.A certain inconvenience is caused by the fact that in order to register an application it is necessary to first issue a qualified certificate of electronic signature, which can be obtained at an accredited certification center. The list can be found at: https://digital.gov.ru/ru/activity/govservices/2/#section-list-of-accredited-organizations.
To obtain a certificate it is necessary:- for individuals: personal presence, passport, personal insurance policy number (SNILS);- legal entities: corporate establishment documents, certificate of entry in the Unified State Register of Legal Entities, certificate of registration with the tax authority;- electronic media for recording the certificate.
You can select the following documents necessary for applying for registration of the designation of origin:¾ An application for state registration, which indicates: contact details and details of the applicant, the claimed designation, indication of the goods, description of the goods, description of the special properties of the goods, place of origin of goods, list of attached documents.¾ Consent to the processing of personal data, in which the applicant expresses his consent to the processing of information submitted by him by the federal executive body.¾ Document on the payment of state duty: for registering an application and conducting an examination (to facilitate the work, the website contains details for payment and an electronic form for individuals).¾ The conclusion of the authorized body, confirming the presence of specific properties of the goods, determined by the special location of its production (according to paragraph 5 of article 1522 of the Civil Code of the Russian Federation). Obtaining and providing an opinion is optional, but highly desirable since the decision to register is based to a large extent on the conclusion of authorized bodies: the Ministry of Health of the Russian Federation, the Ministry of Industry and Trade of the Russian Federation, the Ministry of Agriculture of the Russian Federation, the Federal Service for Alcohol Control and others (depending on the type of product). These institutions issue opinions on the basis of special regulations. Often, obtaining an opinion causes much more difficulties than the entire process of filing and registering designations of origin. It is worth noting that at the initial stage, an application is admissible without the conclusion of an authorized body. However, later the document still needs to be provided and attached to the application materials, which can cause a number of difficulties. In this regard, this procedure is not recommended.The verification of the eligibility of the claimed means of individualization takes place through a two-stage examination by Rospatent:- A formal examination, which consists in receiving and verifying the correctness of paperwork, duties, additional materials. If the result is positive, an examination of the means of individualization is conducted for compliance with the conditions of patentability.- Examination designations. It is carried out subject to a positive decision based on the results of a formal examination. At this stage, the compliance of the claimed designation with the requirements of the legislation of the Russian Federation is checked. As a result, the expert of Rospatent makes a decision on registration of the designation or on refusal to register designations of origin.In the event that a positive decision has been made to register the designation of origin, the applicant has to expect the following steps:¾ Payment of state duty for registration of designation of origin and issuance of certificate.¾ Obtaining a certificate certifying the right of the holder to use the registered means of individualization.If the applicant received a refusal to register the designation, it is possible to appeal the decision and actions of Rospatent.And also you have to consider the following information:• The total term for the provision of registration services for the designation of origin (reception, registration, examination and issuance of a certificate) takes about 18 months.• The term for issuing a certificate is one month from the date of payment of the fee.• The validity period of the exclusive right to the NIPT is ten years, however, its extension is possible an unlimited number of times.• The filing date of the application is considered the filing date of all documents, and in case of non-simultaneous filing - the filing date of the last document.• Information on applications filed for registration of designation of origin is published in the official bulletin.From the above review of the application submission procedure, we can conclude: self-submission of documents in electronic format and registration of the designation of origin is possible and real. You should be prepared for the time costs for issuing a qualified certificate of electronic signature and obtaining the conclusion of an authorized body. It is important to carefully fill out all the required documents, control in your personal account the correspondence with the registration authority and respond to received requests in a timely manner. Any mistake may result in a refusal to register the designation and the whole procedure will have to be completed first.Therefore, it is advisable to entrust this responsible matter to professionals who have experience in filling out documents and their subsequent submission to the patent office. This will save time, effort and money.
If during the examination, a Rospatent specialist concludes that it is impossible to register the designation for any reason, then the decision to refuse state registration of the trademark is made.
Despite the fact that this act of the patent office completes the examination of the means of individualization as part of the examination, the applicant has the opportunity to defend his point of view, which is different from the opinion of the specialists of Rospatent.
So, upon receipt of a refusal to register a trademark, the owner of the designation has the right to file an objection with the Chamber for Patent Disputes.
The appeal is submitted by the person who filed the application in person or through an authorized patent attorney, whose competence should be confirmed by a power of attorney indicating the extent of his authority. Be sure to include the identification information of the entity that sent the documents, as well as the address for correspondence.
An objection to the Chamber for Patent Disputes is registered and an incoming number is assigned to it. Going forward:
• If the appeal meets the conditions for filing, then within one month from the date of its receipt by the Patent Disputes Chamber, a notice of acceptance of the objection to the consideration is sent to the person, which indicates the date of the meeting of the board for consideration of the appeal.
• When the documents do not comply with the filing conditions, a notice is sent within one month from the date of receipt that the objection is not accepted for consideration.
• In some cases, the Patent Disputes Chamber may, within one month from the date of receipt of the objection, send a request with a proposal within three months from the date of its receipt to submit additional information necessary for a full consideration.
Opposition cases are examined collectively at a meeting of the Patent Disputes Chamber composed of at least three of its members, including the chairperson and the reviewer, approved by the chairman of the Patent Disputes Chamber.
The decision of the Chamber of Patent Disputes following the results of proceedings to refuse to register a trademark should contain: a reasoned position of the board and a conclusion on registration or on refusal to register a trademark. Based on the results of the consideration of the objection, the Patent Disputes Chamber may decide:
• On satisfaction of the appeal.
• On the refusal to satisfy an objection.
• Or the termination of office work.
In this case, the decision of the Patent Disputes Chamber may provide for the annulment, amendment or upholding of the contested decision.
If the applicant does not agree with the decision of the Chamber for Patent Disputes, then he has the right to apply to the court to resolve the conflict.
Currently, a specialized body for the resolution of disputes in the field of intellectual property operates within the framework of the arbitration system. So, according to part 4 Article 34 of the Arbitration Procedural Code of the Russian Federation, the Intellectual Property Court, as a court of first instance, considers disputes on contesting decisions of federal executive authorities on granting or refusing to grant legal protection to trademarks.
The statement of claim shall be submitted to the arbitration court within three months from the day when the person became aware of the violation of his rights and legitimate interests, unless otherwise provided by federal law. The claim is subject to standard requirements for such documents. The motivated and clearly stated position of the plaintiff is of particular importance.Based on the results of the consideration by the court of first instance, a well-founded decision is made, which can be appealed to a higher judicial authority.
Article 1352 of the Civil Code of the Russian Federation “Conditions of Patentability of an Industrial Design” contains a definition of this object of intellectual property, and also lists the requirements that it must meet in order to obtain legal protection in Russia.If the owner of the result of creative work wants to patent the object and considers it relevant to the conditions of patentability, then in order to obtain an official title of protection, it is necessary to contact the Federal Service for Intellectual Property.There are two ways to apply for registration of an industrial design:• traditional• electronic
How to choose an application method
Before proceeding to the advantages of various methods of applying to Rospatent, it is worth noting that regardless of how the patent office receives an application for legal protection, the package of documents that must be provided is the same. In general, both the electronic and traditional methods lead to the same legal result: the Federal Service for Intellectual Property receives an appeal from a person to provide a title of protection in respect to the claimed intellectual property.However, due to the fact that the electronic application is submitted via the Internet and by remote access, this method has several advantages:• With electronic filing, the amount of the fee paid for conducting a formal examination and substantive verification of the designation and other legally significant actions is reduced.• The applicant saves time, since there is no need to personally be present in the building of Rospatent, and further correspondence with the department’s specialists is carried out in an online format.• The website operates in a 24/7 format seven days a week, therefore, a person can send an application at his convenience.The owner of an industrial design can submit documents in digital format using the FIPS website (https://new.fips.ru/podacha-zayavki/lichnyy-kabinet-dlya-perepiski-po-zayavkam/index.php ) or the Internet portal of “Gosuslugi” (state services) (Https://www.gosuslugi.ru/16430/1 ).Among the advantages of applying directly to Rospatent, one can note personal communication with employees of the Patent Office and receiving a printed copy of a document certifying the receipt of an application for registration of an industrial design.If the applicant has chosen the traditional filing method, it is necessary to contact the address of the Federal Service for Intellectual Property: Moscow, Berezhkovskaya nab., 30, bldg. 1.
Documents required to apply for registration of an industrial design
The website of Rospatent (https://rupto.ru/ru/stateservices/gosudarstvennaya-registraciya-promyshlennogo-obrazca-i-vydacha-patenta-na-promyshlennyy-obrazec-ego-dublikata ), dedicated to industrial designs, contains a list of documents required to apply for registration of this intellectual property.So, the applicant must submit:1. Application for a patent.2. A set of goods images.3. A drawing of the general appearance of the product, a confection card, if they are necessary to reveal the essence of the industrial design.4. Description of the industrial design.5. Document on the payment of the state duty.The specified list is due to the following: department specialists are asked to send documents that will allow them to receive complete and clear information on the result of intellectual activity in order to fully conduct an examination before deciding whether to register an object or refuse it.In addition to the information on the result of intellectual activity, the application contains important information about the applicant, which will allow Rospatent experts to contact the latter if necessary.The documents listed in paragraphs 2-4 relate to the description of the industrial design and are crucial, since with their help the object is determined to meet the conditions of patentability.The document on the payment of state duty confirms the fact of payment of the examination procedure.It is worth noting that the first step after receiving and registering an application is a formal examination. Namely: the analysis of documents regarding the completeness of their presentation, the correctness of filling and the correctness of the data. As practice shows, such a state of affairs is not accidental: in this way, the experts of Rospatent save time of the department and applicants by immediately checking the accuracy of the information, which subsequently can play a decisive role for the examination.In conclusion, I want to note that the holder of the result of intellectual activity has the right to submit an application not only personally, but also with the help of a patent attorney who will help to understand the details and nuances of the procedure, as well as suggest the best solution in case of difficulties.
One of the fundamental articles in this case is Article 1246 of the Civil Code of the Russian Federation, which is devoted to the peculiarities of the state regulation of the public relations in the field of intellectual property.
Depending on the tasks set and the powers available, the state authorities can be divided into legislative, executive and judicial.
The field of intellectual property, like any other area of the socially significant relations, requires to be regulated by and with the participation of all the above mentioned branches of the authorities for its full development and operation. In this regard, it seems logical to consider the system of the state regulation in accordance with the presented classification.
The legislative state authorities.
The activity of such institutions is aimed at developing, creating, approving and further improving the legislation of the Russian Federation in order to protect and defend the rights and freedoms of the citizens and the state. The federal normative acts describe the fundamental provisions that contribute to the full operation of the state as a structure. The main legislative authority in Russia is the Federal Assembly, which powers include adopting the federal laws. Thus, the development, approval and further modification of Part 4 of the Civil Code of the Russian Federation devoted to intellectual property are under the jurisdiction of this institution.
There are also other state authorities, whose powers include the creation of normative and non-normative legal acts that influence on the field of intellectual property. The above documents add and disclose the meaning of the current norms, and they are a kind of the legal framework that ensures the full operation of the legislation. The powers to create such clarifying provisions are conferred to the federal executive authorities.
The executive state authorities that operate in the field of intellectual property.
The Government of the Russian Federation is the supreme executive authority at the federal level in Russia. If we consider the powers of the above institution in the field of intellectual property, the following can be highlighted:
- The normative legal regulation and, in particular, the publication of the bylaws that add and disclose the provisions of the current legislation.
- In accordance with the provisions of Paragraph 5 of Article 1246 of the Civil Code of the Russian Federation, the Government of the Russian Federation is entitled to establish the rates, the procedure and the period of the payment of remuneration for employee’s inventions, utility models and industrial designs.
- According to Paragraph 6 of Article 1246 of the Civil Code of the Russian Federation, the right to establish the rates, the procedure for collecting, distributing and paying remuneration for certain kinds of the use of works, performances and phonograms is also included in the powers. Provided that such activity is carried out with or without the right holders’ consent, but with the payment of remuneration in both cases.
- Promoting the inventive activity and patenting inventions, utility models and industrial designs.
- Regulating in the field of accounting for intangible assets, the rights to trademarks, as well as contributing to the activity of the Intellectual Property Court and others.
Within the framework of the above fields of activity, the Government of the Russian Federation has the powers to create and introduce into force the bylaws in the form of resolutions and orders. It also develops and proposes for improving and changing the current legislation and distributes the powers among the inferior authorities of the executive authority in order to fulfill the tasks set by the President and the state Duma.
The Ministry of Economic Development of the Russian Federation is the executive authority, which activity involves, among other things, contributing to the development in the field of intellectual property. The range of powers of this institution includes:
- Introducing the drafts of the normative acts in the field of the creation, use and protection of the results of the intellectual activity to the Government of the Russian Federation.
- Adopting the bylaws within the framework of the activity being carried out. In particular, the Ministry of Economic Development of the Russian Federation approves the forms of the certificates for the trademarks and the names of the place of origin of the products, the procedure for extending the validity period of a patent for an invention, utility model or industrial design and so on.
- Monitoring the activity of other executive state authorities.
The Ministry of Economic Development of the Russian Federation fulfills the tasks set, including through the Federal Service for Intellectual Property, which is under its jurisdiction.
The Ministry of Culture of the Russian Federation is also the executive authority that has a number of powers to protect and defend intellectual property. In accordance with Paragraph 18.104.22.168 and Paragraph 22.214.171.124 of the Resolution of the Government of the Russian Federation “On the Ministry of Culture of the Russian Federation,” this organization shall:
- monitor the compliance with the legislation of the Russian Federation on the copyright and related rights in the determined field of activity.
- monitor the activity of the organizations accredited by the state for the collective management of the copyright and related rights.
In addition to this, the powers to carry out the state policy in the field of intellectual property in varying degrees refer to the activity of the Ministry of Defense of the Russian Federation, the Ministry of Agriculture of the Russian Federation, the Ministry of Education and Science of the Russian Federation and others.
The Federal Service for Intellectual Property (Rospatent) has undoubtedly the widest range of the tasks and functions in the field of intellectual property. This organization is engaged in registering, checking and accounting intellectual property. It also considers the appeals and objections of the citizens related to the registration of intellectual property. In addition, the specialists of the Federal Service for Intellectual Property are engaged in generalizing the practice of applying the legislation in the relevant field of the public relations, submitting the drafts of the federal laws to the Ministry of Economic Development of the Russian Federation and exercising other powers.
The following may be referred to other executive authorities that monitor the compliance with the legislation in the field of intellectual property: the Federal Customs Service, the Federal Antimonopoly Service, the Federal Service for Supervision of Communications, Information Technology and Mass Media and others.
The judicial authorities, which have powers to consider the disputes in the field of intellectual property.
In this case, when determining the relevant judicial instance and jurisdiction of the dispute, it is essential to clarify the parties, namely: whether there are the individuals among the participants in the dispute or whether the conflict has occurred between the legal entities. Depending on this, the disputes may be considered both in the general jurisdiction courts and in the arbitration instances. A specialized state authority – the Intellectual Property Court, which operates as a part of the arbitration courts is worth noting individually. Despite this fact, both the legal entities and the individuals are entitled to apply to it, provided that the jurisdiction is complied.
According to the provisions of Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation, the registration of the designations indicating to the place of their manufacture or sale shall not be allowed. The legislator states that the trademarks consisting solely of a geographical name of the territory, where the product is manufactured or sold shall not be protected. Such situation is due to a number of the factors that come down to the protection of the interests of the consumers, who can be misled, and to the defense of the holders of other trademarks, whose rights will be impinged. The norms of the above Article contain a clarification regarding the admissibility of the registration of the designation that includes an indication to the place of the manufacture and sale, if this element is claimed as unprotected. Thus, it can be concluded that the registration of the trademark containing the geographical name is not allowed, except in the cases, where the legal protection is not granted to the name directly.
However, a more in-depth and detailed analysis of the legislation and the existing law enforcement practice makes it possible to identify a number of the exceptions to the general rule. Namely:
- Registering a geographical concept as a trademark.
- Granting the protection to the geographical name, when there is not a possibility of misleading the consumer.
- Obtaining a certificate for the trademark that includes the geographical name that is little-known.
The geographical name or the geographical concept?
To clarify the above statement, first of all, it is necessary to distinguish between the terms “the geographical name” and “the geographical concept,” since they seem to be synonymous in the course of a superficial analysis.
According to the Great Soviet Encyclopedia, “the geographical names” are described as: “the names, the toponyms, the proper names of continents, oceans, seas, ..., countries, cities, streets, and of all other geographical objects on the surface of Earth.”
In turn, the “geographical concepts” should be understood to mean the terms and definitions related to a branch of geography.
Thus, the geographical names can include: Moscow, Africa, Tula, Volga, etc. The geographical concepts will be: an ocean, the pole, the sea, a continent, etc.
The reason for distinguishing these terms for the field of trademarks is as follows: the legislator prohibits the registration as the trademarks of exactly the geographical names, as they have a narrow-focused nature. Hence, that they can mislead the consumer regarding the place of the manufacture and sale of the product. At the same time, the geographical concepts (terms) are of a general nature and their use cannot lead to the consequences described above. So, it is indicated in the “The Recommendations on Certain Issues of an Examination” edited by O.L. Alexeeva that: “The peculiarity of the designations-concepts relating to the field of geography is that they do not indicate to a specific geographical place, and therefore, they cannot perform the function of a descriptive designation indicating to the place of the manufacture of the product and the location of the manufacturer.”
According to the above reasons, the registration as the trademarks of the designations that include the geographical concept as a protected element shall be allowed.
Granting the protection to the geographical name, if the probability of misleading the consumer is absent.
As explained in the above recommendations, the registration as the trademarks of the geographical names directly is possible in some cases. The following conditions should be observed for such designation to become protectable:
- The geographical name should not be perceived by the consumer as the indication to the place of the manufacture, sale of the product and the location of the manufacturer.
- The designation should not have a descriptive function, and it should be perceived by the consumer as a fantasy one.
The word “KASPIY” can be given as an example. If the right holder claims the trademark with such element for the registration in respect of the 29th class of the ICGS, and, in particular, seafood, it is highly likely that the results of the examination will be negative. The reason is obvious: The Caspian Region is widely known for fishery, therefore, the consumers can assume that the product comes from the Caspian Sea. At the same time, there are no norms for the trademarks that oblige the right holder to fix the place of the manufacture at a certain territorial unit, as in the case of the NPOP. Therefore, the product can be manufactured anywhere, and the customer will consider mistakenly the Caspian region as the place of origin. On the contrary, the registration of the trademark “KASPIY” for the products of such kind as TV sets is quite allowed, because, most likely, the customers will perceive such designation as the fantasy one without being under illusions regarding the place of the manufacture and origin of the product.
Obtaining a certificate for the trademark that includes the geographical name that is little-known
Special attention should be paid to the registration of the trademarks with the geographical names that have a minimal degree of popularity. These can include: the names of small settlements, tributaries of rivers, streams, and so on. Even in the case, if the product is manufactured within the indicated geographical object, it will be perceived by the consumers as the fantasy one due to the fact that the designated territorial unit is little-known. The low level of popularity of the geographical name can indicate to the fact that “the sources of information do not contain the information on it, or this information is contained in the rare special publications, what allows recognizing the claimed geographical name to be practically unknown to the average consumer.”
The practice of Zuykov and Partners in obtaining protection for the trademarks with the geographical names.
There are the examples of the registration of the trademarks with the elements containing the geographical names in the work of the lawyers of our company as well. It is worth noting that the experts of Rospatent check such designations especially carefully. However, even a notice on the existence of grounds for a refusal to grant the protection due to the indication of the geographical object does not mean the final refusal of the state registration of the trademark.
So, in 2013, GSH Trademarks Limited, whose representatives were Zuykov and Partners, filed an application for the registration of the trademark “CHERNOMORSKIY” in respect of the 33rd class of the ICGS (alcoholic beverages). During carrying out the examination, the specialists of the Office concluded on the impossibility of the registration of the designation. The reason for the refusal to register the claimed trademark was that the dominant element was the geographical name “CHERNOMORSKIY.” The notice on the results of the check was sent to the applicant. Having considered the document received from Rospatent, the employees of Zuykov and Partners analyzed the current situation and came to a conclusion on the permissibility of the registration of the designation. Such statement was based on the fact that the indicated trademark had a distinctive ability, and the word element would be perceived by the consumers as the fantasy one, and not as a descriptive one. In support of their position, the lawyers sent a response to the notice to the Office, where they had indicated the arguments deserving the individual attention of the experts, namely: “The word element “CHERNOMORSKIY” is an adjective formed from the noun “Chernoe More” (the Black Sea), which is the name of the sea, i.e. this element is the geographical concept. <...>
Regarding the application under consideration, it is difficult to imagine that the manufacture of alcoholic beverages is located in the Black Sea.
In connection with the above, the designation “CHERNOMORSKIY” will be perceived by the Russian consumer predominantly as the fantasy and semantically neutral one in relation to the claimed products, i.e. it has the distinctive ability.”
The specialists, while considering the application for the registration of the trademark, paid attention to the applicant’s position and as a result, the designation “Chernomorskiy” was registered by Rospatent and it is currently in force.
The registration by LLC “Antares” of the designation “THE MANHATTAN CLUB” for the restaurant business can become another example of obtaining the legal protection by the trademark having the geographical name. Having considered the application and having checked the designation for the compliance with the conditions of protectability, the examination of Rospatent sent a preliminary refusal indicating to the grounds for the refusal to register the claimed designation as the trademark. As one of the reasons for such decision, the notice indicated that the dominant element was the widely known geographical name of one of the parts of the City of New York.
The lawyers of Zuykov and Partners, who represented the interests of the company-applicant, had a different opinion regarding the protectability of the designation and sent a response to the notice to the Office. The lawyers justified their position as follows: the geographical names that can be perceived by the consumer as the indication to the location of the manufacturer of the products or services cannot be registered as the trademarks. In turn, the trademark “THE MANHATTAN CLUB” is planned to be used to indicate the services provided by the Club, which is in the town of Penza, which is located on the territory of Russia. In this regard, there are all grounds to recognize the designation under consideration to be the fantasy one, because the consumers will be unlikely misled in respect of the location of the services being rendered.
Having studied the position of Zuykov and Partners in detail, the experts of Rospatent came to a conclusion on the protectability of the claimed trademark.
From time immemorial, Russia has been known for its folk crafts. Pavlovsky Posad shawls, Tula honey-cakes, Khokhloma painting — in many regions there are the achievements that make people feeling pride. If we consider the said subject matters from a household point of view, it is difficult to establish their uniqueness, because any thing can be replaced in the modern world. But the traditional products have special, distinctive features due to their unique composition, the presence of the rare climatic conditions in the place of origin, the distinctiveness of the human labour as a result of which they are created. For example, Kolomna pastille is made according to the traditional recipe that has been known since the beginning of the XVIII century. And Khokhloma painting as a kind of the folk art originated in the XVII century and it is still one of the most widely known Russian crafts. Buyers purchase such products consciously, while evaluating and choosing them not based on the species feature (pastille, shawls, dishes, etc.), but because of their special, really unique indicators (the recipe, the method of the manufacture, etc.). These properties are due to exactly the territory of origin of the product, that is, the consumer wishes to buy the product obtained and manufactured in the place of origin, where the traditions of its manufacture have started.
The above circumstance explains the importance of mentioning the geographical place of the product creation: the manufacturer needs the designation indicating to the region of origin, and this information will help the consumer to distinguish the desired product among other homogeneous ones, but, most often, having other quality indicators. Naturally, the question arises: how can the manufacturer indicate the territory of origin on the product without violating the rights of other entrepreneurs and without forcing the buyer to search for this information on the back of the product package? The best solution to above problem can be considered the registration of a means of individualization. The purpose of creating and using such subject matter of intellectual property is just distinguishing the products.
What to choose: a trademark, a name of the place of origin of the product or a geographical indication?
The most popular means of individualization is a trademark, and this is due to a number of reasons:
- The monopoly and absolute rights of the owner of the exclusive rights, who is entitled to grant the designation for the use under a license agreement or to sell it on the basis of an alienation agreement.
- An unlimited period of the use of the means of individualization. A period of the protection of the trademark after the registration is 10 years. However, at the discretion, the designation holder is entitled to extend the protection of the trademark for 10 years any number of times.
- A wide list of the claims that can be lodged to the violators. The Civil Code of the Russian Federation stipulates various ways of restoring the violated rights and defending them, including recovering damages in order to compensate for the losses incurred by the trademark holder.
It should be noted that it is due to the exclusive nature of the rights of the owners that there is a number of the exceptions from the range of the designations that can be registered as the trademarks. So, in accordance with Subparagraph 3 of Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation, among other things, the trademarks consisting only of the elements describing the place or method of the manufacture or sale of the products shall not subject to be registered. And also, according to Paragraph 4 of Article 1483 of the Civil Code of the Russian Federation: “The state registration as the trademarks of the designations that are identical or confusingly similar with the official names and images of the particularly valuable subject matters of the cultural heritage of the peoples of the Russian Federation or the subject matters of the world cultural or natural heritage shall not be allowed... .”
These restrictions are partly due to the fact that there may be several manufacturers at the territory, and as soon as one of them registers the designation consisting solely of the geographical name, it will obtain the right to prohibit other persons to use it. In this case, we can talk about the infringement of the rights of other participants in the trade, what is illegal and dishonest behavior. In addition, the consumers may get a false assumption about the monopoly right of the product manufacturer, what will mislead them.
Nevertheless, the legislator still allows indicating the names of the geographical subject matters, but as an unprotected and non-dominant element in the trademark. And also, in individual cases, which will be considered in the following articles, it is permissible to register the geographical concepts as the trademarks.
Another subject mater of intellectual property that is applied to distinguish the products at the market is the name of the place of origin of the product (hereinafter referred to as the NPOP). If we consider the means of individualization taking into account the specifics of its use, and in our case, the peculiarity is in the properties and the territory of the manufacture of the products, then the NPOP can be considered to be the most successful for designating such products. This means of individualization has been created specifically for the designation of the products of the folk crafts, what determines a special regime for the possession of the rights to the NPOP, and different persons can become its right holders independently of each other. Such situation has both advantageous and negative consequences:
- The advantage point is that all the entrepreneurs, who can manufacture the product with the particular indicators, for example, mineral water, have the right to obtain a certificate for the NPOP and to use it regardless of the will of other designation holders.
- The negative point can be considered the fact that essentially the right holder is only a user of the designation and he cannot transfer the right to the use of the NPOP or transfer the right in full under the alienation agreement.
- Among the important peculiarities in a regime of the NPOP, it should also be noted that the right of the use can be disputed by other manufacturers in the case, if the manufacturer does not have a possibility to manufacture subsequently the product with the specific characteristics. In the case of the trademark, there are no such grounds for disputing the validity of the designation.
And also, this year, on July 27, the amendments to Part 4 of the Civil Code of the Russian Federation enter into force, which stipulate the introduction of a new means of individualization – a geographical indication (hereinafter referred to as the GI). This subject matter of intellectual property is similar in many ways to the NPOP: the purpose of the registration of the designations is distinguishing the products, whose distinctive properties are connected with the territory. The NPOP and the GI are the means of individualization that contain a direct reference to the place of the manufacture or origin of the products. Both names are valid till the moment, when the possibility to manufacture the unique product disappears. The rights of the certificate holders to the said subject matters of intellectual property are valid within 10 years with the possibility of being extended in future.
The most essential differences between the GI and the NPOP are noticeable in the conditions of granting the legal protection to the compared designations: the simplified conditions for patentability of the claimed subject matter are planned to be applied in respect of the geographical indications.
For the legal norms to operate fully and effectively, they must be updated regularly. This state of affairs is due to the fact that all areas of the human activity are in constant motion and development, and, consequently, the mechanisms that regulate them must be modified in accordance with the emerging needs of the society.
It is worth noting that over the past decades, the importance and recognition of intellectual property have increased. In Russia, the use of the results of the human creative labour is promoted actively, in this regard, the lawyers in the field of intellectual property note a steady increase in the applicants’ activity. Due to the above reasons, the legislation in this field is becoming especially relevant. Due to the application of the norms, the imperfections of the legal acts that require improvement and addition are found.
If to consider the changes introduced in the legislation, while analyzing the nature of these provisions, it is possible to highlight the following:
- The additions that are aimed at eliminating the legal gaps.
- The changes and additions that are aimed at reducing the legal collisions.
- The provisions that are updating and improving the existing norms.
- The new norms that are introduced due to the emergence of the legal institutions or peculiarities in a particular kind of the public relations.
It should be noted that regardless of the kind of the changes introduced, eventually, all of them are aimed at improving the legislation and enabling the citizens to apply them.
The initiatives in the field of intellectual property
Summing up the results of 2019, the representatives of Rospatent highlighted the necessary innovations and changes in the field of the protection and defense of intellectual property. Some of them were discussed at the meetings of the state bodies and were reflected in the legislative acts that entered into force. These can include:
- The introduction of a new means of individualization – a geographical indication. The inclusion of this subject matter in the Civil Code of the Russian Federation is aimed at promoting and popularizing the regional brands, as well as at increasing the volume of the applications for the means of individualization connected with the territory, where the product is manufactured. The above subject matter has a lot in common with the currently used names of the place of origin of the products, for example, it is also connected with the place of origin of the products, which determines the particular qualities or properties of the product. The above means of individualization also have the differences: for example, it is planned to provide more loyal conditions for granting the legal protection to the geographical indications. The adopted amendments, with the exception of some certain provisions, will enter into force on July 27, 2020.
- Granting the temporary protection to an industrial design. The amendments to the Civil Code of the Russian Federation were made on December 27, 2018 and in 2019, the applicants got an opportunity to use fully the benefits received. The new version of the norms allows granting the additional defense of the rights to the representatives of the professions in such rapidly changing and poorly defended industries as design and model art. It is known that the volume of the counterfeit and faked products in the above industries can compete only with the number of the fakes of audio and audiovisual works. In accordance with the amendments introduced in Part Four of the Civil Code of the Russian Federation, the norms now afford granting the industrial design claimed for the registration the temporary legal protection, which is valid from the date of the publication of the information about the application to the date of the publication of the information about the grant of the patent. In the case, if the industrial design has been used by another person during this period, the patent holder is entitled to receive the monetary remuneration after obtaining the patent.
A number of the initiatives are currently under the consideration in the State Duma:
- The introduction of the electronic protection documents and the registration system optimization. It is difficult to deny the convenience and universality of the electronic document flow. Among the objective positive consequences, the following can be highlighted: reducing the periods for processing the applications, simplifying the procedure for filing, reducing the amount of the state fee, as well as an opportunity to file the application in the mode of the operation of the Rospatent Internet portal 24/7. Within the framework of the implementation of the national program “Digital Economy,” the changes and additions to the legislation are proposed, as a result of which the applicants and right holders will have an opportunity to register the programs for electronic computing machines online and to transfer the rights to the subject matters of intellectual property. It is also planned to start granting the electronic patents and certificates, which can be downloaded, if desired, in the personal account at the Rospatent website. At the same time, the opportunity to obtain the traditional protection document on paper will remain.
- The use of 3D models, when filing the application. On February 5, 2020, a meeting of the State Duma Committee on the state construction and legislation was held, which reviewed the draft law proposing to grant the applicants an opportunity to attach the 3D models of the subject matters (trademarks, industrial designs, inventions, utility models) to the application materials in an electronic form. This innovation is aimed at improving and simplifying the examination procedure due to the high degree of visualization of the subject matter being claimed for the registration.
- The involvement of scientific organizations in a patent search. In order to reduce the period of the consideration of the application for the registration of intellectual property, the proposals were made to change the legal norms that stipulate an opportunity for carrying out a preliminary information search and an assessment of patentability. This procedure will be carried out by the competent scientific organizations accredited in Rospatent. The applicants, who have carried out such search, will be granted tax benefits, and the examination period will be reduced. In addition, in may 2020, it is planned to put into operation a new search service enabling to connect other government institutions and private companies.
