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Olga Plyasunova

Olga Plyasunova

Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63

Office: Russia

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 gave the 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 (No 1258) and Eurasian patent attorney (No 63). Olga specializes in:

  • Appellations of origin of goods from 10.12.2008;
  • Trademarks and service marks from 10.12.2008;
  • Industrial designs from 07.12.2021


Olga is fluent in English and is a member of ECTA (2019).

Olga has worked with Zuykov and partners LLC since 2007 and specializes in:

She has 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.


Accomplishments


In 2005 Olga passed the WIPO distance learning course on the program "Fundamentals of intellectual property".


Work experience


  • 1996–2007 — Deputy Chief of Department of examination of applications for trademarks in the Federal Service for intellectual property.



Articles

About collective trademarks
The possibility of registering and protecting a collective trademark exists in most countries around the world. A collective mark not only serves to individualize goods, but can also provide its rights holders with positive competitive advantages, simplifying entry into the market, sales of products, etc.In particular, in addition to the general branding tools used by the copyright holders of conventional trademarks, the use of a collective trademark allows associations of manufacturers to distinguish and individualize their products based on industry, regional or other characteristics.For example, as part of a special WIPO project [1], the collective trademark Bikol was registered in the regional IP office in the Philippines Pili in the name of the Orgullo Association Kan Bicol. The association includes manufacturers of nuts, confectionery, clothing, accessories, cosmetics, essential oils, etc. The products are produced on the basis of long-standing traditional regional practices, and their key unifying feature is that the raw material for them is pili - a tropical tree that grows on the volcanic soil of the Philippines.From an economic point of view, the accumulation of “team” resources under one trademark expands the possibilities of brand promotion and allows increasing the scale of sales of goods, which helps members of the association compete with large firms.Compliance with quality standards for goods and services produced and sold under the same brand is achieved through the establishment of uniform requirements and provisions in the charter of the collective trademark, which makes it possible to monitor compliance with these standards.For example, the Association of Restaurants “Chaikhona No. 1” registered a collective mark of the same name [2], which applies to snack bars, cafes, restaurants, show programs, etc. The charter of the collective mark of this association specifies, among other things: uniform requirements for the design and style of premises in “oriental style”, employee uniforms, music, menu and quality of food, including dishes of traditional “oriental” cuisine , etc. basis.From a legal perspective, the legal framework for collective trademarks allows several individuals to unite under a single brand and use it on an equitable basis. For such situations, this is the only possible mechanism for resolving the issue, since national legislation does not provide for a regime of joint ownership and registration of a trademark in the name of several persons, with the exception of a collective mark.Which trademark is considered collective?The concept of a collective trademark is enshrined in the Civil Code of the Russian Federation [3]. So, from Part 1 of Art. 1511 of the Civil Code of the Russian Federation it follows that a collective trademark is understood as a trademark that has a combination of the following characteristics:the mark is registered by an association of persons, the creation and activities of which do not contradict the legislation of the state in which it was created. As a rule, such an association is presented in the form of a union, federation, association of manufacturers, etc.;the mark is intended to designate goods that have the same quality or other characteristics, which are produced or sold by persons belonging to the association that registered the mark.Any designation can be registered as a collective mark, provided that it meets the requirements specified in the law (Articles 1482, 1483 of the Civil Code of the Russian Federation).How does the legal protection of a collective mark differ from an ordinary one?Legal protection of a collective trademark has the following features, which are regulated by Articles 1510 and 1511 of the Civil Code of the Russian Federation:The composition of copyright holders differs. Thus, if an ordinary trademark can be registered only in the name of one person to individualize his goods, then a collective mark can be registered in the name of several persons who are part of an association. Such a mark will individualize goods with common quality or other characteristics that are produced or sold by persons included in the association;The mode of use differs - the right to a collective trademark belongs to the association for which it is registered, but every person who is part of the association can use the mark;The regime for disposing of an exclusive right is limited, namely, the right to a collective trademark cannot be alienated and provided for use by other persons under a license agreement;A collective mark and an application for a collective mark can be converted, respectively, into a trademark and into an application for a trademark and vice versa (Clause 4 of Article 1511 of the Civil Code of the Russian Federation). The transformation procedure is established by Order of the Ministry of Economic Development of Russia dated September 30, 2015 N 703 [4];In the case of using a collective mark on goods that do not have uniform characteristics of their quality or other common characteristics, the legal protection of the collective mark may be terminated early in whole or in part based on a court decision made at the request of any interested party.How to register a collective trademark in the Russian FederationFor state registration of a collective trademark, you need to pay a state fee and submit the appropriate application and documents to Rospatent. The form and procedure for submitting an application, the composition of documents attached to the application and the requirements for them are approved by Order of the Ministry of Economic Development of Russia dated July 20, 2015 N 482 [5].Just as with the procedure for registering a regular (individual) mark, an application for a collective mark can be submitted in paper form or in electronic form. However, the application must indicate all persons who are members of the relevant association and who will have the right to use the mark.In addition to the standard set of documents, the charter of the collective mark must be attached to the application for registration of a collective trademark. The requirements for the content of the charter are established by Part 1 of Article 1511 of the Civil Code of the Russian Federation and include:the name of the association that is authorized to register a collective trademark in its name (copyright holder);a list of persons who have the right to use the collective mark;purpose of registration of a collective mark;a list of goods in respect of which a collective trademark is registered, indicating their uniform quality characteristics or other general characteristics;conditions