In accordance with the Regulations on the Federal Service for Intellectual Property, the Rospatent’s powers include the functions for the state registration of trademarks, as well as for the receipt and examination of applications for obtaining the legal protection in respect of the trademarks.
Thus, within the Office, among other things, the following is carried out:
- Carrying out a formal examination that allows confirming the availability of the necessary documents and their compliance with the requirements lodged.
- Checking the designation claimed for the registration as a trademark.
And if the formal examination is essentially an analysis of the “completeness” of the package of the documents filed and their compliance with the conditions, then the examination is essentially a laborious process, during which the specialist will have to find out the degree of uniqueness of the designation and to determine whether the requirements mandatory for the registration are complied.
The norms of the Civil Code of the Russian Federation contain the general conditions for the patentability of the trademark. Which in general come down to the need for:
- the availability of a distinctive ability in the designation;
- the absence of the elements that contradict the public interests and the moral and ethical principles;
- the absence of the possibility of confusion with other designations and confusing consumers;
- not infringement on the rights of the owners of other subject matters of intellectual property.
Considering the received application, the Rospatent’s specialist, at the designation examination stage, checks first of all the compliance of the trademark with the above requirements.
The modern markets are characterized by a wide variety of products. To confirm this, it is enough to recall that the generally accepted International Classification of Goods and Services (ICGS) used to identify and to differentiate between the designated groups contains 45 classes, each of which has a list being impressive in sizes. For this reason, the examiner, after the general check of the trademark, will have to check the designation for the compliance with the so-called particular requirements that may be lodged to the means of individualization used in respect of some certain products. As a rule, the information and explanations about the peculiarities of such check are disclosed in detail in the bylaws adopted by Rospatent. The creation of the documents of such kind is aimed at creating the uniform practice of carrying out the examination. They describe the circumstances that deserve individual attention, while analyzing a particular type of the designations, indicate the possible variants for resolving disputable situations and also contain the information that simplifies the trademark examination.
The peculiarities of the check of the designations claimed for the registration in respect of pharmaceutical drugs and BASs
Like all other trademarks, the designations that are claimed for the individualization of medicinal products and biologically active supplements are checked at first for the compliance with the general requirements indicated in the norms of the Civil Code of the Russian Federation.
In addition to the above, taking into account the specificity of the scope of the application, it is possible to highlight the following moments that require the individual attention of the examiner:
- The peculiarities of the examination of the trademarks indicated for the designation of the medicinal products.
- Due to the fact that taking the pharmaceutical drugs can affect the human body, it is very important to make sure that there is not even a hypothetical possibility of confusing the consumer about the properties and composition of the product, as well as about its manufacturer. Around the world, a number of the uniform names are applied in respect of the pharmaceutical drugs that are called the International Nonproprietary Names (INN). Russia, in accordance with the norms of the international treaties, supports the use of such designations and undertakes measures to prevent confusing the trademarks and the INN. Thus, the examiner, in addition to other circumstances, checks the designation for the availability or the absence of the similarity of the word element with the registered INN by carrying out a comparative analysis of the trademark with the names available in the public databases of the approved INN.
- In addition, it is worth highlighting the availability of a common symbol used in the pharmaceutical field. In particular, the Regulations developed by Rospatent state that the image of a bowl with a snake is a common symbol used in the medical field. Taking into account this circumstance, the indicated element may be included in the trademark as an unprotected one and provided that it does not dominate in the designation. The following are considered to be other common designations used in the pharmaceutical field: the image of a red cross, which is the emblem of the Red Cross International Movement, and it can be used with the permission of the authorized body, as well as a visual element in the form of a green cross that is usually used for the designation of pharmacies.
- The conditions for checking the designations claimed in respect of the BAS.
- According to the norms of the current legislation, the biologically active supplements are not the medicinal products because of the difference in the result that is possible from taking the indicated drugs and the difference in their composition and the nature of origin. However, despite this, the risk of confusing the consumer is no less significant. Therefore, when checking the designation, the Office’s specialist also finds out whether the designation claimed for the BAS is similar to the already registered INN. To confirm this, it is possible to give a reference from the Order of Rospatent “On the Use of the Database of the International Nonproprietary Names (INN)”: “The WHO database containing the information about the INN is recommended for the use as the additional source of the information within the framework of carrying out the examination of the designations claimed for the state registration as the trademarks in respect of the products of class 05 of the ICGS... .” This indicates that it is possible to carry out a comparative analysis of the trademarks claimed for any of the designations in class 05 of the ICGS with the available INN. It is worth noting that this provision is defensible and justified: confusing the consumer in respect of the availability of the medicinal substance in the composition of the BAS (what in fact can not be) can result in the most adverse consequences for a layman.
- As another moment that also deserves the examiner’s attention, it is necessary to mention the check for the absence of the similarity between the claimed trademark and the designations of the products registered in the Register that have passed the state registration, which is maintained by Rospotrebnadzor. According to the norms of the domestic legislation, the BASs that have been first introduced, as well as the ones that are first imported into the territory of the Russian Federation, must be registered in the above Register under the name used. Subsequently, the Office’s specialist checks the word element of the trademark using the publicly available database and in the case, if there is an identical name that is registered in respect of another person, makes a decision that it is impossible to register the trademark for the BAS in order to prevent deceiving the consumer.
- The peculiarities of the check for the similarity of the designations registered for the BAS and the pharmaceutical drugs.
- Based on the available judicial and law enforcement practice, it can be stated that the BAS and the medicinal products are the homogeneous products. This can be confirmed by Rospatent's Information Letter of November 5, 2008 No. 10/37 - 646/23, where it is indicated that the BAS and the medicinal products can coincide with the forms manufactured (syrups, tablets, capsules, etc.) and they also have a single sales market and a common circle of consumers, in connection with which these products should be considered as homogeneous. For this reason, while checking the designations, the examiner also compares the claimed designation and the available trademarks in the field of the medicinal products and the BASs for their similarity.
In conclusion, it should be noted that the peculiarities of the designated products (BASs and medicinal products) determine the additional conditions for the check of the trademarks, which are aimed at minimizing the risk of confusing the consumer about the characteristics, properties of the product, its manufacturer, as well as the consequences of using these categories of the products.
It is obvious that the modern consumers need trademarks no less than manufacturers. The level and scale of the market relations lead to the fact that buyers are unable to identify a product by its class or species features and they are forced to use other methods to distinguish the product they have liked.
A trademark is an excellent means for distinguishing the product from other homogeneous ones. The competent and long-term use of the means of individualization leads to a positive assessment and the recognition by the consumer, and, consequently, it provides: the recognition of the product, its manufacturer and other products of this manufacturer in the case of expanding the range of the products, as well as a regular demand and a competitive advantage. All the above circumstances stimulate an active and systematic growth of filing applications for the registration of trademarks.
According to the information provided in the Annual Report of Rospatent for 2018, 66,006 trademarks received the legal protection in Russia. This number allows concluding on a large number of the means of individualization used at the Russian market. It is logical to assume that the more the registered trademarks, the more difficult it is to create the new ones that are not similar to the previous subject matters. Using a rational approach to the creation and registration of a designation at the stage of its development, it is worth, after its creation, to carry out a study for the issue of the patent clearance of the trademark, that is, to find out whether it is new. In the case there are the similar means of individualization that are claimed for the registration or that are already protected, it is advisable to modify the subject matter or to make changes to the intended trademark. If the check shows a high degree of uniqueness, it is worth filing an application for the state registration.
The inadmissibility of the registration of the identical and confusingly similar trademarks is enshrined in the Subparagraphs 1 and 2 of Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation. Such measures are aimed at defending the interests of the consumers and preventing the acts of unfair competition. Despite a direct legal prohibition to use the similar designations for the homogeneous products, there are the practical examples of the cases, when the trademarks that are confusingly similar to the already existing ones are still filed to the registration. The reasons for this may be different: malicious intent, when unfair entrepreneurs rely upon the use of the similar designations, the customer's disagreement with the results of the preliminary check for uniqueness, or the absence of the one at all. Therefore, at the stage of carrying out an examination of the designation in Rospatent, the specialists pay special attention to the analysis of the means of individualization regarding the confusing similarity and identity with the already existing trademarks and other subject matters of intellectual property.
It is worth noting that the persons, who do not have special knowledge, cannot always draw a line between the identical and confusingly similar designations. The identity implies the full identity of the designations. At the same time, the main peculiarity of the confusing similarity is that despite the existing differences of the elements in the trademarks, in general, the designations are perceived as identical, that is, they are easy to be confused.
The opinion of the examiner and the consumer: what is the difference?
An interesting fact is that, in fact, in everyday life, any examiner is the same ordinary consumer as other people, therefore, is it worth talking about the possible differences in the views regarding the similarity of the particular designations?
First of all, it necessary to remind on the prohibition of the use of the confusingly similar trademarks that is aimed at the defense of the interests of the consumers. This means that the specialist, who checks the designation, must assess it, among other things, from the possible buy’s position. In this case, it is important to realize that: the consumer's conclusions on the similarity or difference of the trademarks are based on a quick perception of the designation and a superficial acquaintance with it. That is, the person perceives the trademark as a whole and he pays attention primarily to the dominant elements of the designation.
The examiner, in turn, carries out a detailed analysis of the means of individualization, which is based on the circumstances described above. When checking the trademark, the specialist must determine: which elements prevail in the designation? Is it possible to conclude on the similarity of the dominant elements? By what elements do the designations coincide (word, figurative or as a whole)? Is it admissible to conclude on the fact that the combination of the identical elements will cause the confusion of the compared trademarks in the consumer's mind?
As it was noted by the Federal Arbitration Court of the Russian Federation: “The risk itself is already enough for the recognition of the similarity of the trademarks, and not the actual confusion of the trademarks in the eyes of the consumer.” That is, the examiner’s activity is aimed at identifying even the potential possibility of the confusion of the trademarks in the consumer’s mind, since in reality, the buyer does not have a possibility, time and desire for a long analysis of the designations met by him.
When the opinion of the consumer and the examiner does not coincide
There are the cases, when the Office’s specialists, based on the results of the check, come to the conclusion on the absence of the similarity and register the trademark, but, according to the opinion of the right holder of the earlier designation, the new subject matter leads to the confusion among the products and confuses the consumers. In this case, it is admissible to dispute the results of the examination and, as a consequence, the legal protection granted. A special place in the cases on such disputes is occupied by the results of the sociological surveys carried out among the consumers. Despite the optionality of providing the proofs of such kind, that is, they are not mandatory and they are provided at the initiative of one of the parties to the conflict situation, it can be stated with confidence that the state authorities take up with due interest such surveys and the conclusions obtained in them.
Unfortunately, the current practice shows that the parties to the dispute are sometimes ready to behave in bad faith in order to achieve the necessary solution. The results of such actions are the sociological surveys that generate doubts due to the fact that they include only the final conclusions. This document does not allow studying the opinion of the respondents in particular, but it only allows learning the point of view of the specialist, who has made an expert assessment of the survey. In order to prevent an abuse of the rights under such situations, it seems advisable to introduce some strictly determined requirements that will be applied to such proofs.
In conclusion, it should be noted that in some cases, the opinions of the examiners of Rospatent and the consumers regarding the similarity of the designations differ. However, the purpose of the examination of the designations is to reduce the probability of confusing the consumers, and, consequently, the Office’s specialists, in any case, act in the interests of the ordinary consumers.
A comparative analysis of the legal institutions of BASs and medicinal products allows distinguishing between the concepts under consideration according to a composition, an action range, the final result of their application and other indicators. However, in practice, these categories of the products are quite often evaluated by consumers as being similar and identical, for which reason the risk of the confusion of the subject matters increases. The negative consequences of identifying the said categories are obvious. The first ones are the natural (most often) biologically active supplements that enter a human body. In turn, the medicinal products are capable of influencing the organs of people for the purposes of the prevention, diagnosis, treatment of diseases and subsequent rehabilitation. Replacing one concept with another, the consumer believes and expects that the result of taking a BAS will be the same as when using a medicinal product, but this is not the case. As a result, the person loses time during which the disease could have been cured at an early stage or avoided at all.
From the point of view of the legal regulation of the biologically active supplements and the medicinal products, the situation is no less confusing. On the one hand, creating, distributing and the quality control of the manufactured supplements and drugs are regulated by the particular normative acts that are independent from each other. Thus, there is fundamental Federal Law “On Circulation of Medicinal Products” in the medicinal product field, and the concept of the biologically active supplements is revealed in Federal Law “On the Quality and Safety of Food Products”. On the other hand, there are the fields, where possible confusing among the BASs and the drugs is not regulated sufficiently at the legal level. These fields are rightly considered to be the legislative gaps and they require an early improvement and elimination, due to the fact that they can and are used by unfair persons for the illegal purposes.
If to consider the registration of trademarks in relation to the BASs and the medicinal drugs from the point of view of clarity and isolation of these legal institutions, then the blurriness and the high probability of confusing them should be noted. The described situation is unfavorable both for the consumers and the fair right holders of the trademarks, and also for the third parties involved in the turnover of the products at the pharmaceutical market. Therefore, it seems rational and useful to study and describe the particular peculiarities of the means of individualization used in relation to the BASs and the medicinal products, and therefore the impossibility to register the similar trademarks for these products. It should be noted that Rospatent adheres to the similar position, and when considering the trademarks claimed for the registration in relation to the BAS and the medicinal products, it often refuses to register the one that is the later among two similar or identical means of individualization.
Is the similarity of the trademarks registered for the medicinal products and the BASs acceptable?
The legislator does not establish any specific requirements for the registration of the trademarks for the supplements or the drugs aimed at allocating such designations to a separate group. Thus, in general, the means of individualization claimed in relation to the BASs and the medicinal products must comply with the same conditions of patentability. As an exception, the inadmissibility of the protection in the form of a trademark for the medicinal product of the designation that is identical to an international nonproprietary name may be indicated.
At the same time, among the general provisions restricting the registration of the trademarks, there are also the ones that are aimed at reducing the risk of confusing among the BASs and the medicinal drugs. So, in accordance with Subparagraph 1 of Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation: “The designations that are identical or confusingly similar to other persons’ trademarks claimed for the registration cannot be registered as the trademarks (Article 1492 of the Civil Code of the Russian Federation) in relation to the homogeneous products and the ones that have an earlier priority, if the application for the state registration of the trademark is not withdrawn, not recognized to be withdrawn or a decision on the refusal in the state registration is not made in relation to it”.
According to Paragraph 10 of the above Article, it is also not allowed to register the trademarks in relation to the homogeneous products that include the elements that are protected as the means of individualization of other persons or the designations that are confusingly similar to them.
It follows from the above mentioned normative provisions that the registration of the similar trademarks or designations containing as an element the means of individualization of another person in relation to the homogeneous products is prohibited. Therefore, if the BAS and the medicinal product are considered to be the homogeneous products, then the registration of the similar trademarks is not allowed. However, is it possible to talk about the homogeneity of the categories under consideration, if to take into account the fact that the peculiarities of the manufacture and distribution of the first one is regulated by the norms of Law “On the Quality and Safety of Food Products,” and the order of the manufacture and release to the commercial market of the second one is regulated by Federal Law “On Circulation of Medicinal Products”? Even referring these both kinds of the products to the 05th class of the ICGS is not, in fact, a sufficient basis for claiming that they are homogeneous. Thus, the Methodological Recommendations for determining the homogeneity of the products and services during the examination of the applications for the state registration of trademarks and service marks of Rospatent indicate that: “The adopted International Classification of Goods and Services (ICGS) for the registration of marks does not influence on the assessment of the homogeneity of the products and services”. As an example, it is possible to give the products referred to the already mentioned 05th class of the ICGS: deodorants and food supplements, which are obviously not homogeneous.
An explanation on this issue was given by the Intellectual Property Court during resolving a dispute on the termination of the trademark used in the field under consideration, due to its non-use. The Court pointed out in its decision to the following: “While establishing the homogeneity of the products, the following circumstances shall be taken into account: the nature (kind) of the products, their consumer properties and the functional purpose (the volume and the purpose of the use), the kind of the material, which they are made from, 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 the consumers, the traditional or preferential way of using the products. ...The homogeneity shall be recognized in fact, if the products (services) due to their nature or purpose can be attributed by the consumers to the same source of origin.”
Taking into account the sales market for the BASs and the medicinal products, the methods and the place of their sale (mainly, pharmaceutical networks), as well as the result of their use expected by the consumers, it is possible to talk on the homogeneity of these products, and therefore, on the impossibility of the registration of the similar trademarks for these products.
Is it possible to register the similar trademarks in relation to the BASs and the medicinal drugs?
Despite the above facts, unfair companies still make attempts to register the similar designations for the use both in relation to the BASs and the medicinal products. The reasons for this are clear: the well-known designation allows saving money on advertising and it increases the consumer demand. As an example of the attempt to register the similar designation, it is possible to give filing the application for the registration of the trademark “VALEODICRAMEN” by Flora Kavkaza in relation to the product of the 05th class of the ICGS “sedatives”. Having considered the received application for the registration of the means of individualization, Rospatent refused to grant the legal protection to the said designation and it pointed out to the existence of the registered trademark “PHYTO TEA VALEODICRAMENUM” used in relation to the BASs that are also included in the 05th class of the ICGS. The representatives of Flora Kavkaza did not agree with the decision made and appealed against it trough the legal proceedings. Having considered the case substantively, the Court supported the position of Rospatent and pointed out to the possibility of confusing the compared products, as well as to the high degree of similarity of the designations, in connection with which it dismissed the plaintiff's claims.
Unfortunately, the available judicial practice shows that sometimes entrepreneurs still manage to get the legal protection in relation to the claimed designation, which is deliberately similar to the registered means of individualization. However, it should be noted that the right holders of the trademarks also pay increased attention to the protection of the designations owned by them and they quite often dispute the illegal registration of the similar trademarks.
In Russia, there is not a single normative act that describes in detail a legal regime for the use and creation of BASs. As the legal framework regulating the public relations in this field, the following can be given: the Civil Code of the Russian Federation, the Federal Law “On the Quality and Safety of Food Products,” the Federal Law “On Advertising,” various acts of Rospotrebnadzor and others.
The definition of the term “biologically active supplements” is contained in Article 1 of the Federal Law “On the Quality and Safety of Food Products”: “...natural (identical to the natural ones) biologically active substances intended for the use simultaneously with food or for the introduction into the composition of food products.”
The legal source and the content of the concept allow concluding that the BASs do not refer to the category of medicinal products, but many consumers believe otherwise. The reason for this is the unfair activities of the manufacturers and distributors of the supplements. Some companies are trying to do everything to make the customers believing that the BAS is the product that has the medicinal qualities and it is capable of curing various diseases. The absence of a strictly regulated procedure for the manufacture, distribution and sale of the BASs worsens the situation by giving the violators confidence in impunity and unprovability of the fact that the behaviour is unlawful.
In this regard, when registering a trademark, the great importance is paid directly to the absence of the risk of confusing the consumer regarding the nature of the BAS, which is essentially a supplement to food, but not a drug. The importance of this is confirmed by the fact that Article 25 of the Federal Law “On Advertising” contains the restrictions imposed on advertising such products: “Advertising biologically active supplements and food supplements should not make an impression that they are drugs and (or) have some medicinal properties.”
The above circumstances indicate to the need for an additional control, when registering and using the trademarks in relation to the BAS. Despite the increased risk of confusing the BASs and the medicinal products, they belong to the same category of the products according to the ICGS classification: “The 05th class. Pharmaceutical Drugs.” This can cause a number of difficulties, when using designations as it increases the risk of confusing the products in the consumer's mind.
In addition, there can be difficulties in the case of the registration of the identical names of the BASs. In accordance with the legislation of the Russian Federation, the registration of certain kinds of the products, including the BASs, shall be within the competence of Rospotrebnadzor. The BASs that are first introduced into the manufacture or first imported into the territory of Russia must be registered under the name used in the Register of the products that have passed the state registration. Subsequently, such name can become the trademark, what will allow both strengthening the designation used, in the case, when the BAS's manufacturer becomes its owner, and weakening and causing damage to the true manufacturer, if the exclusive rights to the means of individualization are obtained by another person, who does not manufacture this supplement, and who has not registered it in the Register. While checking the designation as to protectability, the specialists Rospatent, using a public system for the search of the registered BASs, check the existence of the identical names contained in the Register. This makes it possible to minimize the cases of the malicious registration of the identical designations; however, as the judicial practice justifies, such designations still sometimes get the legal protection and they are valid till the date, when they are recognized as invalid.
As it is known, the registration of the identical designations is possible, when they have been claimed for the use in the different classes of the ICGS, however, they are not used in relation to the homogeneous products. Unfortunately, the unfair competitors file the applications for the registration of the identical trademarks in relation to other classes of the ICGS, and in the case of obtaining the legal protection, they begin to use actively the designation for distributing the counterfeit BASs or other products with such designation counting on the lack of the legal knowledge at the legal right holder of the trademark. For example, in addition to the 05th class of the ICGS, which contains the biologically active supplements, the list of the 30th class of the ICGS contains an indication to the “auxiliary supplements intended for the improvement of the taste of the food products,” and this class also includes such product such as tea. So, the person can register the trademark that repeats completely the name of the BAS, and he can start distributing the teas with such name, and the consumers will believe mistakenly that it is similar in its properties and composition to the well-known BAS.
Summing up the theme under consideration, the following conclusion can be drawn: the trademark registered in relation to the BAS, like any other trademark, can consist of various elements (word, visual, etc.) and it must comply with the conditions of protectability. At the same time, the distinguishing features of the means of individualization used in relation to the BASs should be: the lowest possible risk of confusing the consumers about the nature of the origin of the BAS, its properties and the nature of the effects on the human body, as well as the fact it is not identical to the designations used in relation to the medicinal products and the BASs’ names registered in the official Register of Rospotrebnadzor.
The International Nonproprietary Name of a medicinal product (hereinafter referred to as the INN) is a name of the active ingredient of a pharmaceutical substance that is approved by the World Health Organization as generally accepted and generally applicable.
According to the legislation of the Russian Federation, the registration of the trademarks being identical to the INN or representing the names derived from them shall be prohibited. Due to this reason, at the stage of carrying out an examination of the designation, in accordance with the Order of Rospatent, the specialists of the Office check the claimed trademark as to being similar to the existing and approved INN.
When creating the trademark for the use in relation to the medicinal products, the future rights holders may follow one of three possible strategies:
- To develop a fantasy designation and to popularize it to increase the recognition among consumers.
In this case, the trademark will have nothing to do with the INN of the pharmacological substance included in the drug. This kind of the means of individualization is considered to be the most protectable, since the refusal to register it due to the fact that it is identical to the INN is impossible, and the risks of challenging the current protection due to the similarity to the known name and the occurrence of disputes with the right holders of other means of individualization are minimal.
The trademark of the company OTCPharm can be given as an example. The firm has registered the designation Ascophenum-P for the use in respect of the products from the 05th class of the ICGS. The said trademark is fantasy, while the creators has managed to associate it partially with the names of the active ingredients: Acetylsalicylic acid, Caffeine, Paracetamol.
- To try to obtain a certificate for the trademark that includes the name that is identical to the INN or confusingly similar to it. Despite the fact that the registration of such designations is legally prohibited, the future owners of the means of individualization try rather often to register the INN in the form of a trademark.
This is due to a number of reasons:
- Firstly, the INN is a widely used and unified name, which is actively applied by medical professionals, and, therefore, this designation is recognizable by both them and the consumers. Thanks to this fact, placing such designation on the packaging of the drug increases automatically demand due to its popularity.
- Secondly, the INN is an international designation used in different countries, so some applicants expect that the INN will facilitate the promotion of the drug and increase its popularity, if it enters the foreign markets. Although, while assessing the situation objectively, it may be stated surely that the international organizations and the foreign Offices also adhere to the policy of refusing to register the trademarks being similar to the INN. Therefore, it is unlikely that such means of individualization will be registered by the authorized bodies of other countries.
- Thirdly, the right holder of the trademark has the exclusive rights of an absolute nature. That is, the third parties may in no manner use the designation without the owner’s permission, including by indicating it on a label, except the cases stipulated expressly by the law. As to the INN, the recommendations for indicating the name on the packaging are indicated expressly on the WHO website. Thus, after the registration of the INN as a means of individualization, the right holder gets a monopoly right to use the designation, what is contrary to the INN nature and what deprives other manufacturers of the medicinal products of the legal rights to the use of the generally accepted name. The unfair actions of this kind allow the right holder of the trademark to deprive his competitors of the opportunity to indicate the INN on the packaging of the product. Undoubtedly, this leads to reducing the volumes of the sales of the latter, because, in the majority of the cases, while choosing the drug, the consumers are guided by the INN that indicates to the main pharmacological substance.Unfortunately, there are the examples in the domestic practice, when the designations that are confusingly similar to the INN are registered. The most demonstrative case is the registration by Rospatent of the trademark “Carniton” for the 05th class of the ICGS, though there is the approved INN “Carnitine.” The interested parties had undertaken the numerous attempts to challenge the registration of the designation and they managed to achieve the recognition of the trademark to be invalid only as a result of the consideration of the case by the Supreme Arbitration Court.Another case of challenging the actions of Rospatent regarding the registration of the designation was considered by the Presidium of the Intellectual Property Court. In 2011, JSC “KPKA” became the right holder of the trademark “Bravadin” in respect of the 05th class of the ICGS, while there is the INN “Ivabradine.” In 2016, the first-instance court managed to recognize the legal protection to be invalid, however, the owner of the designation challenged the decision of the court, and only the Court of Cassation put a final end to the conflict in 2017, by recognizing the decision of the first-instance court as true and legal.
- To create a combined designation, which includes the INN or its fragments in the form of unprotected elements. In this case, the potential right holder pursues the aims, which are similar to the above. But realizing the impossibility and illegality of the registration of the INN as a trademark, he indicates it in his application as the element that will not be covered by the exclusive rights. While carrying out an examination of the means of individualization, the specialist finds out the significance and role of the INN in the whole trademark composition, and provided it does not occupy a dominant position, making a positive decision in favour of the registration of such trademark is possible.
Such tactics can be considered as the most successful one. The right holder applies the INN together with other elements, which in the aggregate compose the trademark. The current legal protection allows avoiding unfair copying the means of individualization and the general appearance of the packaging. The similar strategy for the creation and registration of the trademark was chosen by the company OTCPharm. According to the results of the check, Rospatent registered the combined trademark containing the word combination “Magnelis B6 Magnesium + Pyridoxine 50” (Fig. 1). In this case, the following was indicated as the unprotected elements: “All letters, numbers and words, except for “Magnelis,” the marks “+,” “®.” Thus, the approved and applied INN was withdrawn from the legal protection.
In conclusion, it should be noted that whatever strategy for the development and registration of the trademark has been chosen by the right holder, by using the INN in the designation, he pursues the aim to attract the attention of the consumer to the drug and to facilitate selecting the product among the existing variety of the homogeneous products.
For the representatives of the medical field and the consumers to be able to use a pharmaceutical product, as well as to introduce it to the market, a medicinal product must have a name. The name allows distinguishing the object or the drug having a particular composition, and, in the case of the pharmaceutical industry, reducing the cases of doing harm to the health of the consumers due to confusing.
The Federal Law “On Circulation of Medicinal Products” stipulates the following kinds of the names used in relation to medicinal products and pharmaceutical substances (Paragraph 16-17.1 of Article 4):
- The international nonproprietary name of the medicinal product (hereinafter referred to as the INN) is a name of the active ingredient of a pharmaceutical substance that is recommended by the World Health Organization.
- The trade name of the medicinal product is the name of the medicinal product given to the drug by its developer, holder or owner of the registration certificate.
- A generic name of the medicinal product is the name of the medicinal product that does not have the international nonproprietary name or a combination of the drugs, which is used for the purposes of combining them into a group under the single name based on the same composition of the active ingredients.
Due to the fact that the medicinal products are distributed through retail trade networks, the trademarks may also be used as the name of the drug. In Article 1477 of the Civil Code of the Russian Federation, the trademarks (hereinafter referred to as the TMs) are defined as: “...a designation used for the individualization of the products of legal entities and individual entrepreneurs.” The 5th class of the ICGS is used for the registration of the designations in relation to the drugs.
It follows from the above definitions that they all are the designations used in the pharmaceutical industry, however, they have a different legal status and they differ in their content and the purposes performed. A further analysis allows dividing the concepts into two groups: the first one includes the INNs and the generic names of the drugs; the second one includes the TMs and the trade names of the medicinal products. Such gradation is due to the nature of the designations: the first category of the names performs the task of identifying the active ingredient or substance, and the names of the second category are used for identifying the drug at the commercial markets, i.e. for distinguishing the product among other homogeneous ones (including, according to the composition). It seems possible to assume that the generic names and the trade names, by their nature, are the precursors of the INNs and the TMs, accordingly. Due to this reason, analyzing and comparing the content and the scope of the rights of just the latter concepts will be the most appropriate.
The common features in the registration and the status of the international nonproprietary names of the medicinal products and the trademarks
As it has been noted earlier, in addition to the fact that both kinds are used in the pharmaceutical industry and they are the designations used to identify the medicinal product, the INNs and the TMs also have a number of other similar features. Thus, despite the fact that the designations are checked by the different bodies in order to obtain the status as “valid,” the check stages are almost identical in general:
- Filing an application for the registration of the designation.
- Considering the application, carrying out two stages of an examination: a formal one, which is the check of the compliance of the submitted documents with the necessary conditions, and the substantive examination of the designation, during which it is found out whether the designation complies with the requirements.
- Publishing the claimed designation to get comments and objections.
- If there are no objections and if a positive decision is made during the two stages of the examination, obtaining the status as “valid” for the name and as a result, the emergence of a certain legal protection.
One of the purposes of creating the INNs and the TMs can also be considered as common: both the WHO and the Russian legislator point out to the importance of reducing a risk of confusing the consumers. To achieve the maximum results in this field, there is a bilateral prohibition to the registration of the similar designations: neither the registration of the trademarks being identical to the INNs is allowed, nor the protection of the international nonproprietary names that conflict the already registered TMs is possible.
The differences between the trademarks and the international nonproprietary names of the medicinal products
First of all, it should be mentioned that the concept of the INN has been introduced into the world practice of the WHO, and it is recognized and applied in the Russian Federation in accordance with the norms of the international treaties, to which it is a party. The description of a legal institution of the trademarks is contained in Paragraph 2 of Chapter 76 of Part 4 of the Civil Code of the Russian Federation.
The concepts under consideration differ in a number of the reasons, which can be clearly set forth in the form of a comparative table.
The information presented shows that the INN and the TM have a number of similarities and differences, while the most important thing is the main similarity, which is in the purpose of creating the designations, namely: to avoid confusing the consumer and the possible adverse consequences resulting from this.
The introduction of the International Nonproprietary Names (hereinafter referred to as the INN) into the world practice began in 1950 with an adoption of the Resolution WHA 3.11. by the World Health Organization. Three years later, the first list of the INN was published, and currently, according to the WHO data, the number of such names is about 8 thousand.
In Russia, the procedure for the application of the INN is specified in the provisions of the Federal Law of 12.04.2010 No. 61-FZ “On Circulation of Medicinal Products.” According to Paragraph 16 of Article 4 of the above normative act: “An International Nonproprietary Name of a medicinal product is a name of the active ingredient of a pharmaceutical substance that is recommended by the World Health Organization.”
To grant the legal protection to the INN, the WHO must consider the application, carry out an examination of the designation, make a decision on the approval of its results and publish the decision. During this period of time (approximately 26 months), the offered name is outside the legal status of the INN and it acts as a National Nonproprietary Name (hereinafter referred to as the NNN). In practice, the differences between the INN and the NNN are only in the territory covered by the rights – the latter are protected only within the country, and in the validity period (the protection of the NNN is valid up till the recognition of the designation as an international one).
A detailed analysis of the WHO resolutions and the domestic legal documents in the field of pharmaceuticals allows identifying a number of the features determining the international nonproprietary name:
- It is a unique name of the pharmaceutical substance.
- The registration of only one INN is allowed in respect of one pharmaceutical substance.
- This designation is approved and recommended by the WHO, and therefore, it is recognized worldwide and it is applied in different countries of the world.
- The INN is a subject of the public domain and it can be used by any person, who is engaged in the manufacture and circulation of drugs without any restrictions.
- Due to the general recognition of the nonproprietary names of the medicinal products, they play a role of the universal international designations.
Thus, the INN is a publicly available and world-famous name of the pharmaceutical substance, which makes it possible to simplify the work of the representatives of the pharmaceutical and medical spheres and to avoid some possible confusion and errors.
The role of the International Nonproprietary Names of drugs in the registration of trademarks
Taking into account the oversupply of the products in all branches, including the pharmaceutical one, the manufacturers of the drugs prefer to release the products to the consumer market under a trademark, i.e. the registered designation with the elements of a fantasy nature.
The use of the INN allows physicians identifying correctly the pharmaceutical substance incorporated in the drug, whereas the trademark allows consumers identifying the product.
In order to simplify the examination of the trademarks claimed in respect of the drugs in Russia, Rospatent has created and approved the Instruction for the use of the WHO database containing the information on the International Nonproprietary Names. The document contains the tasks for which fulfillment the trademarks and the International Nonproprietary Names are created: “... the INN, unlike the trademarks, serve to identify not the product itself and its manufacturer, but to identify the active substances in the composition of the drug.” The spheres of the application of the concepts under consideration become obvious: one concept identifies the drug from the point of view of its pharmacological composition and it is intended to determine the active ingredients incorporated in the drug. Another concept distinguishes the medicinal product in order to identify it among other drugs with the homogeneous composition and it is intended to identify directly the quality of the product.
If we consider the INN regarding their influence on the trademarks that are created and registered, the following can be highlighted:
- At the moment of the development of the designation, it is possible to use the INN as a basis for creating a fantasy word element in the composition of the trademark. For example, the trade name Ribamidil(R) is used for the drug having the general INN Ribavirin.
- At the step of the substantive examination of the trademark, among other things, the specialist shall check the designation as to the compliance with the requirements of Subparagraph 2 of Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation: “The state registration as the trademarks shall not be allowed in respect of the designations, which do not have a distinctive ability or which consist only of the elements that: ... are the general symbols and terms.” And also Subparagraph 1 of Paragraph 3 of Article 1483 of the Civil Code of the Russian Federation: “The state registration as the trademarks shall not be allowed in respect of the designations being or containing the elements that are: false or capable of confusing the consumer regarding the product or its manufacturer.” It is obvious that the INN are the general designations, and their incorrect use can confuse the consumer. Due to these reasons, the experts pay an increased attention to a comparative analysis of the claimed trademarks and the INN recognized by the WHO.
- The International Nonproprietary Names may be incorporated in the trademark as an unprotected element in accordance with Article 1483 of the Civil Code of the Russian Federation: “... the elements that cannot be registered as a trademark may be incorporated as an unprotected element provided that they do not occupy a dominant position in it.”
Summing up, the following foundational circumstances should be noted:
- The INN is a unique name of the pharmacological substance that can be used by any person, on any territory, without any restrictions as to time.
- When creating the trademark, the manufacturer may be guided by the INN in order to create the fantasy word element.
- When checking the designation claimed for the registration as a trademark in respect of class 05 of the ICGS (pharmaceutical products, medicines and veterinary drugs, etc.), the experts carry out a comparative search for the novelty of the word element of the trademark using, inter alia, the INN Database represented on the WHO website.
According to the norms of the Federal Law “On Circulation of Medicinal Products,” a drug developer or a registration certificate holder shall give a trade name to a medicinal product. The latter one may be registered as a trademark. Obtaining the state certificate for a means of individualization will allow the right holder using the exclusive rights belonging to him/it in full.
The kinds of the names used in respect of medicinal products
If to consider the trade names of the drugs from the point of view of the uniqueness of the designations used, the following kinds can be highlighted:
- The original names that consist of the word elements of a fantasy nature.One of the well-known medicinal products that are distinguished by the fantasy trademark is the medical drug “Venarus.” The designation registered in respect of JSC Pharmaceutical Enterprise Obolenskoye has a fictitious nature and it contains an indication to the sphere of the exposure of the medicinal product. This makes it easier for a consumer to choose the necessary drug.
- The derivative names, which are the word elements, as well as their combinations, which indicate indirectly or directly to an international nonproprietary name of the drug or to its active ingredients. The previously valid trademark of the company Spofa—Usines Pharmaceuticals can be given as an example. The designation “Ascorutin” has been registered in respect of the medicinal products and it is a combination of the word elements consisting of the abbreviated names of the chemical substances that are incorporated in their composition: ascorbic acid and rutin.
The classification offered above allows explaining partially the specific requirements lodged for the names of the medical drugs protected in the form of the trademarks.
The peculiarities of an examination of the trademarks registered in respect of medicinal products
The trademarks used for the individualization of the drugs are stipulated by the 5th class of the ICGS. According to the provisions of the Civil Code of the Russian Federation, any additional requirements shall not be lodged to such designations and they, similarly to other trademarks, shall undergo two steps of checking for the compliance with the patentability conditions required.
The first step is carrying out a formal examination: the specialists check the availability of the necessary documents and the correctness of filling in them.
The second step is carrying out the examination of the designation for the compliance with the requirements stated in Article 1483 of the Civil Code of the Russian Federation. At this stage, there are a number of the peculiarities associated with an analysis of the designations claimed in respect of the medicinal products.
According to Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation: “The state registration as the trademarks shall not be allowed in respect of the designations, which do not have a distinctive ability or which consist only of the elements that:
1) have come into a general use to designate the products of a certain kind;
2) are the general symbols and terms... .”
The trade names and the International Nonproprietary Names (the INN, for short) may be used in respect of the drugs. The registration of the original name as a trademark is quite possible, while the registration of the INN as a trademark is contrary to Subparagraph 1 and Subparagraph 2 of Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation. Thus, while checking the designation as to the compliance with the requirements of the above Paragraphs, the experts pay an increased attention to a analysis of the word elements of the trademark and carry out a comparative characteristic with the INN that are currently available. In addition, it should be noted that in the case of the registration of the combined trademarks, which contain the visual elements, it is also necessary to avoid the general symbols. For example, the designations with an image of the famous mark of medicine in the form of a snake with a bowl may not pass an expert examination. Or such fragment, due to the fact that it is widely used as a general symbol by various companies in the field of medicine and it can be attributed to the unprotected elements.
In accordance with Paragraph 3 of Article 1483 of the Civil Code of the Russian Federation: “The state registration as the trademarks shall not be allowed in respect of the designations, which are or contain the elements:
1) which are false or capable of confusing the consumer in respect of the product or its manufacturer... .”
Applying the provisions of this Paragraph to the trademarks used for the individualization of the medicinal products, it is possible to note a special importance of the prohibition on the registration of the designations that are false and capable of confusing the consumer. The fact that trademarks are applied in respect of the medical drugs allows concluding that there is a potential possibility of doing harm to the health of the buyer. The reason for this may become the erroneous conclusions of the consumer. For example, regarding the sphere of the exposure of the drug or its composition due to the presence of the false elements incorporated in the trademark.
It is also not allowed registering the designations that are identical or confusingly similar to the means of individualization and other subject matters of intellectual property belonging to other right holders that are registered duly and have an earlier priority date. In this case, the legislator is also intended partly to defend the buyer, who, according to a general rule, does not have the specific information regarding the manufacturer of the drugs. In the case of the registration of the similar subject matters, the probability of confusing the products is high.
In conclusion, it should be noted that all the above described peculiarities of the examination of the designations claimed for the registration as the trademarks in respect of the drugs are due to the specifics of the individualized products. Namely: due to the possibility of their influence on the body and the well-being of the consumer and due to the danger of doing harm to the health of the buyer in the case of confusing him or due to the incorrect interpretation of the information contained in the name of the drug.
The development and release of effective medicinal products to the commercial markets are the main objectives of the pharmaceutical industry. In accordance with the Federal Law “On Circulation of Medicinal Products,” the right holder of the registration certificate for a medicinal product shall give the latter a trade name. The legislation of Russia does not contain the norms describing the peculiarities of the registration and protection of the rights to the trade name, however, there is an institution of trademarks, which, undoubtedly, can be considered as a legal analogue of the trade names. Since the medicinal products play a significant role in pharmaceuticals, and they act under some designation in the turnover, it seems logical to analyze the peculiarities of the trademarks in terms of the use for the medicinal products.
The advantages of the registration of the medicinal product trade name in the form of a trademark
Despite the fact that the legislator does not oblige companies to register the trade names of the medicinal products as trademarks, such actions are appropriate for the following reasons:
- The registered trademark gives the right holder a monopoly right to use the protected designation.
- The minimum protection period of the trademark is 10 years. Then, upon the holder’s declaration, it is possible to extend the validity period of the certificate for 10 year an unlimited number of times. The maximum protection period of the invention in respect of the medicinal products is 25 years. Thus, the right holder can enjoy the exclusive rights to the trademark during the entire validity period of the patent protecting the medicinal product. In this case, it is possible to speak about a full defense of the product from illegal encroachments in respect of both the product, and the designation distinguishing the product.
- The availability of the protection documents ensuring the defense and lawful holding several subject matters of intellectual property allows the holder concluding the license agreements for the use of a set of the rights. The advantage is the fact that the interested parties, while concluding the license agreements, get an opportunity to use the set of the subject matters (since the patents belong to one right holder) ensuring the lawfulness of the manufacture of the similar product.
- After the expiration of the validity patent for the invention, in the case of keeping the existing certificate for the trademark, the company can continue manufacturing the medicinal product under the name that is already known to the consumers.
- In the case of illegal actions, the company has a full range of the opportunities to defend and restore the violated rights. The development, manufacture and release to the market of the medicinal products require substantial money costs. It is logical to assume that there is a large number of unfair entrepreneurs wishing to be engaged in the illegal manufacture of the medicinal products. The legal regime of the protection of the registered inventions and trademarks allows the legal holders suppressing the illegal actions of other persons and recovering damages from them.
All the above circumstances indicate the feasibility of the registration of the medicinal product name as a trademark.
The varieties of the trademarks registered in the pharmaceutical field
The registration of the trademarks used in respect of the medicinal products is stipulated by the 5th class of the International Classification of Goods and Services. The procedure for granting the legal protection to such designations is similar to a conventional one.
The trademarks registered for the use in the pharmaceutical industry can be classified according to the following grounds:
- Depending on the moment of filing the designation for the registration.
- The means of individualization, in which respect the application for the registration is filed before the release of the medicinal product to the commercial market. One of the steps preceding the sale of the product (in this case, the medicinal product) is the creation and registration of the trademark.
- The designations claimed after the beginning of the use of the name. The company may release the medicinal product to the market, and make a decision subsequently on the need for protecting the means of individualization used in the form of a trademark.
- Depending on a degree of uniqueness of the designation.
- The names that do not have any association with the active substances of the medicinal product, etc. Such designations are created for the manufacturers that consider the registration of the unique trademark as successful. When developing the trademark, the creators rely on the novelty of the designation, and if the product is promoted correctly, an associative link “product-designation” is fixed firmly in the consumer's mind. The positive aspects of such position are that even after the expiration of the validity period of the patent for the invention, the consumer will buy most often the medicinal product under the name that is already known to him.
- The trademarks including the word elements being consonant with or containing the derivative words from the International Nonproprietary Names of the substances included in the medicinal products (INN). A strong aspect of such trade names is a direct and obvious for the consumer link between the medicinal product and its formulation or active substance. However, such names are quite difficult and most often impossible to register as trademarks.
- Depending on a kind of the designation.
- The means of individualization consisting of the word elements, namely: a combinations of the letters having a word character, words, sentences, as well as their combinations. In this case, the issue is about the designations consisting solely of the trade name under which the release of the medicinal product to the market is planned.
- The combined trademarks are the designations that consist of several varieties of the elements: word, visual or holographic. For example, the trademark that includes the name and the visual element associated with the active chemical substance or that informs the consumer about the purposes for which the medicinal product can be used (an image of a sore throat, head, etc.).
The said varieties allow concluding that there are different kinds of the designations and the conditions for their registration. This allows the companies working in the field of pharmaceuticals choosing the best variant for the registration of the trade name in the form of a trademark to distinguish the medicinal product at the commercial market.
The subject matters of intellectual property are a result of the creative, intellectual labour of a person. It is logical to assume that the subject, whose reasoning and efforts have led to such a result, wants to gain tangible benefits in some way by applying it.
The first step on the way to gain the profits from the use of intellectual property is definitely ensuring an appropriate regime of the legal protection.
If this is a subject matter that falls within the copyright or the related rights, namely: a book, an audiovisual work, a song, etc., then the protection of the property and non-property rights of the author arises automatically since the moment of the creation of the work and its expression in an objective form. The disputes on proving authorship arise quite often, so the most correct solution will be depositing a copy in order to verify the rights of the creator of the subject matter and establishing the date of the creation of the work, which is in fact a priority date of the author's rights.
In the case of the patent industry – in order to recognize the rights to the result of the creative work, it must be registered with Rospatent. In this case, an invention, an industrial design, a trademark or other subject matter must contain certain features. The compliance with such conditions of patentability is checked during carrying out a state examination. In the case of a positive decision of the office, the holder of the result of the intellectual activity obtains a patent certifying his exclusive and non-property rights to the claimed subject matter.
In general, ensuring the appropriate regime of the legal protection in respect of the result of the intellectual activity is important due at least to two significant reasons: firstly, the right holder will be able thereby to prove the authenticity of its powers to potential investors and other persons. Secondly, the legal holder of intellectual property is entitled to prohibit other persons to use the subject matter hold by him, and in the case of an illegal use, to apply to the court with a request to defend the violated interests and to recover the damages caused.
At the second step, it is necessary to determine the way, by which it is possible to gain the profits from the subject matter of intellectual property. It is permissible to distinguish the following kinds of gaining benefit from the use of the subject matters of intellectual property:
- Gaining the profits directly. Income is achieved directly from the operation of the subject matter itself: revenue from the sale of literary works, movie screenings, performing songs by artists at concerts, etc. The holder of the result of the creative activity may get a systematic income, which depends on the popularity of the work created.A striking example of gaining the profits from the use of audiovisual works is the fairly popular in the modern world monetization of video on a YouTube channel. Some person makes a video clip with a desirable content, but at the same time it is acceptable from a moral and ethical point of view, and then he puts it at his YouTube channel. Then the application for participating in a partner program of the server is filed. As soon as the videos become popular, the author can get the income: from advertising, which will be included before or during the video; as a result of the sale of the souvenir products associated with the author of the videos or from the payment for the right to view, in the case if the subscription to the channel becomes paid.Another variant is to get a lump sum payment as a result of the sale of the rights to the subject matter under an agreement on the alienation of the rights in favor of another person, as a rule a production center engaged in the promotion of performers or a film company making various films.
- The income from granting the right to the temporary use of the subject matters of intellectual property and the means of individualization to third parties. In accordance with the current legislation of the Russian Federation, the right holder of the exclusive rights may transfer to other persons the right to use the subject matter under a license agreement. The license agreements are most popular in the field of the trademarks, copyrights and related rights. The transfer of the rights to the use of the trademark as a part of the company brand is also governed by the norms regarding a commercial concession agreement, sometimes referred to as franchising. The main difference between the license agreement and the commercial concession agreement is in the scope and range of the rights granted: in the latter case, the right holder transfers the legal powers to the use of a set of the rights, which, in addition to the rights to the trademarks, also includes the rights to other subject matters of intellectual property. One of the most striking examples of gaining the profits from the commercial concession can be the history of KFC, which grants the rights to the use of the own brand under the franchise agreement to other persons. Thus, the company expands the coverage of the territory, increases the popularity of the enterprise and gets the profits from the use of the intangible assets of the enterprise.
- Gaining the profits from the use of intellectual property as a part of a complex subject matter. An example can be the use of the furniture design protected by the patent for the industrial design. The consumer acquires a product, in our case the furniture, in the creation of which, several results of the creative labour are used: the industrial design (expressed in the product design), the invention (this can be the springs being unique in their characteristics in the cushions of the furniture), etc.
When using a number of the subject matters of intellectual property, it is quite difficult to determine an amount of the income got from the application of each solution separately. Therefore, the vast majority of the manufacturing companies acquire from the right holder of the invention of interest to them the exclusive rights in full under the agreement on the alienation. Thus, regarding an individual, the point can be about a one-off benefit.
- Gaining the profits by attracting consumers through the use of the means of individualization as a part of the company brand. In this case, the point is about the use of the trademarks, the places of origin of the products and other means of individualization. Despite the fact that the subject matters are created ultimately by a person or a group of persons, there is no indication of the authorship in the certificates for the trademarks. And the legal regime stipulates a possibility of holding the rights exclusively in respect of the legal entities.
Despite the fact that the income from the use of these subject matters of intellectual property is very difficult to calculate, the experience of the large companies and the international holdings indicates to a direct relationship between the volume of revenue and the popularity of a particular means of individualization. For this reason, having noticed a decline in the popularity in respect of their products, many companies carry out the so-called rebranding, which consists in changing the colour, graphic or a word content of the designation. For example, during the whole history of the company, the world-famous brand Coca Cola has carried out rebranding more than 11 times starting since 1886.
According to the studies carried out by the Egor Gaidar Institute for Economic Policy, the volume of the electronic sales in Russia will grow up to 2.78 trillion roubles by 2024. The foreign colleagues are even more optimistic and they predict an increase up to 3.49 trillion roubles. To justify the continuous growth and popularization of the trade in the Internet segment is quite simple: buying and selling with the use of virtual space is convenient both for the buyer, who saves the money and time, while getting access to an unlimited range of products, and for the seller, who avoids the costs for renting retail spaces, the wages of sellers, etc. For the above reasons, the industry development is implemented with an impressive speed, thereby stimulating the attraction of intellectual resources and the implementation of innovation in the e-commerce field.
In order to determine the ways to gain profits from the use of the subject matters of intellectual property in Internet projects, it is worth analyzing the functions that are implemented as a result of these actions. Depending on a purpose of the use, it is possible to distinguish:
- The results of the intellectual activity, which are designed to ensure the operation and full functioning of websites. These include IT technologies for defending the personal data, keeping the information, the programs for electronic computing machines that ensure the ability of making financial transactions through electronic networks, etc.
- The subject matters of intellectual property that are designed to attract the attention of consumers to products and a virtual store. The electronic markets, like the traditional ones, are crowded with homogeneous products, and therefore the growth of the consumer activity is a key to success and a goal, which selling firms aspire to.
- The creative labour results, which rights to the use are directly the sale subject matters, which are represented on the websites.
If we consider the monetization of the subject matters of intellectual property from the point of view of the branches of the law, then the spheres of the copyright, related and patent rights, as well as manufacturing secrets may be referred to them:
- The subject matters of the copyright and the related rights are one of the most useful resources in the electronic environment. Movies, songs, videos, books – consumers acquire readily an opportunity to get acquainted with the works of their favorite writers, singers or actors. In addition, it is important to remember that the field of the copyright includes the programs for electronic computing machines, thanks to which electronic devices function.
- The patent industry can be considered a repository of the solutions capable of bringing income to their creator. The invention embodied in life can become a product sold in an online store. Various equipment for computers, as well as software, may be subject to the patent law. In addition, it is worth mentioning the means of individualization that are actively used to promote the products at the economic markets.
- Nominally, the manufacturing secrets are not the subject matters of the monetization in the Internet projects, however, along with the means of individualization, they play an indirect role in increasing the profits from the e-commerce, for example, in the case of the sale of the products manufactured with the use of the manufacturing secrets.
The examples of the monetization of intellectual property in Internet projects
Discussing gaining benefits from using the results of the intellectual activity and the means of individualization, it should be noted that the dependence on these subject matters can be both direct, in the case of the sale of the book in an electronic format, and indirect, for example, with an increase in demand for the product, since the moment, when the buyers has identified it thanks to a well-known trademark.
An excellent example of the monetization of intellectual property in the Internet projects can be an example of the trading company “Sozvezdie Krasoty,” whose interests Zuykov and Partners have happened to represent. The range of the electronic store of the above company, in addition to the various skin care products, includes the devices designed for machine cosmetology, which are the results of the intellectual activity patented in accordance with the legislation of the Russian Federation, what is informed directly to all visitors of the website by the company.
There are also a large number of different Internet projects for the sale of book editions, movies, songs and audiovisual works. So, any willing may buy a printed or electronic version of any of the books published by the publishing house on the website of the publishing house “MIF.”
As to the promotion of the websites through the use of the means of individualization, then, among other things, it is advisable for the electronic stores to obtain a domain name being similar to the word element of the trademark used. This is how the well-known manufacturer of dairy products, the company Danon, did, having registered the domain website danone.ru in its name.
Despite an active automation in all spheres of the social activity, an application of the results of the human intellectual labour can become an engine of any branch of industry. Innovative manufacture methods, unique technologies and materials – the development of industry depends directly on an inventive activity of people. The pharmaceutical industry is not an exception – new medicinal products are also a result of the human creative labour.
The subject matters of intellectual property applied in the pharmaceutical industry
According to the Great Medical Encyclopedia: “The pharmaceutical industry is a branch of the economy that combines the manufacture of drugs and medicinal and preventive means.” Therefore, when considering intellectual property used in this field, it is necessary to consider the subject matters that are used in one way or another in the manufacture and distribution of the medicinal products. These can include:
- Inventions. In this case, the issue is about obtaining a patent for the invention describing directly the medicinal product: its formula, composition, substance, etc.
- Trademarks. When releasing the product to a commercial market, including the drug, it is important for the right holder to individualize and distinguish the product. The most successful solution in this case will be the registration of a trade name as a trademark.
- Industrial designs. If original packaging is used for storing and using the medicinal product, the manufacturer is entitled to register it in the form of an industrial design, thereby defending the exterior design of the product packaging against unfair copying.
The use of the inventions in the pharmaceutical industry
The companies engaged in the manufacture and sale of the medicinal products can be divided into two key groups:
- The enterprises-developers of medicinal products.
- The enterprises-manufacturers of generics.
The activities of the first type of the organizations include: developing, testing and manufacturing new drugs. It is in the interests of such pharmaceutical manufacturers to ensure patenting the invented medicinal products, registering the used names in the form of trademarks, and, if necessary, obtaining a patent for an industrial design. All the processes associated with releasing the medicines to the commercial market are very long-standing and time-consuming, and they also require large monetary costs. It is logical to assume that there are the organizations that do not have the funds to developing, testing the drugs and to their subsequent registering, or the ones that do not wish financing the inventive activities and preclinical and clinical trials. Such firms are engaged in the manufacture and sale of the generics – the copies of the patented medicines or the drugs, the validity period of the patents for which has expired. These enterprises do not bear the financial costs, while patenting the subject matters of intellectual property, as they use other people's inventions after the expiration of the period of their legal protection, but unlike the companies-developers, they are not the creators and they do not have the exclusive rights to the manufactured drug.
In accordance with the provisions of the Russian legislation, the medicinal product may obtain a legal protection in the form of a patent for the invention describing:
- a chemical compound (formula);
- a method of producing the chemical compound (substance);
- a pharmaceutical composition based on the chemical compound;
- a method of the application of the chemical compound or the pharmaceutical composition;
- a method of treatment using the chemical compound or the pharmaceutical composition.
According to Paragraphs 1 and 2 of Article 1363 of the Civil Code of the Russian Federation, the maximum validity period of the patent for the inventions in respect of the medicinal products may be 25 years.
The registration of the trademark for the use in the pharmaceutical industry
The Federal Law “On Circulation of Medicinal Products” defines the trade name of the medicinal product as: “a name of the medicinal product assigned by its developer, holder or owner of the registration certificate for the drug.” The legislation of the Russian Federation lacks the norms stipulating the obligatory registration of the names of the medicinal products as the trademarks. However, the expediency of such actions is obvious – the exclusive rights to the trademark are absolute by their nature, thereby causing a prohibition to other persons to use the designation without a permission of the owner. Otherwise, the unfair manufacturers can apply freely the designation or they can register it as the trademark and use it at their discretion.
There is the 5th class of the ICGS “Pharmaceuticals” for the registration of the trademarks in respect of the drugs. The period of the protection of the trademarks registered for this class does not differ from the period of the exclusive rights to other trademarks.
The role of intellectual property in the pharmaceutical industry
Reasoning about the importance and place of intellectual property in the pharmaceutical industry, it should be noted that the registration of the manufactured drugs and the used trade names in the form of the subject matters of intellectual property allows ensuring the protection, defense and exclusivity of the rights of the companies-manufacturers of the medicinal products. Essentially, the drug is a result of the human creative labour, and patenting in the form of an invention allows ensuring an exclusive mode of the use and ensuring a monopoly for the manufacture of the medicinal product during the validity period of the rights to the invention. By registering the trade name of the drug in the form of the trademark, the manufacturer ensures the mode of the protection against the unfair competitors that may use the name of the drug to manufacture the counterfeit medicines.
Thus, intellectual property plays a key role in the pharmaceutical industry allowing the companies-manufacturers consolidating the exclusive nature of the rights owned by them and thereby recovering the financial costs incurred during developing and testing new medicinal products.
It is commonly known that the subject matters of intellectual property are divided into two large categories: the results of the intellectual activity and the means of individualization. At the same time, despite the fact that the latter are distinguished as a separate group, and the protection certificates lack an indication to the author, who has created the designation, the means of individualization are also a result of the human creative labour.
Any action, as a rule, is carried out for some purpose. The creation of the subject matters of intellectual property is not an exception. At the same time, the idea that a person is guided by is due to a variety of the circumstances and peculiarities: both external and internal, both material and spiritual. Undoubtedly, the guidelines, values and tasks of any individual are influenced by the society, in which he exists and the moral norms accepted in it. Thus, in the era of the USSR, the ideology of the human service for the benefit of the person and the state was strongly developed. The inventors were engaged in the innovative activities in order to make the country superior to other ones in terms of the level of the technology development, the degree of the outer space exploration and the volume of the manufacture of various products.
As the researchers in the field of trademarks and brands point out rightly, the theory of consumption is currently the closest one to the mankind. That is, the life of the overwhelming majority is aimed at achieving and satisfying the personal desires. The famous phrase says: “Where there is demand, there is supply.” A characteristic feature of the consumer society is the growth of the consumer demand for a particular product depending on its popularity, quality characteristics, publicity and other factors.
Are the intellectual property institutions capable of existing and developing in such conditions? Absolutely, yes. What is the purpose that the creator of intellectual property can be guided by now? It is worth assuming, that in the modern world, gaining benefits is in the majority of cases the actual purpose for which an invention, an industrial design, a trademark or other subject matter is created. The ability to monetize the result of the creative labour, that is, to gain profit from its use or sale – this is the main driving force for the creation of a variety of the subject matters of intellectual property. The positive consequences of the monetization of the results of the creative labour are obvious: the creator gets a possibility to be engaged in the scientific, creative activities, to develop the sphere in which he works, and he also gains income for the labour done.
Due to the excess and variety of products, the intangible subject matters start to be appreciated higher and higher every year: IT-technologies, manufacturing secrets, trademarks, patents for inventions and so on. It is the possession of the modern and unique subject matters of intellectual property that allows the enterprises and entrepreneurs winning and keeping a competitive advantage. Thus, despite the fact that the humanity lives in the era of consumption, the demand for the subject matters of intellectual property, and therefore their cost, is constantly increasing.
Is monetization considered as a driver of the development of intellectual property, or is intellectual property considered as a source of the improvement of the commodity-money relations?
Monetization is the ability to gain profit for the use or sale of some subject matter. The benefits of the use of intellectual property are a powerful motivation for its creation by the person and for the further use by the enterprise.
The advantages of the monetization of intellectual property are confirmed by the constant introduction of new technologies by the international and well-known companies. Thus, the world leaders in the manufacture and sale of household and electronic appliances, in order to maintain the competitive advantage, every year, and sometimes more often, manufacture new modifications of the best-selling products using the unique technical solutions. For example, Samsung Electronics, which annual income reached 53.65 trillion wons in 2017 and 58.89 trillion wons in 2018, manufacturers the advanced models of smartphones, LCD TVs and household appliances every year. This, as noted in the official report, contributes to strengthening a stable leading position of the company in the market with a high level of competition and a regular increase in profits based on the results of the annual reports.
However, in a detailed study of the issue, it is possible to notice that it is the development of the intellectual property institutions that has made the very process of monetization possible. For example, in the electronic networks; what, of course, has become a result of the creation and use of the achievements in the field of IT technologies.
If we consider the influence of intellectual property on the development of the economic markets, including the improvement of the monetization methods, we can note that:
- Intellectual property is a tool that allows improving the manufacture performance of the firms and the quality characteristics of the products.
- The results of the creative labour and the means of individualization can be directly a subject matter of purchase and sale. For example, when it comes to the acquisition of a trademark, an invention, an audiovisual work or other subject matter.
- The correct use of intellectual property leads to an increase in the consumer demand and it increases the cost of the company assets.
Thus, it can be asserted that monetization and intellectual property are dependent and complementary fields. The result of their interaction is the progress of both directions, what leads to their popularization and active development.
According to Rospatent, in Russia, starting since 2014, at least 60 thousand applications for the registration of trademarks are filed annually, and in 2018, this figure reached the mark of 76,062 trademarks. All these designations have their right holder, and some of them are also used by other legal entities on the basis of the license or franchise agreement.
Article 1485 of the Civil Code of the Russian Federation, which states that the trademark is registered and protected in accordance with the norms of the Russian legislation, testifies that the designation consists: “...of the Latin letter “R” or of the Latin letter “R” being in a circumference or of the word designation ”trademark” or “registered trademark.” At the same time, it is indicated in the Civil Code that the holder of a means of individualization is entitled to place the said certifying mark, and, therefore, affixing such designation is not a mandatory procedure. At the first glance, it seems that it is easy to identify the right holder of the trademark, because the package contains a reference to the manufacturer that is likely possessing the trademark. However, this is not the case, due to the prevalence of an integrated manufacture of the products. In this case, the raw materials are obtained by one company, the package is manufactured by another company, and the product is assembled into a whole piece by a third company. In this case, it is permissible to mention several companies on the package, while it is quite unnecessary for one of them to be the right holder of the trademark, for example, if the designation is used on the basis of the license agreement.
Why it will be necessary to identify a right holder of the trademark
The cases, in which the information about the holder of the designation will be useful are usually as follows:
- Before filing an application for the registration of a trademark, when the applicant plans to register the designation that is confusingly similar or identical to the protected trademark used to individualize the homogeneous products and services. According to a general rule, such registration is prohibited. The exceptions are the cases, when the applicant receives a letter of consent to the registration of the designation from the current right holder.
- When the company wishes to use the registered “someone else's” trademark to mark the homogeneous products. For this purpose, the license agreement or the franchise agreement is concluded with the holder of the exclusive rights.
- If some legal entity has decided to obtain the protected trademark and to become a full and exclusive holder of the designation by concluding an alienation agreement with the original right holder of the trademark.
- In the case, when the right holder turns to the company with a proposal to conclude the license agreement to the use of the designation belonging to it. As a confirmation of the authority of the entity that has offered to carry out the transaction, it is advisable to identify the right holder of the trademark independently.
- The need to register the trademark is due to the consequences of the said action: certifying the exclusive rights of the holder and confirming the uniqueness of the designation. At the same time, some companies begin to use the designation even before the registration of the trademark, because they do not want to delay the start of the manufacture and the sale of the products. In this case, it is possible to claim for the termination of the use of the trademark, when it is similar to the one that is already protected. It should be noted that such claims may be addressed to the holders of the already registered designation as well. Despite the high skills of the specialists carrying out an examination of the trademark, the designations that can confuse the consumers are registered sometimes. The norms of the Russian legislation stipulate a pre-court procedure for settling the disputes regarding the trademarks. Thus, the right holder (or the entity representing itself to be such) is entitled to address to the alleged violator of the rights with a request to terminate committing particular actions, and possibly to claim for money damages. In this case, to identify the real holder of the designation means to understand whether the claims lodged are legitimate or whether they are illegal machinations and fraud.
How to identify a right holder of the trademark
As it turned out, it is usually not possible to identify the holder of the trademark judging from the information placed on the package of the product. Yes, the cases, when the company indicates directly to the fact that it possesses the exclusive rights are possible. But in the majority of cases, the very product does not contain such information.
The Rospatent’s website has the Register of the Registered Trademarks and Service Marks. This is a public document, however, carrying out a search using it is quite difficult, since it requires knowing a number of the document, such as the trademark or the application. A more convenient search system operates in an open access mode on the website of Zuykov and Partners. To carry out the search, it is enough to enter the name of the mark and to select an intended class of the ICGS regarding which the designation is registered. This service operates only on the basis of a database of the registered trademarks.
In the case, when the right holder’s search is carried out at the stage of a preliminary registration of the designation, it is also advised to carry out a complete search, which includes the database of the applications containing the similar designations. At the request of a client, the lawyers of Zuykov and Partners, while using their specialized resources, carry out an advanced search, which allows finding the similar trademarks and/or applications, identifying their right holders, and, if necessary, assessing the chances to the registration of the trademark.
The Rating of the richest people in the world according to Forbes, the Rating of the largest companies of Russia, the Rating of the world cities according to the quality of life – people enjoy reading and watching ratings in various fields. The reason for this is a human desire for perfection being inherent by nature. Achieving new heights, improving the quality of the skills obtained, the desire to do better than others – the love for competition is inseparably connected with the essence of the human nature.
Ratings in intellectual property
According to the Dictionary of Modern Economics, a rating is defined as: “...a complex of subject matters or phenomena ordered according to a numerical or ordinal indicator that reflects the importance, significance, prevalence, popularity and other similar qualities of this subject matter or phenomenon, as well as a methodology for this ordering.” Thus, the ratings are the lists, in which the subject matters classified by some feature or indicator are indicated.
The ratings in the field of intellectual property can be divided into two categories:
- The ratings, where the subject matters of intellectual property act as the subject matters being studied and analyzed.
- The ratings that include the law firms or the private lawyers advising on intellectual property matters.
The ratings classifying the subject matters of intellectual property
The variety under consideration is most often made based on the statistical information. Such data are obtained as a result of the collection of the data on the citizens' applications filed with the offices for the registration of the subject matters of intellectual property, filing the statements of claim with the courts to defend the rights or the appeals to other authorized institutions. This includes the use of the publicly available information from the social surveys and the information provided by the public authorities as a result of the suppressed offenses (for example, the reports of the Federal Customs Service of the Russian Federation).
One of such ratings made in 2017 is the Rating of the regions on the use of the subject matters of intellectual property. The data on the number of the subject matters of intellectual property of all categories used in the regions per 1 thousand people of the region population are taken as the basis of ranking. Based on those indicators, in 2016, the first place was taken by the city of Moscow, and the second one – by the Republic of Tatarstan.
The results of the Annual ranking of the most expensive brands in the world made by Forbes magazine are appear to be interesting. As it is known, the brand is not a subject matter of intellectual property, however, it includes the means of individualization, and the use of the subject matters of intellectual property at the enterprise influence on the value of the brand under which the company acts in the market. According to the said rating, in 2018, the first place belonged to Apple, whose brand was evaluated at more than 205 billion US dollars. The list made by the Forbes experts allows noting interesting peculiarities: firstly, according to the experts, Apple became a leader over the past nine years; secondly, the dominant positions are hold firmly by the company in the field of the development of digital technologies and the release of electronic devices. Thus, it is possible to determine the priority directions for the creation and development of the subject matters of intellectual property, as the rating reflects indirectly the consumer interest in the products being sold.
The ratings that include the law firms and the lawyers, who are engaged in the field of intellectual property
Such classifiers are made on the basis of the various factors reflecting the activity of the representatives of the law firms or the private professionals in a particular field of the protection or defence of intellectual property. The data about the number of the legal disputes, in which the company or the lawyer has participated is taken into account as a basis, as well as their ratio to the number of the cases won. Or, for example, the volume of the registered subject matters of intellectual property during the period under consideration.
The most well-known ratings are the following ones of the law firms in the field of intellectual property:
- WTR 1000. The Annual rating made on the basis of studying the Russian market of the legal services. It is published by World Trademark Review magazine and it contains a list of the firms that are the leaders in the segment of the registration and the legal defence of trademarks. In 2018, Zuykov and Partners entered the rating according to two categories: “The Law Enforcement and the Legal Proceedings” and “Administering the Trademarks Registration and the Strategy.” Sergey Zuykov and Alexandra Pelikh, whose achievements as the professionals of the law enforcement practice and the legal proceedings allowed them getting into the rating of the individual professionals in the field of intellectual property, were also mentioned.
- IAM Patent 1000: The World’s Leading Patent Professionals. The Rating of the key lawyers in the field of patent law. According to the results of the annual studying that is carried out by the analytical team of IAM magazine, Zuykov and Partners has entered the list of the successful Russian firms engaged in patent paperwork. The head of Zuykov and Partners, patent attorney Sergey Zuykov, has been included in the rating of the patent professionals.
- The Annual National Rating Pravo.ru-300. It is made taking into account customer feedback and it includes 26 nominations. Zuykov and Partners gets in the Russian rating during several years and it strengthens its position every year. In 2018, the company entered the 2nd group among the law firms engaged in the field of intellectual property. In terms of the revenue per employee, the firm took the 7th place among the organizations having less than 30 lawyers. Zuykov and Partners is also indicated for the first time in the rating by the total revenue.
What the ratings of intellectual property are for
If to consider the first category of the ratings – their need is due to the possibility to determine a direction of the further development of the sectors of intellectual property. In addition to this, such classifiers are used to identify the popular and progressive fields of intellectual property, in order to forecast and correct the scientific activity at the enterprise. The ratings allow an individual inventor finding the priority directions to express his creative potential.
As to the ratings of the law firms, their creation is important both for the very companies and for the clients. The management of the organization, thanks to the ratings, is able to assess their employees’ efficiency and performance. Studying the ratings gives the customers a number of advantages: firstly, the indication of the company in the well-known rating guarantees its bona fides; secondly, the probability of winning in the legal disputes is great, because the legal practice serves as a basis for the creation of some ratings; thirdly, the potential customer can be sure of the skills of the lawyers working in the company.
The trade markets of the XXI century have a number of characteristic features: a variety of products, a constantly changing assortment, the availability of the competing companies offering the similar products and instability of a consumer interest in the products. It becomes difficult to obtain and maintain a competing advantage in such conditions. In order to draw the buyer’s attention to the manufactured products, an entrepreneur should determine correctly a quality and cost ratio, as well as individualize the product, thereby distinguishing it from other homogeneous ones.
A trademark as a guarantee of a competing advantage
A constant lack of time and an abundance of products lead to the fact that the buyer, who has come to a store, loses a possibility of purchasing a product consciously, and he feels annoyed, because he does not know how to choose one product among three or five similar products that have an identical composition and price. In this case, a trademark works as a sort of a “small beacon” for the consumer: a familiar designation guarantying a particular quality of the products allows saving time, effort, and sometimes money.
For this reason, at the stage of coordinating the characteristics and steps of the manufacture of the products, and possibly even after the launch of the manufacture, it is reasonable to design the designation under which the product will be released to the trade markets. The legislation of the Russian Federation stipulates a number of means of individualization used to individualize the products: trademarks, commercial designations, the names of the places of origin of products, and soon geographical indications. Each of the enumerated subject matters of intellectual property has a specific status; however, the legal regime of trademarks is especially favorable for the use by entrepreneurs. The holder of the registered trademark owns the exclusive rights to the designation, which allow possessing the protected subject matter in full, as well as providing other persons the right to use it.
The assertion that the trademark ensures a competing advantage to the entrepreneur is beyond dispute. The world famous trademarks Coca Cola, Apple and Samsung are a vivid proof of this. The properly used trademark is capable of performing a set of functions that facilitate the promotion and sale of the products. These include:
- As noted by Y. Varfolomeeva, a trademark is a “market signal.” It is known that the product with a colourful label and a memorable name primarily attracts the consumer’s attention and it is quickly remembered.
- An advertising function due to which the buyer, who has recognized the trademark, acquires readily the individualized product. When the designation is widely known — it becomes a sort of silent advertising, which requires neither time nor financial costs.
- A function of a guarantor of the quality of the product. The consumer is confident in the quality of the products individualized by the familiar designation and he favours it.
- An information function. A well-designed designation becomes not only a guide for the consumer, but it also conveys to him the information on the quality, the distinguished properties of the product and on the manufacturer.
The competing advantages of an enterprise due to the use of the trademark
The actively used registered trademark provides the company with the recognition of the products and the consumer loyalty. This ensures stable profit, which serves as a source of financing the further manufacture of the products, the expansion of the product line, the improvement of the manufacturing steps and the improvement of the quality indicators of the product.
Regarding other companies, an absolute nature of the exclusive rights to the trademark also forms a privileged position. Due to this, the competitors are not entitled to use the designation without the holder’s permission, and the right holder of the means of individualization can provide the right to use the designation to other companies, thereby expanding the sales market and controlling the companies that use the trademark.
The trademark right holder’s risks
In conclusion, it is worth noting that the means of individualization being well-known and recognizable by the consumers, not only provides the entrepreneur with the competing advantages, but it also holds a number of threats. As the evidence from practice shows, the buyers are not always able to distinguish between the original product and the counterfeit product, and sometimes, they are even ready to purchase the products that are apparently counterfeit, when they are individualized by the popular trademark. An illegal use through illegal manufacturing the products or placing the designation on the finished products, the registration of identical and confusingly similar trademarks — unfortunately, the range of the possible illegal actions for the use of the trademarks is quite extensive. The “strong” and recognizable designation attracts the attention of consumers and competitors, as well as offenders; therefore, the most correct decision will be carrying out a set of measures to prevent the possible illegal actions:
- Registering timely the designation as a trademark.
- Regular checking the official Bulletin “Trademarks, service marks and the names of the places of origin of products” regarding the availability of the applications with the similar designations in respect of the similar products.
- Entering the designation in the Customs Intellectual Property Registry (CIPR).
- Certifying the rights to the trademark in other countries, when expanding the sales market.
- Obtaining a domain name that reproduces a word element included in the trademark.
The above actions will allow the entrepreneur protecting the use of the trademark, and if necessary, preventing the illegal actions and recovering damages from the offender.
The studies carried out by the World Intellectual Property Organization demonstrate that: “...almost one third of the value of the manufactured products being sold worldwide is based on “intangible capital,” such as a brand, an industrial design and technology.” At the same time, according to the data received, the total profit received by the enterprises from the use of the intangible assets during the period from 2004 to 2014 has increased by 75%.
The value of the intangible assets is determined by the uniqueness of the subject matter used and the possibility of its application. By registering and providing the legal protection to the result of creative labour or a means of individualization on the territory of the state, where the products are being manufactured and sold, the right holder obtains an inviolability guarantee to his intellectual property and reserves for himself the right to the unique parameters of the registered subject matter ensuring its value as an intangible asset.
A tradename, a brand and a regional brand: the differentiation of the concepts
The legislation of the Russian Federation does not contain a normative definition of a tradename. However, the scope of this concept corresponds to the boundaries of a legal term “trademark,” therefore the “tradename” is used as a synonym for the “trademark” in a periodical publication and everyday speech. Such state of affairs is due to the fact that in the foreign countries the tradename is a legal concept, which, in fact, is identical to the Russian term trademark.
Speaking about the disclosure of the content of a brand, it is worth noting a collective nature of the term, which includes the set of the enterprise characteristics, through which a public opinion about the company is set. If we consider the constituents of the brand in terms of the constituent subject matters of intellectual property, the following is permissible to be included with them: industrial designs, trademarks, company names, the names of the places of origin of the products and commercial designations. That is, the brand is “responsible” for the overall impression of the company.
A regional brand is the actively discussed institution consisting of a combination of the subject matters of a tangible and intangible nature aimed at individualizing and identifying the products. The main peculiarity of the regional brands is a relationship with the territorial unit, where the product is manufactured or the raw materials are grown for the manufacture of the products. The trademark or the name of the place of origin of the product may act as a regional brand, and also a geographical indication can act the same in the future. The popularization of the regional brands is connected with the state policy aimed at attracting attention to the local manufacturers. At the same time, despite the fact that the trademark along with the name of the place of origin of the product is capable of becoming a regional brand, the priority is given to the latter, since only the entrepreneurs, who are independent from each other, are capable of becoming their right holders. In addition to that, not only manufacturing companies, but also the local authorities located on the territory of the relevant region are working on the reputation of the brand.
he ratio of the terms: the tradename, the brand and the regional brand is permissible to be represented as the following scheme:
The analysis of the above concepts allows concluding the following: a tradename is a means of the individualization of the products, while a brand and a regional brand mean the set of the subject matters of a tangible and intangible nature that influence on the position of the company on trading markets and form its image in a consumer's mind. The concepts under consideration have a common feature: essentially, they influence on the perception of the product and its popularity.
The registration of tradenames and regional brands as a prerequisite for gaining profit and the growth of the value of intangible assets
Obtaining the legal protection in the country, where the product is manufactured and sold is due to a number of reasons:
< >Firstly, the holder of the means of individualization thus receives a certificate of the legality and legitimacy of the rights owned to the tradename or the regional brand.Secondly, in the case of the tradename, this will allow the right holder monetizing the means of individualization (for example, to transfer the right of the use under a license agreement).Thirdly, the legal owner is capable of suppressing an illegal use of the subject matter and demanding the award of damages.Fourthly, obtaining a protection certificate becomes a sort of a reference point, while determining the value of the intangible asset of the enterprise.
The commercial markets in digital space are a popular and progressively developing field of the commodity-money relations. The benefits of the e-commerce are obvious to all participants of the legal relations: thanks to the digital commerce, entrepreneurs and consumers save time, money and efforts.
Despite the fact that almost any trade subject matter contains a result of the creative labour or the means of individualization, while discussing the issue of monetization of the intellectual property rights, it will be correct to consider the methods for gaining profit directly on the use of the latter, rather than on the material embodiment of the results of the intellectual labour.
Monetization as a source of incomes
Perhaps, due to the fact that the term “monetization” does not cause obvious problems for the definition, there is not a clearly formulated, corresponding to the current situation of the market relations description of the term in the scientific literature. The description of “monetization” as “... a use (of something valuable) as a source of profit” can be considered as appropriate, but brief.
Taking into account a real state of affairs, “monetization” should be defined as: an activity related to gaining income as a result of the sale or use of any subject matter, or an action to establish the valuableness of the subject matter in a monetary equivalent.
Monetization of the intellectual property rights
The modern inventors and rights holders of intangible assets are the owners of a huge potential for a profitable use of the results of the intellectual labour and the means of individualization. An unbounded space of the digital market and the absence of the need to be bounded to a territorial subject matter make it possible to make commercial offers to an unlimited number of persons.
Depending on the nature of the use of the intellectual property rights, it is possible to distinguish the following methods for monetization:
- Gaining profit directly on the transfer or assignment for the temporary use of the exclusive rights to the subject matters of intellectual property. In this case, the right holder using the electronic networks finds the persons wishing to obtain the right to the use of the subject matters of intellectual property. There are a number of services that facilitate the process of monetization using this method, which consist of the electronic registers of intellectual property, where the future users can obtain the information about the patented subject matters and the right holders of the exclusive rights.
- Monetization gained from the collateral processes accompanying the use of the results of the intellectual activity. Most often, this method for monetization is used in relation to the subject matters of the copyrights and the related rights. An audiovisual work is created, which is published on the Internet to be freely available. After reaching a certain level of popularity, the copyright holder publishes a third party advertising gaining profit on it. Thus, income is generated not so much on the use of the exclusive rights, but on increasing the recognition of the product or the customer of the advertising clip.
- Crowdfunding. This method refers generally to the investments in the material expression of the results of the intellectual labour, rather than to gaining direct profit. The meaning of crowdfunding is in the public voluntary investment of any project by third parties. Fundraising for publishing a book, shooting a film, launching a manufacture of a new product. At the same time, no one excludes further gaining profit by the right holder as a result of the use of the exclusive rights belonging to him and their material expression. The voluntary investments in the development and creation of such subject matter of intellectual property as an electric wheel for bicycles are considered to be one of the striking examples of crowdfunding. As a result of the announced fundraising, the creators of the invention received for the implementation of the project the amount of 150 thousand dollars, which was twice higher than what had been originally announces.
The risks associated with monetization of the intellectual property rights in digital space
Despite the advantages of monetization that objectively present in the electronic networks, such as the absence of the territorial bounds, the reduction of the economic and labour costs, it is worth remembering that in addition to the bona fide users, there are also the violators on the Internet space, who also use the advantages of the electronic networks, but for their own purposes. The violators can use other people's results of the intellectual activity and the means of individualization without consents of the right holders; therefore, when monetizing the intellectual property rights in digital space, it is necessary to pay attention to their protection and defence from the illegal use.
The exchange of products and services between people originated almost simultaneously with the very mankind. However, the character, objectives and subject matters of these relations were changing depending on the needs and values inherent in the representatives of the particular historical eras. As it was correctly noted by the researcher in the field of trademarks and brands, D. Boorstin, the XX century was marked by the emergence and spontaneous development of the public associations of another kind. Now, the things for people act not only as the consumer products, but they also acquire a new role, allowing uniting in the classes according to a principle of owning the things of a single brand. The mankind moved into the next stage of the development, and over the past two centuries, scientists have been speaking about the predominance of the consumption society, which is characterized by the acquisition of products not so much for the sake of necessity, but for the sake of the opportunity to have one or another subject matter. The market interrelations, which also have used a dominate position the world earlier, have established firmly their leadership now. After all, thanks to them, a person obtains not only a product or a service, but also the right to take a desired place in the hierarchy of the social classes.
The variety and excess of supply of products lead to the fact that it is increasingly difficult for the manufacturers to attract a consumer, to keep an attention and to persuade to buy the products of a particular company. The use of intellectual property for the development of the market relations and the increase in sales has become an original lifeline for entrepreneurs.
Integration of intellectual property into the market relations
Speaking about the role of the subject matters of intellectual property in the modern economic relations, their presence in the majority of the fields and at all stages of the manufacture and sale of products are noted. The world corporations are aware of the value and profitability of the use of the innovative results of the intellectual labour and they prefer to increase their income and popularity through the implementation of new subject matters of intellectual property in various industries of the economic relations. The policy of Samsung, which has an impressive staff of the developers in the field of the electronic technology, can serve as an example. According to the news reports, only over the last six months, the company's employees presented the innovations in the field of health (the diagnostic medical equipment for mammography screening), robotics (related to ecology and health) and agriculture (a device that allows establishing the location of animals). At the first glance, it seems that these industries do not intersect in any way. However, all the proposed inventions are connected with the electronic devices, what will allow Samsung expanding the market for its products.
Depending on the set objectives and tasks, intellectual property can act:
- Directly as a subject matter of trade. For example, when alienating and assigning for the temporary use of the rights to the results of the intellectual activity or the means of individualization.
- As a resource that contributes to the functioning of the enterprise, to the manufacture of the products, etc. Manufacture techniques, manufactured products, packaging and a corporate identity – the enumerated refers to the subject matters of intellectual property.
- As an element to ensure the conclusion of trade transactions. IT-technologies, programs for electronic computing machines, cash registers are the results of the intellectual labour that serve as an invisible assistant while concluding agreements between people and companies.
- As an instrument to gain a competitive advantage. In the conditions of an oversupply of identical products and services, it is possible to win the attention of a consumer in several methods: to create a bright label, a memorable name, to manufacture the products according to a unique technology or on a particular territory with the use of particular ingredients. At the same time, in order to maintain the competitive advantage, it is important to organize a legal protection regime for the used subject matters of intellectual property.
Thus, it becomes obvious that intellectual property is used in different variants at the space of the economic markets, depending on the functions that are required to be performed.
The market interrelations in terms of intellectual property
It is logical to assume that along with the range of the commodity-money relations, the volume of the use of intellectual property has also expanded. If initially the creative activity was aimed mainly at the development of an aesthetic, spiritual and scientific potential of a person, in the modern world, the intellectual activity is increasingly aimed at obtaining the material benefits.
If to assess the importance and degree of influence of the market relations on the field of intellectual property, it is possible to note a number of aspects. Firstly, the possibility of obtaining the economic benefits from the creation of a subject matter is a powerful incentive and a financial instrument that ensure an opportunity to obtain new results of the intellectual activity. Secondly, the trade market acts as a compass indicating the priority fields of the use and application of the intellectual resources. Thirdly, the scales of the modern economic spaces requires ensuring a regime of protection and defence of the used results of the creative labour, what encourages companies to use the registered results of the intellectual activity in order to prevent their illegal use.
Summarizing the above, it is necessary to emphasize the mutual influence and dependence of the economic markets and their trends and intellectual property institutions, which are used to create the subject matters of the commodity-money relations and which are an instrument to ensure commercial transactions. And it is also possible to note a sort of the merger of the fields under consideration and the dependence of one field on another, as evidenced by the fluctuations in the patenting activity due to the needs of the subjects of the economic relations.
It is difficult to imagine the modern society without the electronic networks. Using the Internet facilitates greatly the human life: today one can buy food without leaving one’s home, watch a favorite movie at any time, read an interesting article or even file the documents for the registration of an industrial design, for example, at night. The writers of science fiction of the last century created their works about a person from the future living in the world of the digital technologies, who faced the difficulties arising in counterbalance to the opened opportunities. As we know, every medal has two sides; the situation is the same in the case of electronic filing an application: the system has positive and negative aspects. Let us consider them and make certain finally of the expedience of electronic filing an application for an industrial design.
The information that should be provided for filing an electronic application
The applicant may file an application via the FIIP official domain section “Filing an Application for an Industrial Design” (http://new.fips.ru/podacha-zayavki/podacha-zayavki-na-promyshlennyy-obrazets/) or the website of the Unified Portal of the State Services in the section “Obtaining a Patent of the Russian Federation for an Industrial Design” (https://www.gosuslugi.ru/16430/1). There is a detailed instruction on filling in the columns and providing the necessary information at the above Internet resources (https://rupto.ru/activities/function/instruction_services_epgu.pdf and http://new.fips.ru/podacha-zayavki/podacha-zayavki-na-promyshlennyy-obrazets/GuideID20171009.pdf ).
To file an application in an electronic format, the holder of the industrial design should provide:
1. An application for granting an industrial design.
2. A set of the product images.
3. A drawing of the product general appearance, and in some cases, a team chart, which is submitted in the event that the industrial design relates to the products of the light and textile industry. The team chart is a sample of the textile and knitted materials, leather, accessories, finishes and the like that are recommended for the manufacture of the product. At the same time, the sample of the materials with a repeating pattern (decorative materials, carpets, fabrics, etc.) shall be submitted in the size of a rapport of the pattern.
4. A description of the industrial design.
The above documents shall be attached in an electronic form, in accordance with the requirements for the format and volume of the files. The identical legal value of electronic and paper media is further emphasized on the websites of the state authorities.
The pros of electronic filing an application for an industrial design
According to the Report of Rospatent for 2018, the highest increase in electronic applications in the 4th quarter was recorded regarding industrial designs and it was 54, 86%. They recorded also an overall increase in the number of the applications received via the Internet during the past few years: 344 applications were received in 2017, 2545 applications were received in 2018, 707 applications were received in the first quarter of 2019. Such state of affairs is due to a number of the advantages, which include:
- Ensuring an earlier priority date. Due to an accelerated flow of the information as a result of an electronic circulation, the terms of the receipt of the application by the Office are reduced in comparison with the postal delivery.
- A remote method of the circulation. The person, who files an application via the Internet, can file it from any geographical point, on which territory the global electronic network operates.
- An ability to file the documents in a comfortable time. The service operates around the clock 7 days a week.
- It is permissible to file an application via the official website of the Office or using the Unified Portal of the State Services.
- A reduced size of the fee. In order to promote the electronic method of filing an application by the citizens, the Government of the Russian Federation has increased a discount size on the established state fee up to 30%.
- Electronic filing an application for the registration of an international industrial design in accordance with the Hague Agreement is permissible.
- The applicant monitors the movement of the application via a Personal Account in real time.
The cons of electronic filing an application for the registration of an industrial design
Despite the above said positive points, there are a number of the negative circumstances that can complicate filing an application via the Internet:
- To register the application via the Unified Portal of the State Services, it is necessary to obtain a certificate of the enhanced encrypted and certified digital signature certifying the authenticity of the owner of the Personal Account. To do this, one should contact one of the certification authorities accredited by the Ministry of Communications and Mass Media of Russian Federation, or the multifunctional center (MFC).
- Filling in an application in an electronic form sometimes causes no less difficulty than writing an application in a written form.
Comparing the pros and cons of the electronic method of filing applications, it is worth assuming that the positive circumstances prevail in quantity and in significance. Obviously, therefore in the future, the applications filed via the electronic networks will become even more popular, and their volumes will continue to grow.
A decision on the need to identify regional brands and to register them subsequently was made at the session of the Council for Intellectual Property Issues at the Federation Council of the Russian Federation in December 2017. Since then, any mentioning the regional brands has begun to appear more and more; however, few people understand what this concept means and how it relates to intellectual property.
The regional brand concept
There is no legal definition in the legislation; however, a detailed analysis of the term allows revealing the content of the concept on one’s own. A brand is a collection of the subject matters, such as the means of individualization, a corporate identity, a company policy, goodwill of business, etc., which, in aggregate, contribute to the emergence in the minds of the consumers of the associations between the product, its quality and the manufacturer. It is logical to assume that the specificity of the regional brand is in the territory individuality. Hence, a regional brand is a complex of the subject matters of a tangible nature and an intangible one that ensure a stable associative link in the minds of the consumers between the particular products and their manufacture on the territory of the region.
It also seems that the definition formulated in “A Concept for Promoting the National Brand and the Regional Ones of the Products and Services of the Domestic Manufacture for 2007-2008” adopted by the Ministry of Economic Development of the Russian Federation is quite appropriate: “The regional brands are the brands of the Russian cities and regions that act as a marketing tool for the territories in order to attract investments and human resources, as well as the brands of the products and services localized in a particular geographical region…”
As a rule, during the business development, the means of individualization is a kind of a pivot around which a brand develops subsequently, since the consumer, when purchasing the products, first of all “faces” the appearance of the product. It is possible to register a trademark or a name of the place of origin of the product for these purposes. If it is planned to use the designation as a regional brand, one should choose the means of individualization taking into account the peculiarities of the subject matter and the specificity of the conditions of the use. Thus, one of the peculiarities of the trademark is the absolute nature of the rights of its holder. Other persons do not have a possibility to use the registered designation without the holder’s consent, while the policy of the regional brands is aimed at stimulating the manufacture of the products on the territories of the Subjects by the local manufacturers, and not only by one organization. However, as the practice shows, the registration of the trademark for use as a regional brand is quite acceptable. In the Republic of Tatarstan, the Committee for the Tourism Development of the City of Kazan has registered a fantasy trademark with the word element “Kazan” to be placed on various souvenirs, products, household chemicals and the like in relation to 24 positions of the ICGS. As Daria Sannikova, a head of the Committee for the Tourism Development of the City of Kazan, noted, the manufacturers might obtain a free license to use the trademark.
Another more popular means of individualization used as a regional brand is considered to be a name of the place of origin of the product. According to the reports of Rospatent, staring from the moment of the popularization of the regional brands, the number of the names of the place of origin of the products registered annually has been increasing annually; and within the period of 2014-2018, it increased from 59 subject matters to 99 per year, i.e., almost doubled. The advantages of using the name of the place of origin of the products are the following:
- The right to use the name of the place of origin of the product may be registered in relation to an unlimited number of persons, that is, a collective use of the designation without any permission from one of the right holders is allowed.
- It is possible to change a circle of the persons using the designation, what makes it possible to update the lists of the manufacturers actually operating on the territory of the Subject.
- When filing an application for the registration, the applicant must justify the right to use it in connection with the special conditions of the manufactures of the product or its specific characteristics due to the territory of the manufacture, what means the manufacturer confirms that he actually manufactures the product on the specified territory and contributes to the improvement of the economic situation in the region.
The Novgorod Region became one of the first regions that had supported the development and the use of the regional brands, where the law on the regional brands had been adopted; and it is planned to defend such names of the place of origin of the products as: “Holynskie Ogurtsy,” “Krestetskaya Strochka,” “Batetskaya Kukla” and “Starorusskaya Sol.”
What the regional brands are needed for
The following can be distinguished as the main reasons for promoting the regional brands:
- The identification of the traditional and unique products, which are capable of attracting the consumers’ interest.
- The stimulation of the domestic manufacturers due to the government support measures and to the grant of the free licenses in the case of the use of the trademarks.
- The economic development of the regions due to the increase in the manufacture volumes.
- The defence of the interests of the local manufacturers by registering the names of the origin of the products and the trademarks that are subsequently used as the regional brands.
- The manufacture of the products using the regional brands for the purposes of subsequent export.
In conclusion, it should be noted that currently, the state policy on promoting the regional brands has led to an increase in the activity in the field of patenting the means of individualization, as well as to an increase in the consumer interest in the products of the regional manufacture – this speaks for the feasibility of the further development of the regional brands.
The creation of a bill draft on amending and supplying the norms of Part 4 of the Civil Code of the Russian Federation that stipulate the introduction of a new subject matter of intellectual property – a geographical indication has become a positive consequence of the state policy regarding the development of folk crafts, as well as of the support of the local manufacturers. Taking into account the availability of the institution of geographical indications in other countries, it is necessary to speak about its novelty within the limits of Russian legislation.
The geographical indication as a designation distinguishing the products
The geographical indications are the means of individualization, however, they are usually compared not with the trademarks that are popular in this field, but with the names of the places of origin of products that are less commonly registered. The reason for such state of affairs lies in the following circumstances:
- Both types of the designations contain an indication to the name of the geographical subject matter, which peculiarities determine the specific characteristics or indicators of the product.
- The territory, which name (or its derivative) is used, must be the place of the manufacture of the product distinguished with the help of this designation.
- It is permissible to use one means of individualization by an unlimited number of the persons, who have obtained the right to use the designation independently from each other.
- There are only a part of the elements of a fantasy character in the geographical indications and the names of the places of origin of products, compared to trademarks. First of all, such designations are aimed at the emergence of a consumer’s association between the peculiarities of the product and the geography of the place of origin. Therefore, the main role is given to the word element pointing to the name of the territory.
The differences of the geographical indications from the names of the places of origin of products
The following can be given as the examples of the means of individualization under consideration:
The similarity of the designations is traced during a comparative analysis, and a doubt in justification of the simultaneous existence of the geographical indication and the name of the place of origin of the product arises. Why is it allowed registering two, as it seems at the first glance, means of individualization being identical in the character and content? In this case, it should be noted that, despite the presence of a number of the similar features, the concepts being studied also possess the peculiarities that will allow explaining the need for both legal institutions.
The differences between the geographical indications (hereinafter referred to as the GI) and the names of the places of origin of products (hereinafter referred to as the NPOP) can be classified according to the following grounds:
- Depending on the designation claimed for the registration.
The protection of any designation that allows associating the product with its place of origin is meant under the GI. Only the word designation including the name of the geographical subject matter may be registered as the NPOP.
- According to the degree of popularity of the means of individualization.
To file an application for the GI, it is permissible to be able to identify the product and the territory of origin. When registering the NPOP, it is important for the designation to become recognizable as a result of its use with respect to the product.
- Depending on the product characteristics.
In order to grant the legal protection to the GI, the applicant shall attach the information about the quality, reputation or other specific indicators of the products determined by the place of origin. In the case with the NPOP, the special properties of the product are required.
- According to the degree of the manufacture location within the geographical formation.
For the designation applying for the GI status, it is sufficient to have at least one manufacturing stage located within the specified territory. When the person applies for obtaining the right to use the NPOP, the location of all manufacture stages at the specified geographical subject matter is a prerequisite.
- Depending on the documents confirming the relationship of the exclusive characteristics of the product and the place of origin.
To register the GI, the applicant shall provide independently the information confirming the particular qualities of the products, the indicators and reputation depending on the location of the manufacture. To obtain a positive decision regarding the grant of a certificate to the NPOP, the opinion letter of the authorized federal or regional authority is required confirming that the applicant manufactures the product with the specific characteristics on the territory of the specified geographical subject matter.
- According to the protection mark, which indicates that the holder has the exclusive rights and that the designation used is registered in the Russian Federation.
The expediency of introducing the institution of geographical indications in the Russian legislation
The analysis of the differences between the legal concepts under consideration allows concluding that the registration of the subject matter as a geographical indication is more accessible and easier for the manufacturers. To obtain the right of the use to the latter, the location of at least one manufacture stage within the geographical subject matter is enough. For example, the raw materials can be brought for processing with the use of the technologies being traditional for the region, or, on the contrary, the crops grown on the territory with the unique and favorable climatic conditions will be processed subsequently at the plant located in an industrial zone. Another positive point is in the absence of the need to submit an opinion letter of the state authority, which often becomes a cornerstone in obtaining a certificate to the name of the place of origin of the product.
As it has been noted at the Federation Council session regarding the registration, legal Protection and defence of geographical indications: “... currently, there are 170 registrations of the NPOP in the Russian Federation, 135 of them are the Russian ones. At the same time, more than 3,000 geographical indications and names of the places of origin of products are protected in the European Union.” Obviously, such modest indicators are largely due to the difficulties arising while filing an application and obtaining subsequently a certificate to the name of the place of origin of the product, as well as due to a weak level of the information awareness of the regional manufacturers on the benefits of using and registering such means of individualization. It is worth assuming that the popularization of the regional brands and the introduction of the institution of geographical indications will lead to an increase in the activity of applicants and an increase in the number of the registered designations containing the geographical names located on the territory of Russia.
Quite often, the entrepreneurs using the subject matters of intellectual property in the manufacture and in the activity of the organization assume mistakenly that such very use is already the management of intellectual property. As correctly indicated by G. Azgaldov and A. Kostin: “The management of a subject matter is a complex of the arrangements ensuring the process of transferring the subject matter w from state А0 to predetermined state А1 within predetermined period of time DTpred .” That is, the management of intellectual property is the use of the subject matters to achieve the particularly set goals within a particular period, but not some abstract action related to intellectual property. Obviously, in this case, the primary task becomes determining a final goal for carrying out which the subject matter will be used. Increasing the consumer demand, improving the quality or technical indicators – all this can be achieved as a result of the competent management by the creation and use of the intellectual property elements. Hence, the prospects of the management of intellectual property are reduced in general to a favorable and timely achievement of the goals set. At the same time, the success and timeliness are equally important. Taken into account the current rates of the development of the human activity spheres, it is logical to assume that the delay, for example, in using the latest technology, will probably lead to the loss of a competitive advantage and to a reduction of the consumer interest to the product and the company.
It is interesting that to gain income from the use of the results of intellectual activity and the means of individualization it is sometimes enough the availability of even one or two subject matters, which are used actively. Lately, the most popular and successful beginning of the entrepreneurial activities has become the launch of various start-ups; the manufacture and sale of something new, fundamentally different from the already existing products is a characteristic of exactly such projects. An example of a successfully developing start-up can be the beginning of the release and sale by RawLife of nut and fruit natural bars. If to consider a reason for the success of the said enterprise from the point of view of intellectual property, then everything is simple: the bars are manufactured from particular ingredients according to the special recipes that can be patented as inventions or protected as a manufacturing secret, in addition to this a rememberable trademark “R.A.W. LIFE” is use, which is translated into English as “raw life” and which inform the consumer about the use of the ingredients without heat treatment, what allows preserving the useful substances contained therein. Thus, the competent use of only two subject matters of intellectual property has allowed the enterprise to gain steady income and to develop actively, while expanding a “line” of the products.
Regarding the methods for the management of intellectual property, depending on the priority of a particular element of the management of intellectual property, the following can be distinguished:
- An innovative methodological approach. There is an assertion in the basis that the competitive advantage can be achieved only as a result of an inventive activity and constant introducing new technologies, so the management should be carried out taking into account a top priority of the innovative element. The main source of the costs in this case will become financing innovations.
- An information and reproductive approach. The adherents of this type of the management believe that the dominant role in the modern world is played by the unique information and by sharing the information; consequently, the success of the management of intellectual property depends on the competent use of the relevant information resources. Accordingly, the priority is to ensure the regime of a commercial secret in the enterprise.
- The marketing methodological approach according to which, ultimately, the factor determining profitability of the enterprise is the consumer’s interest. Since the buyer makes a decision whether to purchase the product or not, and the management strategy should be determined focusing on the desires and interests of the consumer.
- A process approach. The followers of this type of the management believe that the creation and use of intellectual property is an integrated process and all its stages should be taken into account.
- A system methodological approach. In accordance with this method, the management of intellectual property is a complex of the multidirectional measures, and the joint use of the elements of the system will lead to the achievement of a positive result.
The detailed analysis of the above approaches allows us to conclude on the greatest efficiency of such methods for the management of intellectual property as the process and system methods. Such assertion is based on the fact that while applying other management options, some one factor (innovative, informational or consumer) is put at the head of the process and this seems to be not quite right.
N. Samojlenko notes: “Considering the management of intellectual property from the point of view of a system analysis, it is revealed that the management system receives at the input the material and intellectual resources that are converted in the process of the management taking into account the influence of the external environment and realized in the form of an innovative product or a commercialized subject matter of intellectual property ... .” That is, this process is a complex of the arrangements to convert some resources to the others, and to use them further taking into account the existing external and internal circumstances.
A significant stage in the management of the intellectual property elements within an organization is the realization that this is an endless and cyclical process, the success of which depends on the implementation of a complex of the arrangements for forecasting, planning, creating, using, accounting the subject matters, etc. In the conditions of the modern market economy, the constant flow of the new information and the glut of the products in the world, it becomes apparent that in order to achieve a competitive advantage and to gain profit from the use of the subject matters of intellectual property, it is not enough, for example, to patent one invention and to use only it. It is necessary to ensure a special circulation of the intellectual property elements and a transition from one stage of the management to another one in the mode of a parallel functioning of these stages. Thus, it is just the combination of the process and system methods that is the most universal. The management of intellectual property taking into account all stages of the creation and application of the subject matters of intellectual property will be carried out according to the process approach. And in accordance with the system approach, the management will use the information, innovative and marketing resources.
Any enterprise has at its disposal at least one subject matter of intellectual property from the moment of the registration – a company name of the organization. Depending on the nature of the company activity, the profit volume and other indicators, the number of the used subject matters of the intellectual activity, which are the intangible assets of the firm, changes. Many people may think that such subject matters have not a particular value due to their intangible nature, however, it is not so. All results of the intellectual activity can be expressed in a tangible form: the invention is used at the factory for the manufacture, the trade mark is placed on the product packaging, the company name is indicated on the company's letterheads, etc. At the same time, the very profitability and benefit from the use of these subject matters depend directly on the competent management of the intangible assets within a particular enterprise. And it is also important to take into account the fact that intellectual property is a special resource that is quite simple to obtain illegally and to use illegally subsequently, therefore the defence and management should be treated with an increased attention.
The concept definition
Approaching the issue of disclosing the term “management of intellectual property,” it is worth noting that the legislation lacks this concept legal definition. This is probably due to an alternative nature of the phenomenon: firstly, not all legal entities have the subject matters, the use of which requires the management, and secondly, the nature of such actions is not mandatory, i.e. they may or may not be performed.
The following definition of the concept under consideration seems to be the most correct: the management of intellectual property is a complex of the measures for the protection, defence and the rational use of the subject matters of intellectual property within a particular enterprise.
The stages of the management of intellectual property
- Despite the fact that the term “management” implies the availability of the already existing subject matter of intellectual property, the first stage is still directly obtaining a result of the intellectual activity. A third-party organization and/or the employees of the enterprise can act as a creator. It is necessary to describe clearly the requirements for the future subject matter, the purposes of the creation and the functions, the implementation of which is planned, while using it. Then it is necessary to determine how the obtained result of the intellectual activity or the means of individualization will be registered. For example, the designation individualizing the product can be registered as a trademark, a name of the place of the origin of the product, a regional brand or an industrial design. It is worth comparing the legal regimes provided to each subject matter and choosing the most favorable method for the use.
- Having determined in what form the subject matter of intellectual property will be claimed, a number of actions should be performed, due to which the right holder will be able to defend subsequently the intangible asset from the illegal infringements. If the result of the intellectual activity is a subject matter of the patent right, it must be registered with the Federal Executive Authority. In the case if the subject matter belongs to the field of the copyright or the related rights, the registration is not required. Meanwhile, it is advisable to confirm the authorship of the creator, for example, to send a copy of the work to one’s own address by registered mail with an enclosure list or to perform depositing of the material medium. Such actions are not mandatory due to the fact that the copyright and the related rights arise automatically, but in the case of a dispute these copies will become substantive evidence, while determining the author of the result of the intellectual activity. In the case, when the subject matters of intellectual property used by the enterprise are not planned to be disclosed, it is possible to protect such creative labour results as know-how. To do so, it is necessary to have the strictly established rules for the behaviour of the employees of the enterprise and to perform other actions that contribute to keeping the manufacturing secret in the status of being inaccessible for the public use.
- The third stage can be considered to be a turnover of the subject matters of intellectual property. When the legal protection regime regarding the result of the intellectual activity is registered appropriately, the right holder may apply without hesitation the intangible assets belonging to him. It is possible to use the subject matters of intellectual property directly by the holders of the exclusive rights and/or to transfer such right to one or several persons. Although the results of the intellectual activity and the means of individualization are the intangible assets, their assessment and use as a subject of the pledge is permissible.
- The next stage, which is of no small matter, is keeping the effect of the protection documents. The subject matters of the patent rights have a limited period of effect, which can be extended for a particular period. If the right holder fails to perform the actions, which are necessary to keep the effect of the patent or certificate within the prescribed period, then the protection document will cease its effect and the subject matter of intellectual property shall be deprived of the legal protection.
- Undoubtedly, the actions to defend the subject matters used should be referred to one of the stages of the management of intellectual property. There is a pre-court procedure and a judicial one for resolving disputes. In the first case, the holder of the subject matter shall appeal directly to the violator with a request to cease the illegal acts or to the state body authorized to resolve such disputes (for example, to the Federal Arbitration Court). In the second case, all action shall take place with the participation of the judicial instance. As is well known, it is easier to prevent negative consequences than to eliminate them, so the right holder should watch carefully over the actions of the competitors and, if possible, try to suppress the illegal acts as soon as possible. Although, large firms sometimes act in a different way: they wait for the moment, when the quantum of damage from the illegal acts becomes impressive and then apply to the court, what allows them to claim recovering damages in a larger quantum.
- The registration stage in other countries. It is important to note that while developing the enterprise and introducing the products to the international market, it may become necessary to obtain legal protection in accordance with the legislation of other states.
- As a separate stage, the process of alienating intellectual property can be distinguished. In general, the transfer of the rights to the result of the intellectual activity or the means of individualization is referred to the stage of the turnover of the intangible assets. At the same time, if we consider the phenomenon from the point of view according to which the right holder loses the rights owned by him and in the future he will not be able to manage the use of this subject matter, the alienation of the rights should be individualized.
It seems logical that in the process of functioning of the enterprise all the above stages may take place in any order and even simultaneously, as a key to the successful development of the organization is partly the creation and the reasonable use of intellectual property.
It is important to realize that the competent disposal of the intangible assets can bring substantive income to the company, and, possibly, become the main source of profit. In April 2018, RBC compiled a list of the most popular franchises. In Russia, there is no the franchise legal institution and such legal relations in the field of trademarks are essentially a franchise agreement or a subfranchise one. The twenty-sixth place in this rating was occupied by KFC, which concluded 178 agreements to grant the right to use the trademark with the same name. At the same time, the company's income amounted to 3.232 billion USD in 2016. It is worth assuming that the volume of profit from the use of intellectual property is a very impressive percentage of the above sum.
The management of intellectual property: is it necessity or excessiveness?
Ultimately, it is up to the right holder to make a choice in favour or against the active and practical management of intellectual property. However, it should be borne in mind that using the regime of the management of intellectual property, the holder gets a possibility of:
- enshrining the exclusive rights to the intangible assets;
- using the subject matters of intellectual property without a fear that they will be “stolen”;
- granting third parties the right to use the results of the intellectual activity or the means of individualization and gaining profit from it;
- selling the right to the intangible asset by alienating it;
- suppressing illegal acts and claiming to recover damages.
The analysis of the level and the degree of the IP culture development, of course, should be started with a definition of the concept under consideration. The legal definition of this term is absent, what is quite logic, since when the culture is mentioned, as a rule, a description of the behavior governed by the norms of moral rather the law is implied. According to Philosophy Practical Guide, the culture can be defined as: “A set of the material and spiritual values, which have been created and which are being created by people in the process of the social and historical practices, as well as the technologies for their manufacture characterizing the historically achieved stage in the human civilization development...”
The concept of the IP culture can be disclosed as follows: it is a set of the rules and norms of the public behavior regarding the creation, use and defence of the subject matters of intellectual property, as well as the recognition and defence of the rights of the creators and the right holders of the results of the intellectual activity and the means of individualization. The following can be identified as the subtypes of the IP culture: the culture of creating the subject matters, the culture of the management and the culture of using the results of the creative work of others.
The main postulates of the IP culture are:
- The recognition of the value of the intellectual activity.
- The respect for the property and non-property rights of the owners and the creators of intellectual property.
- The recognition and the possibility of exercising the right to defence against the illegal use, distorting, copying, appropriating and other types of infringements.
- The encouragement of the creation of new subject matters of intellectual property.
- The preservation the integrity and inviolability of the results of the intellectual activity, which are of interest to the future generations (the works of literature, art, architecture, etc.).
The supporters of the development and propaganda of the IP culture note its positive influence on the solution of the global world problems, innovations and the creative activity. The high level of the IP culture contributes to increasing the creative activity and increasing the number of the subject matters being created. A person realizes that the development of the society requires the achievements that meet the needs of the modern world. People recognize and respect for the rights of the creators and the owners of intellectual property. A memorable example confirming such point of view can be a demonstration of the latest achievements in the field of the information technologies by the representatives of Russia at the 23rd session of the Committee on Development and Intellectual Property (CDIP) of the World Intellectual Property Organization. Namely: within the framework of the project “Territory,” the domestic scientists have developed a service for identifying the subject matters using the satellite photographs from the Russian spacecrafts Resurs-P, Kanopus-V, as well as the PlanetScope grouping. Moving the priorities and the interests of the society towards electronic networks is obvious. As the experts have noted: “The rapid evolution of the digital environment is a challenge for the legal regulation of the protection and defence of intellectual property.” Understanding the need to attract an additional attention to the use and the defence of the subject matters of intellectual property in the current environment, the Russian researchers have made a decision to disclose the information about their achievements in the digital environment and presented the fundamentally new subject matters in order to support the initiative of the representatives of the Russian Federation regarding the digital transformation of the intellectual property field.
The need to develop the IP culture within the framework of a particular country is obvious. There are a number of circumstances demonstrating that the state encourages the development of the intellectual property culture. These can include:
- The availability of the legal institutions governing the social relations in the field of the creation and the application of intellectual property, as evidence of the importance of the innovative and creative activities.
- Informing and educating the public about the culture of using other people's results of the intellectual activity.
- Stimulating the innovation activity by establishing the competitions, allocating the state grants and subsidizing the research and inventive centers.
- Suppressing the illegal actions and applying the measures of a sanctional character stipulated by the legislation for the illegal use of the results of the intellectual activity.
One of the main tasks of the public policy is the integration of the IP culture into all fields of the public activity: into enterprises, educational institutions, research centers, etc. In response, the feedback arises: the person, who sees that the creative activity is welcomed by the society and the state, and the results of the intellectual activity are used and defended in accordance with the law, creates willingly the subject matters of intellectual property that are required for the progressive development and the moral and spiritual improvement.
Improving the IP culture
The culture of the society of any era has its flaws. In the modern world, along with the promotion of the scientific and technological progress and the all-round promotion of the creative activity, unfortunately, there is a low culture of using other people's results of the intellectual activity. This is evidenced by the widespread illegal use of audiovisual works, plagiarism, the manufacture of counterfeit products and other things. According to the information provided by the Federal Customs Service of the Russian Federation, 16.2 million units of counterfeit products were identified in 2018. However, according to the results of a sociological survey, more than 80% of the respondents answering the question: “Have you ever bought counterfeit products?” said: “Yes.” These data indicate that not only the manufacture, but also the acquisition of the counterfeit copies occurs in the majority of cases intentionally. Consequently, it is necessary to work upon the awareness and acceptance of the moral and ethical principles of using intellectual property in the society through propaganda at the state level and by consolidating a clear and confident position of each individual, in particular. A person must understand that the illegal use of the results of the intellectual activity is a kind of thieving and it is also a violation of the law and an infringement on the rights of others.
The provisions being in force in the field of individual trademarks are generally applied to collective trademarks: the general conditions of protectability, a period of the legal protection, the methods of defence, etc. The peculiarities of the legal institution are described in Article1510 and Article1511 of the Civil Code of the Russian Federation. Even without referring to the text of the above norms and proceeding only from the lexical analysis of the concept “a collective trademark,” it can be concluded that this is a designation that several entities are entitled to use.
The study of the provisions of the civil legislation allows identifying a number of specific features, which are characteristic of the collective trademarks:
1. The designation may be registered only by an association of persons.
Interestingly, there is not an indication in the legal norms that the association should have the status of a legal entity, due to this fact it is permissible to register the collective trademarks with respect to the associations of the persons, who do not have the status of a legal entity. Despite the fact that the designation may be used by all entities belonging to the association, the right holder shall be the latter solely. It is just the association that has the right to the collective trademark’s defence from the illegal use by third parties and to appeal to judicial authorities to suppress the illegal actions. Among other things, the function of monitoring for the compliance with the quality indicators of the products manufactured by the participants shall be imposed on the association.
2. The mark is used to designate the products, which are manufactured or sold only by the persons being a part of this association.
In addition to this provision, the legislator has restricted the circulability of the collective trademark indicating to impossibility of alienating or granting the right to use under a license agreement.
3. The products, for individualization of which the collective trademark is used, should have unified characteristics of quality or other general characteristics.
A direct reference to the need of maintaining the quality indicators of the products underlines in this case the importance of the trademark as a guarantor of the quality of the product. However, individual designations are primarily intended to individualize the products. Perhaps, it is due to this reason that there is not a possibility of transferring the rights under license agreements: thus, the legislator restricts the range of manufacturers and ensures a possibility of a quality control of the manufactured products.
One of the examples of a collective trademark is the designation used as a means of individualization for the foodservice chain “Chaikhona No. 1.” The right holder of the designation registered with respect to the 41st and 43d classes of the ICGS (in particular, discos, night clubs-cafes, snack bars, etc.) is LLC “The Chain of Restaurants “Chaikhona No. 1.” The certificate (№ 690343) indicates that the trademark has a collective status, and 52 legal entities, which have the same right, are indicated in the column “The Information on the Persons Entitled to Use a Collective Mark.” In the publication on the certificate, there is also an extract from the Charter, which contains the requirements to the institutions and employees with respect to whom the use of the trademark is planned:
- “The design of the premises should be done in an “oriental style,” the premises should be equipped with comfortable soft furniture, comfortable for a visitor’s long stay in the restaurant.
- The lighting of the restaurant should be done in soft, warm and cozy light tones, which are conducive to a pleasant pastime.
- The unified design of the employees’ uniform equipped with the logo “Chaikhona No. 1.”
- The mandatory use of the unified menu approved by the Association, and, at the same time, the total number of the own dishes should not exceed 10% of the total.
- The unified indicators of the quality of cooking and serving the dishes.
- A unified training program for the employees approved by the Association.
- A unified music accompaniment in the style of lounge music.
- All restaurants of the chain should hold the arrangements of an entertainment and leisure nature, in the form of holding concerts of the famous artists, as well as master classes in cooking a traditional “oriental” cuisine, the children's parties.”
The peculiarities of the registration and use of collective trademarks
According to the provisions of Paragraph 1 of Article 1511 of the Civil Code of the Russian Federation: “The application for the registration of the collective mark (the application for the collective mark) submitted to the Federal Executive Authority on Intellectual Property shall be accompanied with the Charter of the collective mark, which must contain:
1) a name of the association authorized to register the collective mark to one’s name (the right holder's);
2) a list of the persons entitled to use this collective mark;
3) a purpose of the registration of the collective mark;
4) a list and the uniform characteristics of the quality or other general characteristics of the products, which will be designated with the collective mark;
5) the conditions of the use of the collective mark;
6) the provisions on the procedure for monitoring the use of the collective mark;
7) the provisions on responsibility for the violation of the Charter of the collective mark.”
Thus, in order to register the designation as a collective trademark, it is necessary to compose, adopt and submit with Rospatent the Charter of the collective mark. In addition to this, according to the content of the Charter, some additional responsibilities shall be imposed on the association to monitor the use of the designation. And the measures of responsibility stipulated in the document can be applied to those persons, who use the collective trademark in the violation of the provisions of the Charter.
The cases of an early termination of the effect of the collective trademark are described in Paragraph 3 of Article 1511 of the Civil Code of the Russian Federation. The use of such designation with respect to the products that do not have the unified characteristics of quality or other common characteristics on the basis of the court decision may lead to a full or partial early termination of the legal protection.
The registration of a collective trademark: advantages and disadvantages
Obtaining a certificate to a collective trademark can become an excellent alternative to the use of an individual trademark in the following cases:
- When there are a number of the organizations, which are engaged in close cooperation and intend to manufacture the products using a unified, standardized means of individualization.
- If the participants of the association do not wish using the trademark of one of the manufacturers on the basis of the license agreements.
- The entities participating in the association want to have the equal rights to use one trademark. The provisions of the Civil Code of the Russian Federation do not allow joint ownership of the trademark. The registration of the collective trademark will become a solution of the problem, because it is the association that will become a right holder and not its participants individually.
However, currently, despite all advantages of using the collective trademarks, the number of the registered designations is very modest. This is due to a number of circumstances:
- The additional requirements are imposed on such designations at the stage of the registration.
- The association shall be responsible for monitoring the compliance with the Charter of the collective mark, as well as for preserving the quality of the products manufactured.
- The circulability of the designation is restricted, as it is impossible to conclude the license agreements and an alienation agreement.
- There is a possibility of an early termination of the protection as a result of the non-compliance with the quality of the manufactured products.
It should be assumed that the emergence and development of the institution of well-known trademarks is justified and due to the scale of modern trading markets and the expansion of their borders. As a result of competitive relations, some entities achieve greater advantage and increase the production volumes, expand a product range. At the same time, the trademark, with the help of which the product is distinguished, becomes more recognizable, what is beneficial both for the right holder and the potential offenders. The use of the institution of well-known trademarks gives the holders of the well-known designations an opportunity to obtain a number of preferences in the use of the trademark and the suppression of the unfair registration of the similar means of individualization regarding other classes of the ICGS.
The disposal of the exclusive right to a well-known trademark
The norms of the Civil Code of the Russian Federation devoted to well-known trademarks do not contain any restrictions regarding the disposal of the exclusive right to such designation. And, therefore, as in the case with a conventional trademark, the right holder may:
- Grant the right to the use of the trademark to other persons (under a license agreement);
- Conclude a concession agreement and transfer the right to the use of the trademark in conjunction with the exclusive rights to other subject matters of intellectual property;
- Use the exclusive right to the trademark as a subject of the pledge;
- Transfer in full the exclusive right to the designation belonging to him/it (under an alienation agreement).
In accordance with Article 1490 of the Civil Code of the Russian Federation, any disposal of the exclusive right to a trademark shall be executed in the form of an agreement concluded in writing. Such agreement shall be subject to the registration with Rospatent. Then the information on the disposal of the right shall be published in the Register of Well-Known Trademarks in the Russian Federation (hereinafter referred to as the Register), so that the third parties can verify the legality of the authority to use the designation by other entities.
According to the information presented in the Annual Report on the Activities of Rospatent for 2018, the prevailing ways of the disposal of the exclusive rights to the trademarks are granting the rights to the use as a result of the license and concession agreements. Obviously, such trend is characteristic, among other things, for the agreements in the field of well-known trademarks. This is due to the priority of the lack of the transfer of the exclusive rights to another entity and preserving them by the right holder.
The disposal of the exclusive right to a well-known trademark is one of the ways of gaining profit from the use of intangible assets. By granting a license to the use of the means of individualization to other persons, the right holder gains an additional income and also he contributes to the increase in the potential value and recognizability of the designation used. The transfer of the rights to the combined designation “Rospechat,” registered regarding OJSC Agency “Distribution, Processing, Collection of Press” can serve an example of the active use of the well-known trademark as a subject of the license agreements. According to the information presented in the Register from the moment of obtaining the status of well-known in 2004, the right holder granted the right of the use of the designation on the basis of a non-exclusive license to 12 enterprises. It is important to note that while granting several licenses, the right holder is entitled to establish different effect periods of the license agreements. For example, LLC “Baikal,” having a exclusive right to the well-known trademark “Baikal” regarding the products of the 33d class of the ICGS (vodka), has granted the non-exclusive licenses to different enterprises for a period of 4, 5, 10 years and for the whole effect period of the exclusive right to the trademark on the territory of the Russian Federation.
The right to the well-known mark may also be used to ensure obligations. For example, the well-known trademark “Etalon,” registered regarding LLC “Crystal-Lefortovo” for the 33d class of the ICGS (vodka; vodka with additives) has become a subject of the pledge twice during one year.
Despite the fact that the holder of the well-known trademark is entitled to choose any way of disposing the exclusive right to the means of individualization, there are still a number of optional restrictions due to the nature of the well-known trademark. One of them is the indication in Paragraph 2 of Article 1488 of the Civil Code of the Russian Federation to inadmissibility of the alienation of the exclusive right to the trademark “... if it can become a cause of confusing the consumer regarding the product or its manufacturer.” At the same time, it is not indicated in the legal acts how and according to what criteria the Office determines the probability of confusing the consumers, while registering the agreement. The restriction seems to be justified, because when filing an application for the registration of the designation as well-known, the right holder, among other things, shall be obliged to present evidence that the means of individualization is widely known, the trademark is recognized by the consumers, etc. Thus, the holder of the designation confirms, and Rospatent makes sure that the claims to a priority status are justified, the designation is really well-known among the consumers and an associative link “product-manufacturer” emerges in the buyer’s mind, while perceiving the trademark. It is logical that while alienating the well-known designation there is a high probability of confusing the consumer regarding the manufacturer of the product and the violation of his rights and legitimate interests. It is necessary to assume that granting the right to the use of the well-known trademark under a license agreement can also cause confusing the manufacturers, when the product is perceived by the buyer. However, regarding the agreement of this kind, the legislator does not stipulate such restrictive condition.
If we consider the situation from the point of view of protecting the consumers, the most correct way of transferring the exclusive right under an alienation agreement, to our opinion, is the following: the company “Nidan Soki,” which has been the right holder of the well-known trademark “Moya Semya” since 2010 regarding the 32d class of the ICGS (fruit juices, tomato juice), first granted the right to the use of the designation on the basis of a license to another company, and then, upon the expiration of a certain period, it concluded an alienation agreement with this manufacturer, having transferred the exclusive rights to the means of individualization in full. Such approach to the alienation and transfer of the rights to the well-known designation should be considered priority, since in this case, the original right holder gets an opportunity to check the good faith of the future holder of the well-known trademark.
The Public Register of Trademarks in the Russian Federation as of 2019 includes 707878 certificates. At the same time, the Public Register of Well-Known Trademarks includes only 204 titles of protection. The difference between the number of the registered means of individualization in both categories is significant. Perhaps, this is a result of the fact that the additional requirements to confirm the corresponding status are imposed to the designations filed for the registration as well-known trademarks. In all fairness it has to be noted that the right holder of such designation is granted a number of additional authorities as compared with the authorities obtained, while registering a conventional trademark.
The well-known trademark: specificity and distinguishing features
Article 1508 and Article 1509 of the Civil Code of the Russian Federation are devoted to the conditions of protection and the registration of well-known trademarks. So, both the designation registered on the territory of Russia or protected in accordance with the international treaties of the Russian Federation and the means of individualization, which has not legal protection on the territory of Russia may be recognized as a well-known one.
To recognize the trademark well-known, the following conditions must be observed:
- The designation is heavily used.
- The trademark is widely known in Russia.
- The consumers identify the trademark with respect to the applicant's products.
The designation that has become widely known after the priority date of the trademark of another person that is identical or confusingly similar to it, which is registered with respect to the homogeneous products can not be registered as a trademark.
Specificity of possessing a well-known trademark
It is obvious that imposing by the legislator the additional requirements to such designations is due to granting the preferences to the holder of the well-known trademark. Such shall include:
- An unlimited period of protection of the designation.
- The expansion of the scope of legal protection with the distribution to the products, which that are not homogeneous with those ones with respect to which the designation is recognized well-known. Provided that the use of the trademark by another person with respect to the said products may evoke an association among the consumers with the right holder of the well-known trademark and, as a result, it will lead to infringing the legitimate interests of such holder.
The particularities of the registration of designations as well-known trademarks
The Administrative Regulations that clarify and describe the procedure and conditions for checking the designation as to its compliance with a status of being well-known were adopted in 2015. According to Subparagraph 3 of Paragraph 17 of the said act, in order to confirm the fact that the trademark has obtained the status of being well-known, the applicant must provide the following information to the Federal Executive Authority at the stage of filing an application:
“– on the heavy use of the trademark or the designation, in particular, on the territory of the Russian Federation;
– on the countries, in which the trademark or the designation has become widely known;
– on the expenses incurred for advertising the trademark or the designation (for example, the Annual Financial Reports);
– on the cost (value) of the trademark in accordance with the data contained in the Annual Financial Reports;
– on the results of the surveys of the consumers of products regarding the status of being well-known of the trademark or the designation, carried out by a specialized independent organization, which can be documented taken into account the recommendations posted on the web-site of Rospatent.”
The applicant may also provide the additional information confirming the fact that the designations used is widely known. For example, the company ANO “TV-Novosti” provided an opinion on the results of the analysis of the frequency of mentioning the designation in the mass media and the information on the participation in various public events, when filing the application for the recognition of the trademark “RT” (an abbreviated name of the TV channel “Russia Today”) well-known. And the representatives of LLC “Internet Solutions,” who carry out the sale of the products using the web-site ofzon.ru, submitted a report on the proportion of the customers of a “purchase ever made” category (the category of the consumers, who have purchased the product at the indicated online store at least once). According to the report, the number of such customers has reached 6.5 million people.
In the course of the examination, the application for a well-known trademark passes a stage of formal examination (a check of the documents for their compliance with the requirements specified) and a stage of checking and assessing by the Commission of Rospatent the information and the evidence submitted. The maximum period for the consideration of the application is 10 months, in some cases; an extension of the period is permissible, but not more than by 10 months.
The result of the second stage of the examination is making a decision by Rospatent on satisfying the application and on recognizing the designation well-known or the applicant is refused in the registration; making a decision on terminating the paperwork is also possible. If the examination result is positive, the means of individualization is entered into the List of Well-Known Trademarks in the Russian Federation and the right holder is granted a certificate for a well-known trademark.
If the specialists of the Office consider the registration of a well-known trademark to be unacceptable for any reasons, then the right holder is refused in providing legal protection with the indication of the reasons, by which the persons, who have carried out the examination, were guided. Not so long ago, the company Soremartec C.A. attempted to register the designation Raffaello as a well-known trademark with respect to the 30th class of the ICGS (the confectionery products, namely: candy). At the initial assessment, one can conclude that the means of individualization claimed is really well recognized by the consumers and it should be registered as well-known. However, after the thorough study of the reports and other evidence submitted by the applicant, Rospatent concluded that the confectionery products had been manufactured in Belgium and Poland, while the information on the manufacture in Russia had not been specified in the materials submitted by the applicant. Thus, the existence of an associative link “product – manufacturer” at the consumer’s mind causes doubt. Another argument in favor of the refusal to grant the status of being well-known to the trademark was the information indicating that the designation was used in different colour and font solutions within different periods: in 1998-1999 it was in a red colour, in 2003 it was in a gold brown colour range, then again it changed the colour to red. Having analyzed the evidence submitted, the experts of Rospatent refused to grant the status of being well-known to the designation due to the lack of evidence of the identification of the product with the manufacturer in the consumer’s mind and the impossibility of establishing the period of the use of the trademark in the claimed form.
The company Korea Yakult Co., LTD, which had filed for the registration the designation “Doshirak” for the 30th class of the ICGS (namely: instant noodles), also got a refusal in granting the status of being well-known to its trademark. The applicant had submitted the evidence of the popularity of the products at the Russian market, the availability of the manufacture on the territory of the Russian Federation and other information indicating that the means of individualization was widely known. But the representatives of Rospatent did not recognize “Doshirak” well-known motivating their decision by the following circumstances: the original trademark had been registered by the right holder with respect to the following products: macaroni, dumpling, macaroni products, pizza, bread, etc. At the same time, in the application for the recognition of the designation well-known, only instant noodles was indicated, which was absent in the list of the products for which the means of individualization had been registered. The application materials contain the information on the use of the designation in various colour and font solutions, what makes it difficult to establish the fact of the intensity and the period of the use of the indicated trademark in the claimed form. Among other things, the experts of Rospatent noted that the social surveys submitted by the company did not allow concluding that the consumer had the associative link “product – manufacturer.” In connection with the above circumstances, the Board of Rospatent made a decision to refuse granting the status of being well-known to the trademark.
The given examples of the refusals points to the fact that in the course of the examination of the designation for its compliance with the requirements specified, the experts of the Office pay an increased attention to the establishment of such facts as: a unity of the colour, the font or other solution, in which the trademark has been used within the claimed period and the evidence that the consumers have the associative link “product – manufacturer.” However, the refusal to grant the status of being a well-known to the trademark should not be considered as final and unconditional. As in case of the refusal to register or the termination of the paperwork, the applicant is entitled to appeal the decision of Rospatent.
The Hague Agreement Concerning the International Deposit of Industrial Designs is an agreement signed on November 6, 1925, entered into effect on June 1, 1928, as revised in London on June 2, 1934, in Hague on November 28, 1960 and extended by the Complementary Acts, signed in 1961 and 1967, and amended in 1979.
In modern times, this agreement was renamed at the Diplomatic Conference in Geneva on July 2, 1999, when signing the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs and has the name "The Hague Agreement Concerning the International Registration of Industrial Designs" (hereinafter, the “Agreement”).
The main purpose of the Agreement is the centralized registration of industrial designs with the International Bureau of WIPO, which facilitates the solicitation of legal protection in their respect in various states.
In accordance with this agreement, the international depositing of an industrial design may be carried out either directly with the International Bureau of the World Intellectual Property Organization (WIPO) or through the intermediacy of the national industrial property office of the state which is a party to the agreement, which is the country of origin of the design.
The Russian Federation signed the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs at the Diplomatic Conference in Geneva on July 2, 1999, but currently the act has not come into effect in the territory of the Russian Federation, since the Russian Federation has not implemented the internal state procedure necessary for its adoption.
The Hague System is the only global system of WIPO, to which our country is not a party, and the problem of the Russian Federation's accession to the Agreement has been existing for long.
The reasons which prevented ratification of the Agreement are certain "peculiar" requirements of Russian laws which were effective as of the year 2014, economic obstacles and low-level interest of Russian applicants in foreign patenting of industrial designs.
One of the main requirements of Russian laws that "prevents" from accession to the Agreement was the obligingness for the applicant to submit a detailed description and list of essential features of the industrial design required for the establishment of the application filing date. Currently these requirements are canceled.
Thus, the changes in Russian laws that facilitate the accession of the RF to the Agreement are as follows: the scope of claims is determined by the images of an industrial design exclusively, the legal protection is granted for 5 years, with the possibility of its extension up to 25 year, the novelty protection period has been increased up to 12 months.
Besides, Rospatent (Russian Federal Agency for Intellectual Property, Patents and Trademarks) conducted the research/survey among future potential users of the Agreement, which marked a major advantage of the Agreement - to provide the applicant with the possibility of obtaining protection for an industrial design in several countries by filing a single international application, which avoids the patenting problems and difficulties caused by the different procedures and requirements of the national laws in the foreign countries.
In addition, the following benefits were stated: one language of filling an application, possibility of filing through Rospatent, the uniform currency for the payment of duties, one procedure of registration and extension of time periods, one procedure of amendments and corrections. For example, entering of amendments in respect of the owner of an industrial design into the international registry is automatically extended to all states.
Regarding the economic side of the issue, the potential users noted that the amount of the statistically average international duty is more acceptable and more economically sound than filing several applications with the national offices of the countries of interest.
Therefore, the adoption of amendments to Part 4 of the RF Civil Code drew Russian laws regarding industrial designs nearer to European laws, which made the question of ratification of the Agreement by Russia a topical one as never before.
At present, the package of documents on the ratification by the Russian Federation of the Geneva Act of the Hague Agreement has been coordinated by Rospatent in accordance with the established procedure with other federal executive bodies and sent to the Government of the Russian Federation for consideration.
Along with the preparation of the package of documents required for the ratification of the Agreement, our country carries out completing events for the accession to the Geneva Act of the Hague Agreement. Rospatent creates an appropriate structure in the FIIP (Federal Institute for Industrial Property), personnel passes training, substantive examination in a foreign language is arranged, international registrations are entered into the national Register and published in the national bulletin, methodical materials are prepared for applicants, existing office automation systems are adapted, extracts from the WIPO Gazette relating to the protection of international registrations in the territory of Russia, are published on the website of Rospatent, etc.
Besides, one of the tasks is the introduction of a number of specific features in the regulatory framework, and, as a result, in the practice which concern execution of industrial design applications, such as the use of various graphic techniques of exclusion of the parts of products from independent legal protection/disclaimer that are not the object of the registration (e.g., the use of dotted lines), the use of explanatory figures, drawings, etc.
The experience of other countries/their offices which have recently acceded to the Agreement should be taken into account as well, in particular, the examples of the USA, Japan, and Korea. These countries’ practice is important because their patent offices, like Rospatent, conduct a full substantive examination of the applications and a common feature of the examination in these countries is that the records management in respect of the applications filed in accordance with the Agreement is carried out in the same way as in respect of the national applications.
The interaction between the applicants and the WIPO IB should be worked out in detail in case of various violations in the application materials; the actions of the examination-related persons should be defined in case of partial refusal to grant legal protection; the issue of the need to report information on the international registrations in the national registries and gazettes should be solved.
Summarizing the above, we can make an unequivocal conclusion to the effect that in spite of the technical difficulties and problems that accompany the Russian Federation's accession to the Hague Agreement Concerning the International Registration of Industrial Designs, the use of this system in the future has essential prospects and benefits such a system ensures, as mentioned above in this article, including as follows:
- possibility to include up to 100 different industrial designs in one application (but pertaining to one class of ICID (International Classification for Industrial Designs)
- filing of an international application in the language, as may be selected by the applicant: English, French or Spanish, directly with the WIPO IB, electronically or as a hard copy, or through Rospatent
- the single set of duties in CHF is paid
- there is no need to use the services of foreign patent attorneys at the stage of filing an application
- possibility to assign a representative at a preliminary refusal stage if refusal is obtained
Keywords: intellectual property, means of individualization, exclusive rights, trademark, registration of a trademark, distinctiveness, protectability of a trademark, acquiring distinctiveness
Trademarks are developed, registered and used by entrepreneurs to increase the recognition of their products and services. In accordance with Article 1482 of the Civil Code of the Russian Federation, word, figurative, three-dimensional and other designations or combinations thereof may be registered as trademarks; the trademark can be registered in any colour or colour combination. However, the registration may take place only if the selected designation corresponds to the criteria of protectability. In other words, designation should not fall under a number of restrictions, contained in Article 1483 of the Civil Code of the Russian Federation.
One of the main criteria of protectability of a trademark is its distinctiveness, namely such property of the designation, which allows a consumer to distinguish the products or services of one manufacturer from the similar products of other manufacturers.
Thus, in accordance with Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation, “...No state registration as a trademark shall be granted to the designations, which do not have distinctiveness or which consist only of the elements that:
1) have come into a general use to designate the products of a certain kind (the designations, which have become an indication of a certain kind of product as a result of a prolonged use for the same product by different manufacturers).
2) are common symbols and terms;
3) characterize the products, including the ones that indicate to their kind, quality, quantity, property, purpose, value, as well as to the time, place and method of their manufacture or sale (it should be noted that descriptive designations may include not only word, but also figurative designations, for example, a simple naturalistic image of the product)
4) represent the form of products that is determined exclusively or mainly by the property or purpose of products (the form of the product must be original, but not traditional, used by all manufacturers of similar products. Such traditional form, which the product usually has or highly likely may have, does not have distinctiveness).
To perform the function of a trademark, such form of packaging should be original, but not traditional, used by all manufacturers of similar products. The form does not have distinctiveness, if it is simple, or if it is a combination of simple forms. To recognize distinctiveness the form should not be traditional. The more the form resembles the form, which the corresponding product will most likely have, the more grounds for recognizing the fact that the form lacks distinctiveness.
The indicated elements may be included in a trademark as unprotected elements, unless they dominate therein.”
The Paris Convention for the Protection of Industrial Property of March 20, 1883 also contains a provision stating that “The trademarks falling within the scope of this Article may be rejected upon the registration or invalidated only in the following cases ... if the trademarks lack any distinguishing features or are composed solely of the trademarks or indications that can serve in commerce to designate the kind, quality, quantity, purpose, value, origin of the products or the time of their manufacture, or that have become common in the colloquial language or in bona fide and conventional commercial customs of the country where the protection is sought ...”
In accordance with the Rospatent Rules (Order of the Ministry of Economic Development and Trade of the Russian Federation of July 20, 2015 No. 482 “On approval of the Rules of composing, filing and considering the documents, which are the base for committing legally significant acts related to the state registration of trademarks, service marks ...”), during the examination of the designation applied for the registration it shall be defined whether the applied designation refers to the objects, which do not have distinctiveness or which consist only of the elements stipulated in Paragraph 1 of Article 1483 of the Code.
The designations, that do not have distinctiveness, include:
- “... simple geometric figures, lines, numbers; separate letters and combinations of letters, that do not have a word character or are not perceived as a word;
- common names;
- realistic or schematic images of products applied for the registration as trademarks to designate these products;
- the data concerning the manufacturer of products or characterizing the product, weight proportions, material, raw material from which the product is manufactured;
- ... the designations, which have lost such distinctiveness at the date of filing an application as a result of a wide and prolonged use by different manufacturers with respect to identical or similar products, including in the advertisement of products and their manufacturers in the mass media.
Meanwhile, it shall be defined, in particular, whether the designation applied or its separate elements have come into a general use to designate the products of a certain type ...”
As we can see, the Civil Code divides trademarks into two categories: “not having distinctiveness” and “consisting of certain elements” (stipulated in Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation). However, it should be noted that in practice these two categories are “superimposed” on each other, there is no any clear boundary between them. The trademarks consisting of the elements stipulated in the Code do not have distinctiveness.
In any case, the stipulated elements may be included in a trademark as unprotected elements, unless they dominate therein.
When assessing the “dominance” of the element in the designation applied, the following shall be assessed: its spatial position, overall visual perception of both the element separately and the designation as a whole, taking into account all other elements. Its colour, graphic design, its size, position, etc. shall be taken into account.
“Unprotectability” of the element means that it can be used freely by all other interested parties without any negative legal consequences. The presence of an unprotected element in your trademark, respectively, does not grant you the right to prohibit the use of this element by any third parties.
Further, the above provisions of the Civil Code (concerning unprotected elements) shall not be applicable to the designations, which:
“...1) have acquired distinctiveness as a result of their use;
2) consist only of the elements stipulated in Subparagraphs 1-4 of Paragraph 1 of this Article and form a combination that has distinctiveness.”
Thus, the Russian legislation allows granting the legal protection to the designations, the distinctiveness of which has not existed initially, but which they have acquired as a result of their wide use in the market. And, consequently, the opportunity has appeared for such designations to distinguish the products of a certain manufacturer from a homogeneous mass and associate it with a certain manufacturer.
Assessing the presence of the acquired distinctiveness, the following data can be accepted, as a whole or in part:
- the volumes of production and sales of the products/services marked with the designation applied;
- the territories of sale of the products/services marked with the designation applied;
- the duration of use of the designation applied for marking products/services;
- the costs for advertising the products/services marked with the designation applied;
- the data on the level of the consumer awareness, including the results of sociological surveys;
- the data on publishing the information on the products marked with the designation applied in the public press;
- the data on exhibiting the products marked with the designation applied at the exhibitions in the Russian Federation and abroad, etc.
The enumerated list of documents is not exhaustive. Any materials and documents that demonstrate the ability of the designation applied to individualize expressly the products or services of a certain company or individual entrepreneur will be suitable.
Thus, in accordance with the Paris Convention “...To determine whether the trademark can be an object of protection, it is necessary to take into account all actual circumstances, especially the duration of the use of the trademark.”
The above information, which confirms the acquired distinctiveness of a trademark, should not be merely declarative. The documentary confirmation of each argument made by the applicant is required. At the same time, merely marketing, advertising materials that do not contain an unambiguous indication of the legal connection of the applicant with the trademark shown on such materials are not enough. In this regard, the indicated materials can be taken into account by the examination together with the following documents: agreements for advertising the use of the designation applied (indicating the territory on which the advertisement should be placed); orders for the production of booklets, souvenirs; invoices; account statements, etc.
The above information and materials can be taken into account by the examination, both as a whole and in part: it all depends on certain circumstances of the case. The legal protection of the designation applied is provided, if the documents represented by the applicant confirm that such designation has performed a clear individualizing function, that is, it has been perceived by the consumer as a designation of products s of a certain manufacturer before the date of filing an application with respect to the items of the list of such application.
In some cases, the applicant can prove that the designation applied has acquired distinctiveness with respect to a much narrower list of products and services, than it has been indicated in the application originally (for several classes or several items) – then the trademark can be registered with respect to the products or services for which the acquired distinctiveness is proved.
It should be noted that the acquisition of distinctiveness is recognized for the designation as a whole and not for its separate elements. If the designation consists of two initially unprotected elements, for example, of a letter and an indication to the kind of products, in recognizing the fact that it has the acquired distinctiveness, the right holder does not obtain the exclusive rights to these elements separately, independently or in combination with other verbal or figurative designations.
Finishing the consideration of this issue, it should be noted that the Rospatent's practice with respect to the designations that do not have distinctiveness is ambiguous. The same can be said about “unprotected elements.” In Russia, for example, there are no “unprotected elements as a default” (for example, there are no words “super,” “classic,” “group,” etc.), therefore, the legal protection of a trademark is determined exactly as it is indicated and it is limited in the certificate. If any element is not indicated in the certificate as unprotected, it means it is included in the legal protection. And if to compare such certificates, the same element of both trademarks, executed by roughly the same way and located in the same place, can be recognized as unprotected in one case and protected in another case.
In addition, there are examples of the registered trademarks, the protection of which was subsequently challenged by the interested parties and invalidated due to the lack of distinctiveness, but the difference in the approaches used by the examination reflects the lack of uniformity in the Rospatent's practice in assessing protectability of trademarks.
Thus, the distinctiveness of some or other elements or designations is examined each time individually, during the examination of a certain designation applied for recognition as a trademark, and very often the recognition of distinctiveness depends directly on how correctly the applicant has managed to justify his position.
Keywords: intellectual property, means of individualization, exclusive rights, trademark, registration of a trademark, application for a trademark, examination as to form of an application for a trademark, electronic interaction with applicants, electronic filing of an application for a trademark, electronic signature.
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”. As trademarks it is possible to register words and phrases, pictures, logos, the form of packaging, even colors and melodies – all that helps to distinguish the products and services of some manufacturers from the products and services of the other manufacturers, to increase their recognizability among consumers, to fight against the unfair competition.
The trademark belongs to the category of intellectual property subject-matters, the rights to which can arise only after the registration by the Federal Executive Authority on Intellectual Property – Rospatent. Accordingly, to ensure the legal protection to your trademark, you should register it by filing an application to the Patent Office.
The application for the registration of a trademark can be filed both in a paper form and in an electronic form. Filing electronic applications is carried out through the services of the FIPS website: http://www1.fips.ru/wps/wcm/connect/content_ru/ru/el_zayav/tm_ap_new. It should be noted, that every day the quantity of applications filed “remotely” becomes more and more (several tens of thousands have been filed by now), and Rospatent is increasingly engaged in electronic interaction with applicants.
Just on the FIPS website the advantages of such electronic documents circulation are indicated: the registration of applications and any additional documents are carried out day and night, including on weekends and holidays; the official fee for filing an electronic application is reduced by 15% (by 405 roubles less than the official fee for filing an application in a paper form); the documents from the “Personal Account” of the user on the website are “delivered” to the Patent Office just in a few seconds.
The process of registering a trademark is almost completely “free” from the paper correspondence (except for a trademark certificate itself), and, in general, as the delivery time of the correspondence is reduced by many times, the process is significantly accelerated.
In particular, the process of carrying out an examination as to form can be completed almost twice as fast as than the one at filing a “paper” application: the computer service checks automatically the availability of the necessary information in the relevant fields (otherwise the application simply will not be able “to be sent” to the Patent Office), therefore the information on the applicant and the payer, the description of the designation applied, the designation itself, the list of products and services, etc. are loaded automatically into the electronic document circulation system and do not require any additional manual processing.
Through the appropriate server on the website, it is possible, first of all, to file an application for the registration of a trademark signed with a qualified electronic signature, to receive almost immediately a notification from Rospatent on the receipt of the application with the registration number assigned to it and to correspond further with Rospatent in an electronic form. In the same way, through the above website, it is possible to file an application for an invention or a utility model.
The very use of the server is free.
The authorization of the users of the “Personal Account” on the FIPS website occurs by means of an electronic signature certificate. In general, the electronic signature is intended to identify the person who has signed an electronic document, and it is an analogue of a “handwritten” signature. The possibilities of using an electronic signature are determined by the provisions of Article 6 of Federal Law of April 6, 2011 No. 63-FZ “On Electronic Signature”, which establish conditions for the recognition of electronic documents signed by an electronic signature as equivalent to paper documents signed by a handwritten signature. To obtain an electronic signature it is necessary to contact the Certifying Center of the Ministry of Communications and Mass Media of the Russian Federation.
The electronic signature provides a full control over the integrity of the transmitted electronic document. The digital signature corresponds only to a certain “state” of the document and it is considered to be invalid as soon as the document is changed – accidentally or intentionally. It is, accordingly, provides an effective protection against counterfeiting. Just in the same way as it is impossible to “erase” the signature with a pen on paper without a trace, it is impossible to “delete” an electronic signature, to refuse from the “authorship” of the document.
The use of an electronic signature also requires special software (“CryptoPro CSP”, version 3.6, 3.9).
On the website of the Patent Office it is impossible to find the instructions on installing and configuring the system for filing electronic applications, there is also a list of minimum requirements for the system there. So, to work with the Service for Electronic Filing of Applications, it is necessary to install a crypto provider (it is an independent module that allows cryptographic operations in Microsoft operating systems) on the user's computer, to install a personal certificate and its chain of certificates, as well as a chain of certificates of the FIPS Management Centre; to have a browser version meeting the requirements of the Service; and, finally, to have a firewall or antivirus program (if installed) ensuring full access to the server. Also, there are more specific requirements to the computer hardware itself: the screen resolution must be at least 1024x768 pixels, the operating system must be: MS Windows XP SP3, Windows 7, Windows 8, Windows 8.1, Windows 10, browser – Internet Explorer, version 8, Internet Explorer, versions 9-11. Naturally, the access to the web-server is provided when connecting to the Internet.
Also, on this website it is possible to find the answers to the most frequently asked questions http://www1.fips.ru/wps/wcm/connect/content_ru/ru/el_zayav/faq_el (for example: What are the requirements to the files of “nonstandard” trademarks attached to the application form? How should the information about the payer be filled in? When is it necessary to indicate the information in fields “E-mail” and “Send the correspondence to E-mail”? and many others). If there are no answers to your question on the website, you can always contact a user technical support group by writing e-mail to email@example.com.
Comprehensive User's Guide to the “System for Electronic Filing of Applications for the Registration of a Trademark and a Service Mark” will help to solve many difficult issues and frequently encountered problems.
The electronic signature certificate allows users to log in and authorize themselves on the FIPS website, with absolute safety of such access and with safety of all transmitted and received documents. The “owner" of the Personal Account can be one person – the owner of an electronic digital signature certificate. The application for the registration of a trademark and all other documents sent from the Personal Account will be signed by the signature of that particular person.
The main window of the electronic document circulation application includes several main fields: “News” – for viewing news and information messages; “Library of Applications,” involving the mode of formalizing and filing the applications for the registration of trademarks; “Library of Documents” for working with methodological and normative and reference materials, etc.
“The Library of Applications,” perhaps, is the main section of the Personal Account. It displays the applications in the form of a list, in which it is possible to find the following brief information for each application: “Status” (the current state of the workflow), “Creation Date,” “Registration Application Number” (assigned automatically to the application by Rospatent), “Incoming Application Number” (also assigned automatically by Rospatent), Tracking Application Number” (assigned by the user), “Registration Date” (the date of the registration of the application in the FIPS Moscow time). Each of these fields can be quickly searched and sorted.
The obligatory document for any of the applications in the “Library” is a user-created “Application” for the registration of a trademark. When creating an application, the so-called “Navigation Bar” appears at the top of the page, which contains separate fields that must be filled in and that correspond to the structure of the “paper” application. The user gradually fills in the information about the applicant, the payer, the representative, the designation applied, the priority, the products and services, the additional materials. The fields that should be filled in obligatory are highlighted in red. If some of them are not filled in, it will be impossible to sign the application and send it to the Patent Office.
As we can see, the Rospatent service for electronic filing of applications is really convenient. Beside obvious advantages – the ability to file applications “remotely,” the speed and the day and night work – the service has a number of other useful options, such as, for example, the ability of an operative control over the workflow for each application at different steps of its examination, an access to the classifier of the International Classification of Goods and Services, etc. Of course, in order to get an access to electronic filing of applications, one should spend time and money to ensure the possibility of signing the documents with an electronic digital signature and solve a number of problems related to the access and security issues, but in the long-run period these costs of time and money are undoubtedly paid off. Although, of course, the possibility of electronic filing of applications will be most interesting to patent attorneys and companies specializing in providing services in the field of registering the rights to intellectual property subject-matters, which have a large volume of filed applications for trademarks on a monthly basis.
В настоящей статье речь пойдет о способах охраны упаковки, права на которую правообладатель хочет защитить от нарушений третьими лицами. Сегодня упаковка – это не просто тара, обеспечивающая защиту продукции от влияния окружающей среды и от повреждений, облегчающая процесс транспортировки, хранения и реализации, но и уникальное средство привлечения внимания потребителей, построения и поддержания репутации того или иного бренда, играющее зачастую решающую роль в маркетинге или рекламе товаров определенного производителя.
Права на упаковку можно защитить путем регистрации нескольких объектов интеллектуальной собственности, в частности, товарного знака и промышленного образца, каждый из которых обладает особым правовым статусом.
Товарный знак, в соответствии со статьей 1477 Гражданского кодекса Российской Федерации, – это обозначение, служащее для индивидуализации товаров юридических лиц или индивидуальных предпринимателей. Некоторые из категорий товарных знаков перечислены в статье 1482 ГК: «В качестве товарных знаков могут быть зарегистрированы словесные, изобразительные, объемные и другие обозначения или их комбинации».
Что касается промышленных образцов, то, в соответствии со ст. 1352 ГК РФ, промышленный образец – это «решение внешнего вида изделия промышленного или кустарно-ремесленного производства». Охрана интеллектуальных прав на промышленный образец предоставляется на основании патента в объеме, определяемом совокупностью существенных признаков промышленного образца, нашедших отражение на изображениях внешнего вида изделия, содержащихся в патенте. Существенные признаки промышленного образца – это признаки, определяющие «эстетические особенности внешнего вида изделия» («…в частности форма, конфигурация, орнамент, сочетание цветов, линий, контуры изделия, текстура или фактура материала изделия»).
В настоящей статье хочется сделать особый акцент на вопросе охраны упаковки, которая содержит определенный оригинальный словесный и/или изобразительный элемент, который будет выполнять основную индивидуализирующую функцию и который можно пытаться защитить в качестве товарного знака, а также иные изобразительные и словесные обозначения, которые расположены особым, оригинальным образом. Как правило, производители тратят достаточное количество времени и сил, чтобы разработать такую упаковку, расположить различные элементы в определенном порядке, чтобы привлечь и удержать внимание покупателей, вызвать у него желание купить продукт. Естественно, если упаковка действительно стимулирует продажи такого товара, недобросовестные конкуренты могут ее перенять и начать активно использовать.
Для более полной защиты подобной упаковки имеет смысл защитить и указанный доминирующий (по значимости) элемент (или элементы), по которому потребитель будет проводить связь между продуктом и его производителем, – в качестве товарного знака, а также оригинальную компоновку всех остальных элементов, которая играет значительную роль в продвижении продукции, – в качестве промышленного образца. Соответственно, перед подачей данных заявок рекомендуется провести поиски – и по товарным знакам, и по промышленным образцам, – чтобы в полной мере оценить шансы на регистрацию, а также оценить вероятность нарушения прав третьих лиц.
Успешная регистрация и товарного знака, и промышленного образца, позволяет получить полноценную охрану для оригинальной упаковки продукции. Кроме того, если с одним из элементов – товарным знаком или промышленным образцом – у правообладателя по тем или иным причинам возникнут сложности, и его правовая охрана будет прекращена, то останется второй объект, подлежащий защите. Так, если правовая охрана товарного знака будет по какой-то причине прекращена (например, вследствие того, что будет доказано, что обозначение вошло во всеобщее употребление для обозначения товаров определенного вида), у правообладателя останутся права на промышленный образец – внешний вид изделия, компоновку элементов, обуславливающие определенную различительную способность среди покупателей..
На практике часто возникают споры, когда обе стороны обладают правами на оригинальные товарные знаки, однако конфликт возникает по поводу дизайна упаковки. Нередко двое или более производителей используют практически идентичную компоновку элементов и цветовые сочетания, просто размещая на упаковке логотип своей компании. Особенно это характерно для таких товаров, как молочные продукты, масло, напитки, соусы. Кроме того, как бы это ни было парадоксально, встречаются ситуации, когда лицо, использующее на упаковке чужой товарный знак, имеет патент на упаковку, в целом, как на промышленный образец, и владельцу товарного знака становится значительно сложнее защитить свои права.
Таким образом, чтобы максимально себя обезопасить, рекомендуется регистрировать и товарный знак, и патентовать промышленный образец. При этом необходимо помнить об их правовых отличиях, а также преимуществах и недостатках.
Товарный знак отличается от промышленного образца по многим критериям. В первую очередь, различается их правовая природа. Товарный знак – это средство индивидуализации, а промышленный образец – это результат творческой деятельности, у которого есть автор, указанный в охранном документе – патенте.
Товарный знак и промышленный образец отличаются по срокам охраны. Исключительное право на товарный знак действует в течение десяти лет с даты подачи заявки на государственную регистрацию товарного знака, однако возможно продление срока действия такого права на товарный знак – неограниченное число раз каждые десять лет.
Патент на промышленный образец действует пять лет, и этот срок по заявлению патентообладатель может быть неоднократно продлен на пять лет, но в целом не более чем на двадцать пять лет. Следовательно, охрана промышленного образца всегда носит срочный характер, а правовая охрана товарного знака, в теории, может быть бессрочной, бесконечной – если правообладатель будет вовремя и правильно осуществлять действия по его продлению.
Товарные знаки для их успешной регистрации должны соответствовать установленным в законодательстве критериям охраноспособности (ст. 1483 ГК РФ). Так, имеются, так называемые, абсолютные и относительные основания для отказа в регистрации товарного знака. Не допускается государственная регистрация в качестве товарных знаков обозначений, не обладающих различительной способностью или состоящих только из элементов, вошедших во всеобщее употребление для обозначения товаров определенного вида, являющихся общепринятыми символами и терминами, характеризующих товары, в том числе указывающих на их вид, качество, количество, свойство, назначение, ценность, а также на время, место и способ их производства или сбыта и др. Не могут быть зарегистрированы обозначения, являющиеся ложными или способными ввести в заблуждение потребителя относительно товара либо его изготовителя. К относительным основаниям для отказа в регистрации относится наличие тождественных или сходных до степени смешения товарных знаков или обозначений, которые зарегистрированы или заявлены на регистрацию в отношении однородных товаров или услуг.
Правовая охрана промышленному образцу предоставляется, в случае, если он является новым и оригинальным (ст. 1352 ГК РФ). Изделие является «новым», когда совокупность его существенных признаков «не известна из сведений, ставших общедоступными в мире до даты приоритета промышленного образца», «оригинальность» промышленного образца означает, что его существенные признаки «обусловлены творческим характером особенностей изделия, в частности если из сведений, ставших общедоступными в мире до даты приоритета промышленного образца, неизвестно решение внешнего вида изделия сходного назначения, производящее на информированного потребителя такое же общее впечатление, какое производит промышленный образец, нашедший отражение на изображениях внешнего вида изделия».
Кроме того, при установлении новизны и оригинальности промышленного образца также учитываются (при условии более раннего приоритета) все заявки на изобретения, полезные модели, промышленные образцы и заявки на государственную регистрацию товарных знаков, знаков обслуживания, которые поданы в РФ другими лицами. Кроме того, не предоставляется правовая охрана в качестве промышленного образца решениям, способным ввести в заблуждение потребителя изделия, или товара, для которого служит тарой, упаковкой, этикеткой.
Как мы видим, условия предоставления правовой охраны товарному знаку и промышленному образцу абсолютно разные, и это обязательно нужно учитывать при подаче заявок.
Далее, в соответсвии с п. 1481 ГК РФ правовая охрана товарного знака распространяется на те товары или услуги, для которых он зарегистрирован.. В соответствии с п. 3 ст. 1484 ГК РФ, «никто не вправе использовать без разрешения правообладателя сходные с его товарным знаком обозначения в отношении товаров, для индивидуализации которых товарный знак зарегистрирован, или однородных товаров, если в результате такого использования возникнет вероятность смешения».
Для промышленных образцов нет критерия «однородности товаров или услуг», но есть критерий «сходства назначения»: незаконным использованием промышленного образца в изделии может быть признано использование изделия, содержащего все существенные признаки промышленного образца или совокупность признаков, производящую на информированного потребителя такое же общее впечатление, какое производит запатентованный промышленный образец, при условии, что изделия имеют сходное назначение.»
Далее, правообладателем товарного знака может быть только юридическое лицо или индивидуальный предприниматель, а правообладателем промышленного образца может быть не только юридическое, но и физическое лицо.
Наконец, если правообладатель товарного знака несет обязанность его использовать (поскольку правовая охрана товарного знака может быть прекращена досрочно по заявлению заинтересованного лица в отношении всех или части товаров/услуг вследствие неиспользования товарного знака непрерывно в течение любых трех лет после его регистрации), что закреплено в ГК РФ, в частности, в ст. 1486 ГК РФ, то у обладателя патента на промышленный образец такой обязанности нет: патент выдается на определенный срок, и даже если правообладатель его не использует все это время, патент не может быть аннулирован только на этом основании и по заявлению какого-либо третьего лица.
В вопросе защиты упаковки можно выделить еще один аспект. Если упаковка объемная (как бывает в большом количестве случаев), ее саму можно пытаться защитить не только в качестве промышленного образца, но и в качестве объемного товарного знака. Однако, она должна в таком случае соответствовать определенным критериям: если форма (упаковка) товара обусловлена исключительно или главным образом функциональностью товара, является традиционной и/или безальтернативной для однородных товаров, считается, что она не обладает различительной способностью и ей не может предоставляться правовая охрана в качестве товарного знака. Принимая во внимание, что практика регистраций объемных товарных знаков в последнее время претерпевает изменения в сторону «ужесточения» критериев для предоставления правовой охраны объемным обозначениям в качестве товарных знаков , представляется целесообразным защищать объемную упаковку товара в первую очередь именно в качестве промышленного образца наряду с возможной подачей заявки на товарный знак.
В любом случае, и товарный знак, и промышленный образец производят определенное визуальное впечатление, служат для индивидуализации товаров конкретного производителя и, в случае получения исключительного права на данные объекты, защищают правообладателя от нарушения его прав третьими лицами.
В практическом плане, если Вы намерены защитить свои права на оригинальную упаковку товара, – представляется разумным использовать все предусмотренные российским гражданским законодательством средства – такие как получение правовой охраны на товарный знак и промышленный образец, а также исходить из конкретной ситуации и собственных приоритетов, не полагаясь исключительно на преимущества одного или другого способа защиты.
Автор материала - Анастасия Кирюхина
Одним из оснований прекращения правовой охраны товарного знака является его неиспользование в течение любых трех лет (строго!) с момента государственной регистрации товарного знака и выдачи Роспатентом свидетельства на него. Это следует из текста статьи 1486 ГК РФ, которую, не смотря на неконкретность некоторых формулировок, можно считать обязывающей правообладателя использовать принадлежащий ему товарный знак.
Арбитражные суды Российской Федерации используют статью 1486 ГК РФ довольно часто: ежегодно в нашей стране рассматривается несколько сотен споров, предметом которых является неиспользование по тем или иным причинам товарных знаков.
С исковым заявлением в Суд по интеллектуальным правам о досрочном прекращении правовой охраны товарного знака в связи с его неиспользованием может обратиться любое заинтересованное лицо, которое считает, что его права и законные интересы ущемляются фактом существования охраны на неиспользуемый правообладателем товарный знак. Такими лицами, чаще всего выступают предприниматели, производители товаров и услуг, которые столкнулись с невозможностью получить правовую охрану на интересующий их товарный знак или обозначение, из-за наличия ранее зарегистрированного, но неиспользуемого товарного знака, и которые, тем не менее, имеют желание использовать спорное обозначение в своей деятельности и готовы подтвердить затраты на организацию производства или иную подготовку к выпуску товаров или оказанию услуг.
Очень важный момент: из текста статьи 1486 ГК РФ следует, что исковое заявление заинтересованного лица должно содержать доказательства заинтересованности и информацию о том, что товарный знак не используется в течение трех полных лет (приводить доказательства этого не нужно), а бремя предоставления доказательств использования целиком и полностью лежит на плечах правообладателя. Причем, если исковое заявление не будет аргументированно опровергнуто ответчиком, или он не представит убедительных доказательств того, что оспариваемый товарный знак не использовался по не зависящим от него обстоятельствам, то суд должен вынести однозначное решение о прекращении предоставления правовой охраны такому товарному знаку.
Единственно возможный способ избежать потери своей интеллектуальной собственности – доказать, что в течение указанного в исковом заявлении трехлетнего срока или какой-то его части товарный знак либо использовался, либо его использование было не возможно по не зависящим от правообладателя причинам. В таком случае суд может вынести решение об отказе в удовлетворении иска.
Попробуем разобраться в деталях. С реальным использованием товарного знака все более-менее понятно, хотя и здесь есть интересные нюансы. По смыслу статьи 1486 ГК РФ, использование товарного знака предполагает введение в гражданский оборот товаров или услуг с соответствующими обозначениями. Важное уточнение: с точки зрения законодателя, наличие товара на полке супермаркета – это однозначное использование, а вот его активная рекламная кампания на телевидении – нет. При этом совершенно не обязательно, чтобы фактическим использованием товарного знака занимался именно правообладатель. Это вполне может делать лицензиат (равно как и сублицензиат) правообладателя или лицо, использующее товарный знак под контролем правообладателя.
Самый интересный вопрос: какие события и ситуации удовлетворяют критериям обстоятельств, из-за которых правообладатель не мог использовать товарный знак помимо своей воли. Как ни трудно догадаться, такие примеры в практике случаются довольно редко, но они все же есть. Например, владелец компании регистрирует товарный знак для широкой номенклатуры шоколадной продукции, но в течение трех лет так и не использует его из-за того, что практически сразу же проигрывает суд Налоговой инспекции, и со счетов компании списываются в бюджет практически все имеющиеся средства, что де-факто делает ее банкротом. Впоследствии владелец добивается отмены судебного решения, однако взысканные в бюджет суммы ему не возвращаются (они будут зачтены в счет будущих обязательных платежей в бюджет). Такая ситуация, скорее всего, станет для Суда по интеллектуальным правам достаточным основание для того, чтобы оставить без удовлетворения иск о досрочном прекращении правовой охраны товарного знака в связи с его неиспользованием.
Но могут быть и более тривиальные ситуации, когда правообладатель заключает лицензионный договор и обязывает лицензиара использовать товарный знак, чего он в свою очередь по каким-то причинам не делает. Но здесь решение СИП уже гораздо менее очевидно и будет зависеть от конкретных обстоятельств дела.
В завершение стоит сказать и о том, что в последнее время статья 1486 ГК РФ стала помимо всего прочего еще и высокоэффективным инструментом защиты от нападок так называемых «патентных троллей», которым принадлежит большое число патентов и товарных знаков, которые они практически никогда фактически не используют.
Автор материала - Журид Ольга
Товарный знак в Китае, как и в остальных государствах, – это обозначение, основная цель которого – индивидуализировать товары и (или) услуги конкретного производителя. Для того чтобы быть зарегистрированным, заявляемое обозначение должно соответствовать «стандартным» критериям охраноспособности: не представлять собой и не содержать обозначения, тождественные или сходные с государственной символикой, не носить дискриминационного характера, не вводить потребителей в заблуждение касательно производителя или заявленного перечня товаров/услуг и др. Товарный знак должен обладать различительной способностью. И, конечно, регистрации товарного знака будет препятствовать наличие тождественных/сходных знаков, зарегистрированных/поданных на регистрацию ранее в отношении однородных товаров и (или) услуг.
Можно ли зарегистрировать в качестве товарного знака имя или фамилию («личное имя»)? Этот вопрос становится все более актуальным в российской и мировой практике. Ответ состоит в том, что регистрация личного имени в качестве товарного знака допускается, и такая практика достаточно распространена, однако она обладает определенной спецификой.
Вообще, личные имена – это определенные нематериальные активы, все чаще используемые коммерческими предприятиями, которые полагаются на «рыночную привлекательность» известных людей, позволяющую продавать потребителям больше товаров или услуг.
Когда имя Майкла Джордана было использовало для рекламы кроссовок Nike, через какое-то время фанаты бренда, да и обычные потребители, в целом, стали говорить не «я ношу найки», а «я ношу Джоржданы», и эта модель найковской обуви для баскетбола превратилась в самостоятельный популярный и модный бренд. Слово «Джордан» стало использоваться для более широкой категории товаров и даже услуг. Еще пример: многие известные люди позволяют использовать свои имена для парфюмерной продукции, и эта продукция начинает создавать у потребителя положительные ассоциации с успехом.
Многие личные имена обладают известностью у разных социальных групп и могут иметь высокую рыночную стоимость. Это, к сожалению, вызывает многочисленные злоупотребления со стороны заявителей.
В Китае практика регистрации личных имен в качестве товарных знаков не настолько распространена, как, например, в Америке, и обладает значительной спецификой. И даже подходы экспертизы и судов к подобным обозначениям отличаются от случая к случаю.
Как и в России, регистрация таких товарных знаков в Китае может быть произведена, если обозначение, состоящее из фамилии или включающее фамилию, обладает различительной способностью в отношении заявленных товаров и услуг и не способно ввести в заблуждение потребителя относительно производителя. Чтобы обладать различительной способностью, такое обозначение должно быть не просто именем собственным – реальным или вымышленным. Оно должно восприниматься потребителем именно как обозначение товаров или услуг, а не просто как личное имя. Хотя, конечно, фамилии известных лиц именно в силу известности их носителей приобретают различительную способность и в связи с этим, сами по себе, могут быть зарегистрированы в качестве товарных знаков. Как правило, это фамилии звезд эстрады, шоу-бизнеса, спорта, фамилии писателей, композиторов и др.
Далее, в соответствии с законом о товарных знаках Китая, товарный знак не может быть зарегистрирован, если он нарушает ранее возникшие права какого-либо третьего лица. Это авторские права, а также право на личное имя и др.
Так называемое «право на личное имя» в настоящее время толкуется в Китае как право на законно зарегистрированные имена и фамилии, псевдонимы. В этом аспекте популярность лица, о чьем имени идет речь, не имеет решающего значения. Если основания, по которым третьи лица используют чье-либо личное имя, очевидно неоправданны, и третьи лица об этом знают (действуют недобросовестно) суд может установить, что эти третьи лица нарушают «приоритетное» право на «личное имя». Конечно, «недостаточность оснований» доказать сложно, поскольку бремя доказывания лежит на обладателе «личного имени». Однако, из-за неуникальности большинства имен и их частой повторяемости, можно сделать вывод, что такое возложение бремени доказывания вполне оправдано.
В целом, по делам об интеллектуальной собственности, большое количество дел возлагает бремя доказывания на правообладателя (в данном случае – на законного носителя личного имени), и именно он должен доказать, что предполагаемый нарушитель использует его личное имя злонамеренно, недобросовестно (англ. «bad faith»), с неправомерной целью. Эта недобросовестность может быть установлена, если нарушитель знал, что он действует неправомерно, либо должен был знать об этом.
И вот в том случае, когда нарушитель «должен был знать» о неправомерности своих действий, популярность лица, чье имя незаконно используется, – необходимо нужный элемент. Если лицо – супер-звезда и пользуется действительно широкой известностью в Китае, если третье лицо использует его личное имя, то для этого использования автоматически предполагается «неправомерная, неоправданная» цель.
Если лицо, чье личное имя используется, не может считаться всем известной «супер-звездой» в Китае, то вопрос «неправомерности» зависит от товаров и услуг, для которых заявляется соответствующее обозначение. Так, китайскими органами власти рассматривалось дело касательно регистрации товарного знака «KATE MOSS». Кейт Мосс – британская супермодель и актриса, известная как одна из самых высокооплачиваемых моделей 1990-х и 2000-х годов. Представитель Кейт представил в суд доказательства популярности модели, однако Суд посчитал, что их недостаточно для подтверждения ее повсеместной известности в Китае. Однако, заявитель по заявке пытался зарегистрировать обозначение «KATE MOSS» для одежды, что очень тесно связано с деятельностью модели, следовательно, Суд посчитал, что заявитель получил бы «неправомерное и неоправданное преимущество», если бы зарегистрировал «KATE MOSS». Следовательно, такая регистрация нарушает права Кейт Мосс на личное имя. Если бы заявитель пытался зарегистрировать «KATE MOSS» для еды или промышленных товаров, в то время как популярность Кейт Мосс в Китае ограничена, в принципе, одеждой и модой, Суд не посчитал бы это нарушением прав на личное имя.
Самыми сложными считаются случаи защиты прав на личное имя известного умершего лица. Дискуссионным является вопрос о соотношении его личных неимущественных и имущественных прав.
Личные неимущественные права включают в себя право авторства, право на изменение объекта авторского права и право на защиту целостности произведения (от искажений), (которые в рамках регистрации товарного знака, однако, не имеют значения). У имущественных прав есть определенный срок действия – в Китае 50 лет после смерти автора. Личные неимущественные права не ограничены по времени. Наследники известного лица могут только унаследовать имущественные права, вытекающие из указанных неимущественных прав, и только в ограниченный законодательством период времени. Хотя, китайская мораль и социальные обычаи накладывают на наследников известного лица обязанность поддерживать добрую репутацию своего умершего родственника, которая, с учетом истечения срока имущественных прав, может осуществляться только путем защиты его личных неимущественных прав в суде.
При этом, практика органов власти Китая демонстрирует их представление о том, что право на личное имя относится к праву живущего лица, и оно только при жизни имеет право им распоряжаться и менять его. В соответствии с китайским законодательством, гражданин обладает гражданскими правами с момента рождения до момента смерти: именно и может пользоваться своими правами и исполнять обязанности в соответствии с законом. Очевидно, что только ныне живущий человек может пользоваться правами определять, использовать или изменить свое личное имя.
Незаконное присвоение чужого имени и иные личные права живущего человека не могут быть разделены. Следовательно, со смертью человека прекращаются и его права на личное имя – такова практика китайского ведомства. В результате, «право на личное имя» толкуется очень ограничительно.
Многие авторы полагают, что права умершего человека на личное имя защитить все-таки можно. Во-первых, если попытка регистрации соответствующего товарного знака осуществляется недобросовестно, тогда могут быть применены общие положения о недопущении злоупотребления правом и недобросовестности. Так, в соответствии с положениями закона о товарных знаках, регистрация должна осуществляться добросовестно и не нарушать правила морали или иметь какие-либо подобные негативные последствия. Конечно, понятие «добросовестности» достаточно относительно и оставляет большой простор для усмотрения экспертов и государственных органов, однако, это лучше, чем ничего.
Кроме того, если лица, чьи имена пытаются зарегистрировать, приобрели определенную популярность, и их имена тесно связаны с теми товарами/услугами, которые содержатся в соответствующей заявке на товарный знак, и таким образом эти имена приобрели некоторые «коммерческие» характеристики, права на личное имя можно защитить в качестве «права на коммерческую эксплуатацию», которое признается в некоторых наиболее развитых юрисдикциях (особенно в области авторского права). Позиция судов в отношении такого права неоднозначна, но, опять же, это один из аргументов, которые можно приводить против недобросовестной регистрации товарного знака. Если знаменитость посвятила свою жизнь определенной сфере деятельности, заработала достаточно большую популярность и известность на рынке, и у потребителей возникают неизбежные ассоциации между этой личностью (этим личным именем) и соответствующими товарами или услугами, необходимо, чтобы имя этого лица защищалось после его смерти.
Предпринимать действия против регистрации имени умершего человека в качестве товарного знака, исходя из практики, может «заинтересованное лицо». Это могут быть наследники, а также неправительственные организации, имеющие определённую связь с умершим лицом, например, благотворительные фонды его имени. Некоторые исследователи полагают, что в защищать права известного умершего лица может любой человек, когда заявитель действует недобросовестно.
Так, в Китае была подана заявка на товарный знак «Monet Garden» и еще одна – на эти же слова китайскими иероглифами. Была использована фамилия известнейшего человека, Клода Моне, французского живописца, одного из основателей импрессионизма. «ACADEMIE DES BEAUX ARTS» («Академия художественных искусств») как «правопреемник» Моне, подала несколько протестов против этих и подобных заявок.
Часто успешность или, наоборот, неудача в регистрации связаны не только с «рыночной привлекательностью» имени, но и с его «культурной ценностью». Если определенное имя создает ассоциации с высокими моральными стандартами, скорее всего, китайское ведомство его не зарегистрирует для товаров и услуг, связанных с коммерческой деятельностью, направленной на получение прибыли.
В качестве примера можно привести имя известного в Китае писателя Лу Синь («Lu Xun»), чьи произведения входят в обязательную программу средней школы. Лу Синь считается основоположником современной китайской литературы, он оказал огромное влияние на развитие литературы и общественно-политической мысли Китая первой половины XX века. В 2001 г. его внук основал винный завод, который назвал в честь своего дедушки. Он также от имени своей семьи подал заявку в китайское ведомство на регистрацию соответствующего товарного знака для алкогольной продукции. Ведомство отказало в регистрации товарного знака на основании того, что «неправильно» использовать имя одного из величайших китайских писателей для подобной коммерческой деятельности. Китайское ведомство почитало, что имя писателя, как публичного человека, принадлежит не только его семье, но и всему обществу. Ассоциирование имя великого писателя с алкоголем вызовет негативные социальные последствия. Ситуация будет еще хуже, если вина окажутся плохого качества – это повлияет и на репутацию писателя.
При этом ранее одна из китайских художественных школ зарегистрировала свой товарный знак, который включал имя Лу Синя. Знак в переводе на английский язык выглядел как «Lu Xun Art School» («художественная школа Лу Синя»). Эта художественная школа была основана в 1938 г. и обладает прекрасной репутацией в сфере образования. Экспертиза посчитала, что регистрация такого товарного знака будет только поддерживать доброе имя писателя.
Как мы видим, законодательство Китая не содержит четкого положения, запрещающего регистрацию фамилии или имени известного лица в качестве товарного знака, но регистрация личных имен в качестве товарных знаков в Китае все же несколько осложнена. Иногда выделяют три категории «личных имен»: имя и фамилия живущего ныне известного лица, имя и фамилия живущего ныне лица, не известного широкой общественности, имя и фамилия уже умершего известного лица. Каждая из категорий обозначений обладает определенными особенностями, которые необходимо учитывать при подаче заявки на товарный знак.
Практика, однако, показывает, что есть несколько уже устоявшихся правил: соответствующий товарный знак должен иметь очевидную связь с именем конкретного человека. Регистрация не должна вызвать проблем, если заявляется фамилия известного лица, при согласии такого лица, если есть прямая связь между именем и компанией-заявителем и производимыми товарами или оказываемыми услугами. Такой товарный знак не должен противоречить принципам морали и нравственности. И, наконец, он должен обладать различительной способностью
Автор материала - Дарья Лабутъ
Эффективная защита товарных знаков – обозначений, используемых для индивидуализации товаров и услуг, – одна из составляющих успеха бизнеса при расширении его на рынки Китая. Предпринимателям, которые инвестируют достаточное количество средств и времени в построение репутации собственной компании, необходимо предпринять все меры, чтобы с юридической точки зрения защита их бренда в КНР не имела «слабых мест».
В первую очередь, необходимо помнить, что китайское законодательство основано на принципе регистрации знака того заявителя, который подал заявку первым. Таким образом, регистрировать товарные знаки в Китае нужно до начала ведения там какой-либо коммерческой деятельности с их использованием, так чтобы избежать отказа в регистрации из-за наличия тождественных/сходных знаков и обозначений, зарегистрированных/заявленных третьими лицами, в том числе (и достаточно часто) недобросовестно. Причем подавать заявку нужно как можно раньше, поскольку процесс регистрации занимает до 18 месяцев, а правовая защита предоставляется знаку только по факту выдачи свидетельства.
Вообще, необходимо отметить, что Китай – мировой лидер по количеству подаваемых в год заявок на регистрацию товарных знаков. Как мы понимаем, чем больше знаков зарегистрировано в какой-либо стране, тем сложнее зарегистрировать там еще какой-либо новый товарный знак из-за вероятности отказа по относительным основаниям – наличию тождественных или сходных обозначений, зарегистрированных или заявленных в отношении однородных товаров и услуг. Процент заявок, которые не проходят экспертизу по существу, составляет около 38%, что вполне отражает указанные сложности.
Конечно, проведение предварительного поиска перед подачей заявки позволит оценить шансы на регистрацию, вероятность отказа по относительным основаниям. По итогам поиска, при необходимости, можно поменять или доработать знак и надеяться, что это поможет избежать подобных проблем. Но если для регистрации измененного товарного знака все равно есть какие-либо препятствия, что можно предпринять заявитель? Потенциальные способы разрешения проблемы стандарты почти для любой страны: это подача ответа на предварительный отказ с доказыванием несходства заявленного обозначения с противопоставленными знаками, обращение к правообладателям противопоставленных знаков за письмами согласия на регистрацию, направление протеста в заявку, подача возражения против предоставления правовой охраны выявленному товарному знаку или, наконец, подача иска о досрочном прекращении противопоставленного товарного знака в связи с неиспользованием.
Предпочтительность того или иного варианта целиком зависит от ситуации. Однако, досрочное прекращение товарного знака по неиспользованию признается все более действенным и эффективным способом выхода из «тупика». Этот механизм снимает препятствие для заявителей, которые действительно готовы производить и реализовывать товары и услуги под тождественными или сходными обозначениями.
Так, российским законодательством провозглашен принцип обязательного использования зарегистрированного товарного знака как условие сохранения исключительных прав на него. В соответствии со ст. 1486 ГК РФ («Последствия неиспользования товарного знака»), «Правовая охрана товарного знака может быть прекращена досрочно в отношении всех товаров или части товаров, для индивидуализации которых товарный знак зарегистрирован, вследствие неиспользования товарного знака непрерывно в течение любых трех лет после его государственной регистрации. Заявление о досрочном прекращении правовой охраны товарного знака вследствие его неиспользования может быть подано заинтересованным лицом в арбитражный суд по истечении указанных трех лет при условии, что вплоть до подачи такого заявления товарный знак не использовался.» Помимо «расчищения» дороги для новых знаков и новых заявителей, возможность досрочного прекращение правовой охраны знаков, которые не используются правообладателями, помогает бороться с злоупотреблениями регистрацией знаков, «монопольного» присвоения того или иного обозначения без намерения его использовать в реальной хозяйственной деятельности, а также способствует «удалению» «отмерших» знаков.
Как и в России и во многих других государствах, китайское законодательство накладывает на правообладателя знака обязанность использовать этот знак после его регистрации. Если товарный знак не используется на протяжении 3-х лет, его правовая охрана может быть досрочно прекращена.
«Реальность» аннулировать знак в Китае по неиспользованию обусловлена многими причинами. Во-первых, как было указано ранее, Китай придерживается принципа приоритета прав первого подавшего заявку. Китайское ведомство не будет самостоятельно выяснять, используется ли товарный знак правообладателем, пока кто-то не попытается «убить» этот знак в суде. Данный принцип приоритета не поощряет использование знаков, наоборот, стимулирует регистрацию без намерения непосредственного использования.
Во-вторых, многие компании намеренно «дублируют» или имитируют обозначения, используемые другими компаниями, с единственной целью последующего шантажа владельцев популярных брендов и «выманивания» у них денег. Регистрации зачастую осуществляются исключительно с целью продать знак иностранной компании по завышенной цене. Недобросовестные регистрации очень ограничивают возможности иностранных компаний вести бизнес в Китае, выходить на Китайский рынок или даже вывозить товары из Китая. Однако, необходимо помнить, что недобросовестные «пираты», естественно, не имеют реального намерения использовать такие зарегистрированные товарные знаки, соответственно, и «угнанные» знаки составляют определенный процент от зарегистрированных, но не используемых обозначений.
В-третьих, В Китае принята Международная классификация товаров и услуг, однако, в отличие от других государств, помимо деления на классы, в Китае используется также деление на подклассы. Товары и услуги в подклассах считаются тождественными либо однородными. При регистрации товарного знака рекомендуется, чтобы в перечне содержались позиции из каждого подкласса, в которых содержатся товары и услуги, имеющие (потенциально имеющие) какое-либо отношение к бизнесу заявителя. Также рекомендуется включать в перечень позиции из каждого подкласса, образующего интересующий заявителя класс, даже если они связаны с его деятельностью совсем отдаленно. С одной стороны, это определенное средство защиты и «самообороны», которое не позволит конкурентам заявителя недобросовестно зарегистрировать тождественный или сходный знак в не охваченном подклассе и негативно повлиять на репутацию бренда. С другой стороны, перечень заявок слишком часто охватывает гораздо большое товаров и услуг, нежели по факту производятся или оказываются заявителем. Следовательно, для части товаров и услуг такие знаки очевидно не будут использоваться.
В-четвертых, до сих пор в некоторых отраслях (торговля табаком, алкоголем, оружием) действуют достаточно строгие ограничения, хотя регистрация товарных знаков для соответствующих товаров или услуг все же возможна. При этом, поскольку регистрация знака, естественно, не дает прав заниматься соответствующей деятельностью, товарные знаки также не используются в соответствующих сферах.
В-пятых, статистика показывает, что больше двух лет способны «прожить» не более 20 процентов китайских компаний. Это означает, что некоторые владельцы товарных знаков уже могут быть ликвидированы. В силу отсутствия обязательства постоянного доказывания использования товарного знака, как, например, в США, такие товарные знаки не могут сами по себе «умереть» до окончания своего срока действия и если правообладателем (уже не существующим) не будут предприняты действия по их продлению. Аннулировать такие знаки, понятно, не составляет труда.
Таким образом, заявителям, которые получили предварительный отказ в регистрации товарного знака на основании выявленных экспертизой тождественных и сходных знаков и заявленных обозначений, необходимо, прежде всего, проверить статус противопоставленных знаков. Возможно, существует реальная возможность успешного аннулирования их по неиспользованию, и препятствия для регистрации будут устранены.
В Китае иск о досрочном прекращении правовой охраны товарного знака в связи с неиспользованием может быть подан любым заинтересованным юридическим или физическим лицом, если прошло 3 года или более с момента его регистрации. Как правило, заявителю достаточно предоставить результаты простого онлайн-поиска в поисковых системах, не давшего результатов, для обоснования своей «убежденности» в неиспользовании знака правообладателем. После этого бремя доказывания ложится на правообладателя, который должен представить доказательства использования обозначения в реальном экономическом обороте. Такие доказательства должны поддерживать пять необходимых «элементов» использования: дата, место, сам товарный знак, имя использующего его лица, товары или услуги, производимые или оказываемые под соответствующим обозначением.
Из этого можно сделать вывод, что на заявителе по делу о досрочном прекращении правовой охраны товарного знака бремя доказывания почти нет, оно лежит исключительно на правообладателе. Иногда даже случается так, что добросовестные правообладатели, которые действительно использовали товарный знак в течение этих трех лет, не могут предоставить доказательства использования, которые были бы приняты судом.
Процедура аннулирования зарегистрированного товарного знака в связи с неиспользованием в Китае выглядит следующим образом:
1. Процедура в China Trademark Office (CTMO) – китайском ведомстве по товарным знакам. Заявление о досрочном прекращении правовой охраны товарного знака в связи с неиспользованием должно быть подано в китайское ведомство, которое затем направляет уведомление правообладателю товарного знака, в котором указана необходимость предоставления доказательств использования. Из-за очень большой нагрузки и огромного документооборота эксперты ведомства часто не располагают достаточным временем, чтобы тщательно исследовать все представленные правообладателем документы и материалы. Некоторые доказательства, которые, по идее, не должны быть приняты ведомством, или даже поддельные бумаги могут быть «пропущены» экспертами. В течение этой процедуры заявитель (заинтересованное в прекращении действия товарного знака лицо) не получает копии предоставленных правообладателем документов, следовательно, у него нет возможности оспорить юридическую действительность доказательств, что можно считать процедурным дефектом, несправедливым по отношению к заявителю.
2. Процедура в Коллегии по пересмотру товарных знаков и урегулированию (Trademark Review and Adjudication Board). Любая из сторон дела о досрочном прекращении, в случае недовольства решением китайского ведомства, может подать на него апелляцию в Коллегию. Во время этой процедуры заявитель будет иметь возможность ознакомиться с представленными правообладателем доказательствами использования, поскольку Коллегия направит ему их копии. Коллегия будет принимать решение исходя из мнения обеих сторон и перекрестного исследования доказательств. Эта процедура в Коллегии очень важна, поскольку у заявителя имеется возможность оспорить юридическую действительность документов правообладателя, и проконтролировать правильность выводов китайского ведомства. Если заявителю вопрос аннулирования противопоставленного знака действительно важен, стоит потратить время и деньги на тщательное исследование всех документов правообладателя – правильности подписи, печати, даты, наличия полномочий, общей достоверности документа и др.
3. Процедура в судах Китая. Заявление может быть подано в специальный суд по интеллектуальной собственности, если любая из сторон не согласится с выводами Коллегии и захочет оспорить ее решение. Любая из сторон может быть истцом по делу, Коллегия будет ответчиком, вторая сторона будет третьим лицом, привлеченным к участию в процессе. В ходе делопроизводства заявителю, как правило, предоставляется возможность продолжать оспаривать действительность документов правообладателя, но это потребуется гораздо больших временных и денежных расходов, нежели в Коллегии. Кроме того, заявителю могут запретить предоставлять дополнительные документы в подтверждение своей позиции, потому что суд может решить, что это необходимо было делать на стадии разбирательства в Коллегии, а заявитель намеренно не воспользовался такой возможностью. Следовательно, как мы понимаем, процедуре в Коллегии, если до нее дойдет дело, необходимо уделить максимум внимания.
Если одна из сторон, включая Коллегию, будет недовольна решением суда первой инстанции, она всегда может его оспорить в суде второй инстанции, подав апелляционную жалобу.
Если заявитель не хочет раскрытия информации о себе, он может подать иск по неиспользованию от лица какой-либо третьей стороны.
Китайское ведомство принимает заявление о досрочном прекращении товарного знака как в отношении полного перечня товаров и услуг свидетельства, так и в отношении части перечня. В некоторых случаях тщательный выбор принципиально важных позиций перечня может повысить шансы на частичное аннулирование знака.
Часто получается так, что после получения информации о попытках аннулировать знак, правообладатель подает «запасную» заявку на регистрацию. Поэтому лицу, добивающемуся аннулирования, необходимо иметь заявку с более ранним приоритетом.
В заключение можно отметить, что досрочное прекращение правовой охраны товарного знака в связи с неиспользованием – это очень прагматичный и зачастую эффективный способ решения проблемы предварительного отказа, если его использовать с умом после тщательного анализа специфических особенностей каждого конкретного случая.
А для правообладателей, чтобы избежать рисков аннулирования их знаков, рекомендации следующие: с самого начала использования товарных знаков на китайском рынке их крайне нежелательно произвольно менять и модифицировать, иначе правовая охрана зарегистрированных знаков может быть прекращена в связи с неиспользованием, а используемые «модификации», по сути не имеющие правовой охраны, могут попробовать зарегистрировать на себя третьи лица.
Необходимо постоянно собирать доказательства использования своих зарегистрированных товарных знаков: они могут потребоваться, если кто-либо подаст протест, иск о неиспользовании либо каким-либо другим образом попробует помешать предоставлению и действию правовой охраны знаков на территории Китая.
Кроме того, необходимо постоянно отслеживать недобросовестные регистрации. Китайские компании в сфере интеллектуальной собственности оказывают услуги мониторинга для своих клиентов, отслеживая подачу заявок на тождественные/сходные товарные знаки. Поскольку такие знаки могут подаваться на китайском, очень рекомендуется, чтобы мониторинг проводился носителями языка. Также необходима помощь китайских поверенных при определении возможности препятствовать регистрации таких знаков.
Автор материала - Дарья Лабутъ
2. Есть ряд оснований для оспаривания регистрации, одним из которых является п.8 ст. 1483 ГК РФ:
«Не могут быть в отношении однородных товаров зарегистрированы в качестве товарных знаков обозначения, тождественные или сходные до степени смешения с охраняемым в Российской Федерации фирменным наименованием или коммерческим обозначением (отдельными элементами таких наименования или обозначения) либо с наименованием селекционного достижения, зарегистрированного в Государственном реестре охраняемых селекционных достижений, права на которые в Российской Федерации возникли у иных лиц ранее даты приоритета регистрируемого товарного знака»
Вместе с тем в соответствии с п. 1 ст. 1499 ГК РФ «в ходе проведения экспертизы проверяется соответствие заявленного обозначения требованиям
статьи 1477 и пунктов 1 - 7, подпункта 3 пункта 9 (в части промышленных образцов), пункта 10 (в части средств индивидуализации и промышленных образцов) статьи 1483 настоящего Кодекса и устанавливается приоритет товарного знака.
То есть, соответствие заявленного обозначения требованиям п. 8 ст. 1483 ГК РФ в ходе проведения экспертизы не устанавливается.
НО! Это основание для оспаривания предоставления правовой охраны товарному знаку:
Статья 1512 ГК РФ. Основания оспаривания и признания недействительным предоставления правовой охраны товарному знаку
1. Оспаривание предоставления правовой охраны товарному знаку означает оспаривание решения о государственной регистрации товарного знака (пункт 2 статьи 1499) и основанного на ней признания исключительного права на товарный знак (статьи 1477 и 1481).
Признание недействительным предоставления правовой охраны товарному знаку влечет отмену решения федерального органа исполнительной власти по интеллектуальной собственности о регистрации товарного знака.
2. Предоставление правовой охраны товарному знаку может быть оспорено и признано недействительным:
1) полностью или частично в течение всего срока действия исключительного права на товарный знак, если правовая охрана была ему предоставлена с нарушением требований пунктов 1 - 5, 8 и 9 статьи 1483 настоящего Кодекса;
3. Что такое фирменное наименование
Статья 1473 ГК РФ. Фирменное наименование
1. Юридическое лицо, являющееся коммерческой организацией, выступает в гражданском обороте под своим фирменным наименованием, которое определяется в его учредительных документах и включается в единый государственный реестр юридических лиц при государственной регистрации юридического лица.
2. Фирменное наименование юридического лица должно содержать указание на его организационно-правовую форму и собственно наименование юридического лица, которое не может состоять только из слов, обозначающих род деятельности.
Статья 1475. Действие исключительного права на фирменное наименование на территории Российской Федерации
1. На территории Российской Федерации действует исключительное право на фирменное наименование, включенное в единый государственный реестр юридических лиц.
2. Исключительное право на фирменное наименование возникает со дня государственной регистрации юридического лица и прекращается в момент исключения фирменного наименования из единого государственного реестра юридических лиц в связи с прекращением юридического лица либо изменением его фирменного наименования.
При этом что касается иностранных юр.лиц, то в соответствии с п.61 Постановления Пленума Верховного Суда Российской Федерации, Пленума Высшего Арбитражного Суда Российской Федерации от 26 марта 2009 г. N 5/29 г. Москва от "О некоторых вопросах, возникших в связи с введением в действие части четвертой Гражданского кодекса Российской Федерации"
«При применении статьи 1475 ГК РФ судам надлежит учитывать, что она не исключает охрану в Российской Федерации права на фирменное наименование иностранных юридических лиц (статья 8 Парижской конвенции по охране промышленной собственности)»
Статья 8. Парижской конвенции [Фирменные наименования]
«Фирменное наименование охраняется во всех странах Союза без обязательной подачи заявки или регистрации и независимо от того, является ли оно частью товарного знака»
Таким образом, перед подачей заявки на регистрацию товарного знака с одной стороны представляется целесообразным провести поиск не только по товарным знакам и заявкам, но и по фирменным наименованиям с тем, чтобы оценить риск не только в части препятствий для регистрации, но и в части оспаривания знака, в случае его регистрации.
С другой стороны, как указано выше, фирменные наименования иностранных юр. лиц охраняются без обязательной регистрации на территории РФ. Таким образом, проведение поиска по фирменным наименованиям не будет учитывать информацию о наличии права иностранных юр.лиц.
Товарный знак индивидуализирует товары и/или услуги
Фирменное наименование индивидуализирует юридическое лицо
Таким образом, для того, чтобы были основания для применения положений ГК РФ и можно было пытаться оспорить регистрацию необходимо выполнение ряда условий:
- право на фирменное наименование должно возникнуть ранее даты приоритета зарегистрированного товарного знака;
- товары/услуги должны быть однородными;
- необходимо будет подтвердить заинтересованность лица, подающего возражение (документы, подтверждающие ведение аналогичной хоз. деятельности + финансовые документы, подтверждающие их исполнение):
--компания-обладатель фирменного наименования должна использовать его при изготовлении товаров/оказании услуг, однородных тем, для которых зарегистрирован товарный знак. При этом использование должно быть за период, предшествующий подаче заявки на оспариваемый ТЗ, по настоящее время.
--территория использования – РФ
-- наличие поданной на регистрацию заявки
5. Инстанции, рассматривающие возражения
Роспатент, затем суд по интеллектуальный правам, затем кассация.
Таким образом, при подаче заявки на регистрацию товарного знака необходимо понимать наличие риска его оспаривания в дальнейшем, если регистрация состоится.
Полностью исключить этот риск нельзя. Вместе с тем, если на момент подачи заявки Вам известно о наличии тождественного / сходного до степени смешения фирменного наименования у другой компании, осуществляющей ведений деятельности в аналогичной сфере, целесообразно изменить обозначение с тем, чтобы уйти от сходства.
Автор материала - Анастасия Кирюхина
Trademarks are the designations that serve to individualize the goods of legal entities or individual entrepreneurs. The legal protection on the territory of the Russian Federation is granted to the trademark subject to its registration by the Federal Executive Authority on Intellectual Property – Rospatent.
In theory, trademarks can be divided into different categories, one of which includes the marks that represent geographical names or which include the name of a particular geographical object as an element. Such trademarks have an individual specificity, which leads to certain peculiarities at the registration.
The requirements for the trademarks are stipulated in the Civil Code as grounds for refusing to register them. Among other things, the following prohibition can be attributed to absolute grounds for refusing the registration: “The designations shall not be registered officially as trademarks, if they represent or contain the elements ... 1) which are false or capable of misleading the consumer about the goods or its manufacturer ...” (Clause 3 of Article 1483 of the Civil Code of the Russian Federation).
As examples of false or misleading designations, it is just possible to bring those in which there is any geographical name without sufficient grounds. For example, the designation contains the name of a particular state or settlement with which the manufacturer of goods and services is neither formally nor actually connected; he is not registered there, he does not carry out activities there, etc. Consequently, the buyer can be misled by assuming that the inclusion of a geographical name in the trademark indicates to the association of the goods with a particular geographical object, although in fact there is no such association. Also, the buyer may think that the goods have individual characteristics associated with such a false “origin,” for example, improved quality, what is also not true. The manufacturer of a product or service, in turn, can get unjustified competitive advantages.
In accordance with Clause 37 of the Rules of Rospatent, “... during the examination of the applied designation, the compliance of the applied designation with the requirements of Clause 3 of Article 1483 of the Code shall be checked. When considering the question of the falsity or the ability of the designation to mislead the consumer about the product or its manufacturer, it shall be taken into account that such designations include, in particular, the designations that generate in the consumer’s mind an idea on a particular quality of the product, its manufacturer or the appellation of origin, which is not true. If at least one of the designation's elements is false or misleading, the designation shall be deemed false or misleading.”
Therefore, when registering the trademarks containing geographical names, the problems may arise: Rospatent may refuse to register them. There is a well-developed practice concerning the designations applied for alcohol products. However, here the possible difficulties of the registration are connected not only with the grounds, which are stipulated in Clause 1483 of the Civil Code of the Russian Federation.
Another aspect of this problem is filing for registration the designations, containing the appellation of origin (hereinafter referred to as “AO”), which are independent subject-matters of intellectual property. In accordance with Article 1516 of the Civil Code, the AO is “... the designation representing or containing either a modern or historical, official or unofficial, full or abbreviated name of the country, urban or rural settlement, locality or other geographical object, as well as the designation, which is a derivative of such a name, and which has become famous as the result of its use with respect to the product, the particular properties of which are exclusively or mainly determined by the natural conditions and (or) human factors, which are characteristic of this geographical object. The use of this name can be recognized as the exclusive right ... of the manufacturers of such a product.”
Currently, the position of Rospatent in this issue is as follows: any designation that includes the registered AO, while the applicant does not have the right to use the AO, can not be registered as a trademark. However, on the territory of the Russian Federation there is an exclusive right to the use of the appellation of origin registered by Rospatent. If the AO is registered on the territory of another state, it shall not receive a legal protection in Russia automatically.
Champagne and Burgundy wines, cognac, port wine, etc., being one of the most well-known in the world AO, are just among those appellations of origin that have not received such formal legal protection in Russia.
If, for example, to take a closer look at “champagne” and “cognac,” then, in accordance with the French legislation, certain alcohol beverages can be called so only if they are produced according to the appropriate technology in particular regions of the country.
For example, champagne is sparkling wine produced in the French region Champagne from particular grape varieties by the method of secondary fermentation of wine in a bottle. The name of the beverage comes from the name of province Champagne, where this region is located. Under the auspices of the “Interprofessional Committee of Champagne Wines,” the comprehensive set of rules and regulations for all wines from this region has been developed.
Cognac is a strong alcohol beverage, which is produced from particular grape varieties by a specific technology in region Charente (France). The beverage has received its name from the name of the city of Cognac, which its appearance is associated with. The geographic boundaries of the area in which the manufacture of cognac is allowed, the production technology and name “Cognac” itself are strictly regulated and enshrined in numerous legislative acts of France. Strong beverages from other countries, as well as the beverages manufactured in France outside the indicated region, shall not have the right to be called cognac on the international market. They are called “brandy.”
The legislation of many countries protects the regions of the wine manufacture, such as Champagne. However, some states do not introduce such rules.
France, since the early 1990s, has been appealing to Russia with the demand not to use for the Russian alcohol products the names that are inextricably connected with France and which are protected within the country. This issue has repeatedly been raised during the official visits.
The fact is that such designations as “champagne” and “cognac” have been famous in the USSR long before the foreigners began to lay claim to them. And they have come into general use as specific names of the goods. So, brand “Sovetskoe Shampanskoe” was developed in 1928 by the Council of National Economy (Sovnarkhoz). The manufacture of this sparkling wine was started in the USSR in 1937, and it became an established brand on the alcohol market of the USSR, and then on the alcohol market of the CIS countries.
Nevertheless, in the long run, Russia has established the legislative requirements related to this problem.
Clause 5 of Article 1483 of the Civil Code of the Russian Federation reads: “In accordance with the international treaty of the Russian Federation, the official registration of designations as trademarks shall not be allowed for the designations representing or containing the elements that are protected in one of the member states to this international treaty as the designations, that allow identifying the wines or alcohol beverages, as originating from its territory (manufactured within the boundaries of the geographical object of this state) and having a particular quality, reputation or other characteristics, that are mainly determined by their origin, if the trademark is intended for the designation of the wines or alcohol beverages not originating from the territory of this geographical object ...”
Apparently, this provision of the Russian legislation contains a reference to the TRIPS, the Agreement on Trade Related Aspects of Intellectual Property Rights, which is a part of the set of the documents on the creation of the World Trade Organization. The TRIPS rules are tougher in this respect: “... Each member shall provide legal measures for the interested parties to prevent the use of a geographical indication identifying wines for the wines, which do not originate from the place that is in the geographical indication or which identify strong alcohol beverages, for strong alcohol beverages that do not originate from the place, which is in this geographical indication, even if the true origin of these goods is indicated, or the geographical indication is used in translation or accompanied by such expressions as “kind,” “type," "in style," “imitation” or “similar to them.”
Currently, the products that in Russia can be called “champagne” and “cognac,” are sent for export under the name “sparkling wine” and “brandy.” Even “Sovetskoe Shampanskoe” can exist only in the Russian language and in this form it can be realized only on the territory of the Russian Federation. It enters the international market as “Soviet Sparkling” (“Sovetskoe Igristoe”).
As follows from the aforesaid, the conditions for the registration of trademarks, which are the geographical names (or which contain the geographical names), for alcohol beverages are quite specific. Currently, Russia recognizes the exclusive rights of the respective manufacturers (and the countries) to such names as “champagne,” “cognac,” etc. As a consequence, the inclusion of the names of the beverages typical for particular territories, such as “brandy,” “champagne,” “tequila,” “calvados” and some others by the manufacturer from another country should result in the refusal of the registration on the grounds of misleading with respect to the country of the origin of the goods.
The trademark shall be “a designation that serves to individualize the goods of legal entities or individual entrepreneurs” [“The Civil Code of the Russian Federation (Part Four)” of December 18, 2006 No. 230-FZ]. It is possible to register as trademarks words and phrases, images, the form of packaging, even colors and melodies– all, that helps to distinguish the goods and services of some manufacturers from the goods and services of other manufacturers, to fight an unfair competition.
Trademarks are developed, registered and used by entrepreneurs to increase the visibility of their goods and services; however, the lack of information about the peculiarities of the procedure often leads to numerous problems. Such concepts as “descriptive” and “fantasy” trademarks cause particular difficulty, while assigning the mark to one or another category may affect the chances of its registration significantly.
At first, it should be noted that the registration of a trademark can only take place if the selected designation meets the criteria for the protectability. In other words, the designation should not fall under a number of restrictions, which are contained in Article 1483 of the Civil Code of the Russian Federation. It is on the basis of this Article, that the examination of trademarks shall be carried out.
So, in accordance with Clause 1 of Article 1483 of the Civil Code of the Russian Federation:
“The official registration as trademarks shall not be allowed with respect to the designations which do not possess distinctiveness or consist only of the elements that:
1) have fallen into public domain to indicate the goods of a particular kind;
2) are generally accepted symbols and terms;
3) characterize the goods, including specifying their kind, quality, quantity, property, purpose, value, as well as the time, place and manner of their manufacture or sale;
4) represent the form of the goods, which is determined exclusively or mainly by the property or purpose of the goods.”
However, in accordance with Clause 1.1. of this Article, the provisions of Clause 1 of this Article shall not be applied to the designations that:
“... 1) have acquired distinctiveness as a result of their use;
2) consist only of the elements specified in Subclauses 1 to 4 of Clause 1 of this Article and form a combination which has distinctiveness ...”
Within the framework of the issue under consideration, it is necessary to stop on such a general property of a trademark as distinctiveness. As follows from the text of the Article, the designations that do not have distinctiveness can not be registered. They can be included in the trademark only as unprotected elements, but provided that there is no dominance in the applied designation.
The “descriptive” designations include just the designations, which characterize the goods, including the indication to “... their kind, quality, quantity, property, purpose, value, as well as the time, place and manner of their manufacture or sale.”
In accordance with the Recommendations of Rospatent [Rospatent Order of March 23, 2001, No. 39 “On the approval of the Recommendations on particular issues of the examination of the applied designations”], the applied designations, which consist only of the descriptive elements, shall not be provided with the legal protection, and the manufacturers shall not be granted the exclusive right to use them, as in the economic turnover any person may need use the designations, which describe the goods.
Therefore, when attempting to register a descriptive designation, there is a significant risk of the refusal to register, because the designation does not have distinctiveness.
The “fantasy” designations, in a narrow sense, include the designations, which are the words invented by the applicant. Such designations do not have any semantic meaning in the language before they start to be used for these goods/services (an example: “Google” for the search system on the Internet). The designations that consist of such new, “invented” words have protectability of a high degree and in the absence of the similarity to the already registered trademarks/filed applications with respect to the similar goods, have high chances of being registered.
Generally, the fantasy designations also include the designations, which are not invented/new words, but for the applied list of goods/services they are not descriptive: the use of such designations for these goods is original, fantasy.
These, of course, may be the designations that are not linked with the list at all and associative designations as well. That is the designations that do not directly specify the goods/services for which the registration is claimed. However, they can evoke in the minds of the consumer the association with them, for example, cosmetics (first of all, facial cleansers) “Clean & Clear” (a literal translation from English “clean & clear”). In the absence of the similar trademarks, this designation, as a rule, is provided with the legal protection.
The designations that raise the greatest difficulty in the process of carrying out the examination are the designations that, at the date of filing an application, presumably have lost their distinctiveness as a result of a widespread and prolonged use by different manufacturers in respect of identical or similar goods, including in the advertisements of goods and their manufacturers in the mass media (Clause 34 of the Rospatent Rules [The Rules for drawing up, filing and considering the documents that are the basis for committing legally significant actions for the official registration of trademarks, service marks, collective marks), Order of the Ministry of Economic Development of the Russian Federation of July 20, 2015 No. 482].) Are they descriptive or fantasy?
The example may be the Rospatent Decision of 2014 on trademark “BlackRussian,” the legal protection of which has been claimed for the alcohol beverages. Cocktail “Black Russian” (containing vodka and coffee liquor) was first manufactured in 1949 by a Belgian barman. Rospatent has refused to register the mark on the grounds that this mark is descriptive for particular cocktails: it specifies a certain kind of a cocktail with a particular formulation (while the cocktails of another kind with a different formulation can not be marked with it). Therefore, this designation does not have distinctiveness.
The court did not agree with the conclusions of Rospatent, based on the fact that designation “Black Russian” is not a kind of the product, does not describe its properties, composition and purpose; therefore, it is not descriptive, but fantasy (for example, word “cocktail” may be a descriptive designation). Therefore, the evidence presented by Rospatent does not confirm that the consumers associate this designation with certain characteristics of a particular kind of the product.
Thus, the fact of a widespread use of the designation and even the availability of the information about it in reference systems shall not enough to recognize this designation as descriptive and, therefore, not having a distinctiveness.
But for each designation the situation will be absolutely individual: there are examples, when the examination has excluded a verbal element “Mojito” from the independent legal protection of the applied designations, as, in Rospatent's opinion, this element was descriptive.
In any case, as we see, when trying to register the designation that directly or indirectly specifies the kind, properties, purpose or other characteristics of the goods/services indicated in the list, the applicant must take into account a large number of factors in order to avoid the refusal to register. First of all, it is necessary to evaluate the perception of this designation by specialists and consumers.
To avoid unnecessary temporary and material costs, numerous problems and to reduce the chances of refusing the registration significantly, it is recommended to contact specialists in this field, who know all subtleties of the examination of applications for trademarks.
The trademark is “a designation that serves to individualize the goods of legal entities or individual entrepreneurs” [“The Civil Code of the Russian Federation (Part Four)” of December 18, 2006 No. 230-FZ].
The trademark belongs to that category of subject-matters of intellectual property, the rights to which can arise only after the registration by the Federal Executive Authority on Intellectual Property – Rospatent. Accordingly, in order to ensure the legal protection for your trademark, you should register it by filing an application to the office. In accordance with Article 1482 of the Civil Code of the Russian Federation the following designations can be registered as trademarks: the word, figurative, three-dimensional and other designations or their combinations; the trademark can be registered in any colour or in the combination of colours.
However, the registration can take place only if, in the opinion of the examination, the chosen designation meets the criteria for protectability. The examination of designations shall be carried out on the grounds of the regulations of the Russian legislation, in particular, of Article 1483 of the Civil Code of the Russian Federation. In other words, the designation should not fall under a number of restrictions, which Article 1483 of the Civil Code of the Russian Federation (“Grounds for refusal of the official registration of a trademark”) contains.
As we see the requirements for the trademarks, which the Civil Code of the Russian Federation stipulates in the form of the grounds for the refusal of their registration, which shall be divided traditionally into absolute and relative (other). This division shall be performed according to the following principle: absolute grounds are connected with inadmissible internal properties of the chosen designation, while other grounds relate to the similarity of the registered trademark with some other designations, as a result of which the rights of third parties may be infringed.
Among the absolute grounds for the refusal to register a trademark, it is necessary to identify those that are connected with the inadmissibility of infringing the public interests. At the same time, the registration of such designations shall be prohibited due to the very fact that such elements are present in the designation, even if they do not occupy a dominant position in it.
Such designations are named in Clauses 2-4 of Article 1483, Article 1231.1 of the Civil Code. And in this article I would like to elaborate on the following provision of Article 1483 of the Civil Code of the Russian Federation: “... The designations shall not be officially registered as trademarks that are or contain the elements that are contradictory to the public interests, the principles of humanity and morality. ...” They may be, in particular, the words and images of obscene content, the appeals of the inhumane nature, insulting the human dignity, the religious feelings.
For example, Rospatent has refused to register trademark "INGODWETRUST" (translated from English –“we believe in God,” “we trust in God”), because, according to the examination’s opinion, this designation has religious semantics, it can affect the feelings of Christian believers. The commercial use of such a designation for the promotion of any goods/services may contradict the standards of morality and ethics. This adds to the fact, that “INGODWETRUST” is an official slogan of the USA, placed on the banknotes. The contradiction to the public interests is obvious. The applicant disagreed with the arguments of the examination and tried to attack them, but the arbitration courts confirmed the arguments of the office.
However, besides the obvious cases of contradiction of the applied marks to “... to the public interests, the principles of humanity and morality ...,” the practice of Rospatent knows many much more ambiguous examples.
Quite often, amusing, anecdotal, ridiculous designations “on the edge” are often filed for registration: they obviously evoke certain associations from the consumer, related to a non-literary language or, for example, “naughty” phenomena, which are not widely discussed in public. At the same time, such associations based on humor and even provocations are often not negative, but rather on the contrary, aimed at getting a bright positive emotional response from the consumers. It is thanks to such opportunities that these designations may enjoy a great popularity on the market and contribute to the commercial success of a particular company.
It is clear that for “serious” spheres, such as financial, insurance, education, etc., the use of such designations is usually uncharacteristic: they can blow the image of the organization, and the customer loyalty will be lost forever. But in the trade of consumer goods (hence, the closest to “the people"), for example, the manufacture of food products, alcohol products, products for the restaurant services, for bars, etc. the attempt to win the market share by such methods is quite justified.
But here the question arises if the registration of such designations “on the edge” is allowable? Where is this edge? Is the registration of each such mark an infringement of the public interests? What exactly can be considered the infringement of the public interests: the registration of “non-literary” expressions, or ridiculous or absurd ones, or, for example, the expressions insinuating something obscene?
It is impossible to give objective and unequivocal answers to these questions, the decision will always be subjective. Such designations can evoke different associations, and this connection is always informal and sometimes even not obvious. In addition, there is not and can not be a clear written set of principles of morality and ethics, criteria for categorizing particular phenomena as “contradictory to the public interests.”
Therefore, in each specific case, the examination has to establish for each designation applied for registration whether the mark is overstepping “the bounds of decency.”
The most obvious category of such marks is the designations with the elements of non-normative lexicon. Although such marks can evoke a genuine interest among the consumers, the examination, as a rule, refuses to register them. So, a Novosibirsk company has not been allowed to register trademark “Yoshkin Kot”: Rospatent has considered this expression to be abusive, obscene, having a non-normative lexicon. A Chelyabinsk entrepreneur has failed to register trademark “YADRENA MATRENA” with respect to beer, alcohol and soft beverages. The examination has come to a conclusion, that the designation was a substitute for the more abusive expression “yadrena mat’,” which is often used in the Russian obscene language.
More “harmless” expressions are set phrases filed for registration – vulgar expressions, phraseological units, modified idioms. The legal protection shall be provided for such marks, if they do not evoke negative associations clearly.
The examination can also take into account a continued use of the trademark, including in advertising. This fact will serve to the benefit of providing the legal protection to a trademark. For example, such well-known trademark as “Yolki-Palki” has long been associated with the names of restaurants, and not with vulgar jargon.
The source of problems are often the attempts to register the designations that are not combined by the meaning and/or emotional colour with the list of goods and services. And far from always such cases are due to the lack of diligence when drawing up the list of the application. For example: a life-affirming mark (“Neznaika Collects Friends”) for the services of a funeral house.
Rospatent has also refused to register mark “V Krugu Semyi” for alcohol beverages, because it thought that the registration would contradict to the public interests – by using the reputation of the family values, it could attract the consumers' attention to alcohol.
This article, of course, does not cover all categories of funny, anecdotal and other designations that may encroach on the public interests, principles of humanity and morality. There can be a lot of examples, because the applicants' imagination is boundless, and they have a strong desire to take their place on the market. The practice of Rospatent in this area has developed partly, and it continues to develop in some way. Therefore, studying it is necessary both for the manufacturers of goods and services, and for the specialists in the field of intellectual property: it is interesting and informative both from the professional and from the socio-cultural point of view.
The AO is an appellation of origin, which is, in some way, a unique subject-matter of intellectual property. To begin with, let us briefly consider the provisions of the Russian legislation concerning the registration and operation of the exclusive rights to the AO.
In accordance with Article 1516 of the Civil Code of the Russian Federation, the appellation of origin shall be “... a designation that represents or contains a contemporary or historical, official or unofficial, full or abbreviated name of the country, city or rural settlement, locality, or other geographical object and also a derivative of such appellation which became known as the result of its use with respect to the goods, the special properties of which shall be defined exclusively or mainly by the natural conditions and/or human factors specific for the particular geographical object.” [“The Civil Code of the Russian Federation (Part Four)” of 18.12.2006 No. 230-FZ].
This definition allows identifying the main features of the AO, enshrined in the current Russian legislation:
1. The AO is the name of a geographic object. Any names that would create with the consumer an associative connection with a particular place of the manufacture of the goods can be used as a geographical name. At the same time, “... the designation, although representing or containing the name of a geographical object, but which has come into the public use in the Russian Federation as a designation of the goods of a particular kind not connected with the place of their manufacture shall not be recognized as an appellation of origin” (Clause 2 of Article 1516 of the Civil Code of the Russian Federation). So, designation “Dutch cheese” will not be registered, as it has come into the public use and achieved a dominant position in the Russian market as a trade name of the product.
There is also one exception for this feature: the provisions of the Civil Code relating to the AO “... shall be applied accordingly to a designation that allows to identify the goods as originating from the territory of a particular geographical object and, although it does not contain the name of this object, it has become known as a result of the use of this designation with respect to the goods, the special properties of which meet the requirements specified in the first paragraph of this Clause” (Clause 1 of Article 1516 of Part 2 of the Civil Code of the Russian Federation).
2. The existence of a geographical environment that includes the natural conditions (the climate, soil characteristics, natural raw materials, etc.) and/or the human factors (the special recipes, production technologies, special occupational skills specific to the population of a particular locality).
3. The presence of special properties of the goods. This requirement does not imply any better qualities of a particular product (consumer properties). The product must have exactly unique, special properties (not connected with the quality), and the manufacture of the goods with such properties should be constantly possible for quite a long period.
4. The functional dependence of special properties of the goods on the geographical environment. The goods manufactured within the boundaries of a particular geographic object, but not having the aforesaid special properties, can not be marked with the AO.
5. Popularity. The goods with special properties should be produced for quite a long period within the given geographical object and marked by the AO, thus it should has obtained a certain popularity before filing the application for registration of the appellation of origin.
The exclusive right to the AO can be obtained through its registration with Rospatent – the Federal Executive Authority on Intellectual Property, by filing an application. The exclusive right is valid only on the territory of the Russian Federation. The legal protection of the appellation of origin registered abroad is usually carried out only if there is the legal protection in the country of origin of the goods.
So, if the AO is not registered, at first the application for registration of the AO and for granting the right to use this AO (by one or more individuals or legal entities) shall be filed. In case of a positive decision made as a result of the consideration of this application, the AO shall be registered, it shall be assigned a number, and the applicant (applicants) shall be given a certificate for the right to use this registered AO (the exclusive right shall be granted). Subsequently, such an exclusive right can also be granted to any persons, who manufacture the goods with the same special properties within the boundaries of the same geographical object.
Thus, the holder of the exclusive right to the AO shall not have a “monopoly” to use it (unlike, for example, the right holder of a trademark). He can “separate” the rights of the use with an unlimited number of individuals. He also can not dispose of his rights. That is, the right to the AO shall be inalienable; its holder shall not have the possibility to grant the license to anyone.
The duration of the AO is not limited by any time frames. But the duration of the right of the use of the AO shall be the same as in the case of trademarks, 10 years with the possibility of a subsequent extension. At the same time, in order to extend the duration of the certificate, it is necessary to obtain a repeated grant of the conclusion of the competent authority confirming that the right holder manufactures the goods, whose special properties are determined by the natural conditions and/or human factors, characteristic of a particular geographical object.
When considering the AO, it is necessary to remember that this institution “interacts” with trademarks in a special way. The existence of a certain similarity between the trademark and AO makes it possible to use and register the AO as a part of the trademark, and also in parallel with it. However, such a phenomenon is simultaneously a source of conflicts and restrictions: thus, in accordance with Clause 7 of Article 1483 of the Civil Code of the Russian Federation “...The designations can not be registered as trademarks with respect to any goods, if they are identical or confusingly similar to the application of origin protected in accordance with this Code, as well as to the designation applied for registration as such before the priority date of the trademark ...” In accordance with Clause 3 of Article 1488 of the Civil Code of the Russian Federation, “...The alienation of the exclusive right to a trademark including as a non-protected element an appellation of origin for which the legal protection has been granted within the territory of the Russian Federation shall be allowed only if the recipient has an exclusive right to such an appellation.”. In accordance with Clause 4 of Article 1499 of the Civil Code of the Russian Federation, “The decision on the official registration of a trademark may be revised by the federal executive authority on intellectual property prior to the registration of the trademark in connection with ... the official registration as an appellation of origin of the designation, which is identical or confusingly similar to the trademark indicated in the decision on the registration.”
Regarding the issue of the evolution of institution of the appellation of origin, it is interesting to note that the AO is considered a rather new concept (with many peculiarities). This is added to the fact that since the ancient times primarily the geographic indication of the locality has been used for the designation of goods. This helped to distinguish the products of the same kind manufactured in different states, localities and cities.
This “novelty” can be traced both in the international law and in the foreign legislation. In the Paris Convention of 1979 term “trademark” is used extensively, but there are only indirect indications to the AO [The Paris Convention for the Protection of Industrial Property (amended on October 2, 1979)]. In the world practice there is not even a single term: in addition to “appellation of origin,” terms “geographical indication” (which is somewhat wider by meaning than the AO), “indication of origin,” etc. are used. There are opinions in the scientific literature that the concept “geographical indication,” as an individual, special object, “related” to the AO, with its own special regulation should be introduced in the Russian legislation.
Not in all countries the legal system has a clear concept of the AO as an independent legal institution. And its status as belonging to a particular category of the subject-matters of intellectual property is also different.
All this determines the fact that the AO can be called a very rare subject-matter: the AO comprises only about 5-10% of the designations used for marking the goods (the rest are trademarks). In Russia, there are not so many well-known AO: Gzhel, Vologda Lace, Vologda Butter, Khokhloma, Tula Honey-Cake, Orenburg Downy Shawl, etc.
To increase the importance and availability of the AO for the Russian market is possible in different ways. First of all, we are talking about the improvement of the Russian legislation, which should increase the number of the applications filed, their quality, shorten the terms of their consideration, make processes of the examination of such applications and granting the exclusive rights to the AO as transparent as possible and understandable to the applicants and the rights holders. All this should be accompanied by a simplification of the office work, eliminating unjustified administrative barriers and preventing unfair competition.
In addition, it must be remembered that, with all its relative “underdevelopment,” the institution of the AO is no less essential than other subject-matters of intellectual property: it performs distinctive, informative, advertising functions and identifies the source of the manufacture in both a narrow and a broad word sense. It is used to protect the legitimate rights of the persons concerned; it serves the interests of both the manufacturers and the consumers of the goods. And summing up, we can say that to ensure the effective functioning and development of the market, it is necessary to use actively and improve the mechanisms and institutions stipulated by the legislation, in particular, the institution of the appellation of origin.