for the use of a collective trademark and the procedure for monitoring its use;provisions on liability for violation of the charter of a collective mark.After verifying the payment of the fee, the registration authority conducts a two-stage examination of the application: first, a formal examination, during which it checks the composition of the documents attached to the application and their compliance with the established requirements, and in case of successful completion of the first stage - a substantive examination, where it checks the requirements for the designation, which declared as a collective mark.The procedure and rules for conducting the examination, including the features of the examination of designations applied for registration as collective trademarks, are established by Order of the Federal State Budgetary Institution FIPS dated January 20, 2020 N 12 [6].The final stage of registering a collective trademark is entering registration information into the Rospatent register and issuing a registration certificate.In conclusion, we would like to note that at the moment, a small number of collective trademarks are registered in Russia. This is due not only to the peculiarities of their regulation and use, but also to the difficulties of registration, such as the development of the charter for a collective mark. Despite these difficulties, the use of collective trademarks holds great potential. It is an effective way to commercialize products and services. Moreover, taking into account the specifics of national legislation, registering a collective trademark is the only way to ensure equal rights for all members of an association under one designation.The Zuykov and partners company has extensive experience in trademark registration and will assist with all the challenges associated with the process, including the preparation of necessary documents and the legal support for the procedure.Sources: https://www.wipo.int/collective-marks/ru/news/2022/news_0001.htmlhttps://www1.fips.ru/registers-doc-view/fips_servlet“Civil Code of the Russian Federation (Part Four)” dated December 18, 2006 N 230-FZ (as amended on January 30, 2024) // SPS "ConsultantPlus"Order of the Ministry of Economic Development of Russia dated September 30, 2015 N 703 “On approval of the Procedure for transforming a collective mark into a trademark, service mark and vice versa” // SPS “ConsultantPlus”Order of the Ministry of Economic Development of Russia dated July 20, 2015 N 482 (as amended on March 1, 2023) “On approval of the Rules for the preparation, submission and consideration of documents that are the basis for carrying out legally significant actions for the state registration of trademarks, service marks, collective marks, Requirements for documents contained in the application for state registration of a trademark, service mark, collective mark, and the documents and their forms attached to it, the Procedure for converting an application for state registration of a collective mark into an application for state registration of a trademark, service mark and vice versa, the List of information indicated in the form of a certificate for a trademark (service mark), the form of a certificate for a collective mark, the form of a certificate for a trademark (service mark), the form of a certificate for a collective mark" // SPS "ConsultantPlus"Order of the Federal State Budgetary Institution FIPS dated January 20, 2020 N 12 (as amended on March 25, 2022) “On approval of the Guidelines for the implementation of administrative procedures and actions within the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates" // SPS "ConsultantPlus"
Federal law has approved the procedure for collecting expenses incurred during dispute resolution at Rospatent
According to paragraph 1 of Art. 1248 of the Civil Code of the Russian Federation [1], disputes related to the protection of violated or disputed intellectual rights are considered and resolved by the court. However, in some cases, intellectual rights are subject to administrative (out-of-court) protection. In particular, this procedure is provided for disputes that relate to:with the filing and consideration of applications for patents for inventions, utility models, industrial designs, selection achievements, trademarks, service marks, geographical indications and appellations of origin of goods;with state registration of these results of intellectual activity and means of individualization, with the issuance of relevant title documents;with challenging the provision of these results and means of legal protection or with its termination (clause 2 of Article 1248 of the Civil Code of the Russian Federation).If such disputes arise, you must submit an application to Rospatent, because the court is not authorized to consider disputes that must be resolved administratively and, accordingly, will not accept the application on the basis of the norms of procedural legislation (clause 1, part 1, article 134 of the Code of Civil Procedure of the Russian Federation [2], clause 1, part 1, article 127.1 of the Arbitration Procedure Code of the Russian Federation [3]) and clarifications [4] of Supreme Court of the Russian Federation.However, regardless of the procedure (judicial or administrative) the dispute is considered, the applicant always bears certain costs. He not only pays the fee, but, as a rule, bears costs directly related to the subject of the dispute: he pays for the services of experts, translators, patent attorneys, other persons who provide him with legal assistance, etc.The problem is that when considering a claim in court, a party to the dispute, by virtue of a direct indication of the law, can reimburse its legal costs by collecting them from the losing party, but could not reimburse them when considering a dispute administratively, either as legal expenses or as losses.This is due to the fact that the law did not have rules regulating the grounds, procedure and amount of reimbursement of expenses incurred by the parties to such proceedings. However, last year the Constitutional Court of the Russian Federation recognized [5] that this gap in regulation unjustifiably limits the protection of intellectual property and ordered appropriate changes to be made to the law.As a result, Federal Law No. 4-FZ dated January 30, 2024 “On Amendments to Article 1248 of Part Four of the Civil Code of the Russian Federation” adopted amendments to clause 2 of Art. 1248 of the Civil Code of the Russian Federation, which came into force on February 10, 2024.According to the new rules, the expenses of the party to an administrative dispute in whose favor the decision is made are reimbursed by the losing party in full or in proportion to the volume of satisfied claims. Costs include fees, as well as amounts payable to experts, specialists and translators, reasonable fees for patent attorneys, lawyers and other persons providing legal assistance (representatives), and other expenses incurred in connection with the consideration of the dispute.Time will tell how this change will be implemented in practice.Sources:“Civil Code of the Russian Federation (Part Four)” dated December 18, 2006 N 230-FZ (as amended on January 30, 2024) // SPS “ConsultantPlus”“Civil Procedure Code of the Russian Federation” dated November 14, 2002 N 138-FZ (as amended on December 25, 2023, as amended on January 25, 2024) // SPS “ConsultantPlus”“Arbitration Procedural Code of the Russian Federation” dated July 24, 2002 N 95-FZ (as amended on December 25, 2023, as amended on January 5, 2024) // ATP “ConsultantPlus”clause 52 of the Resolution of the Plenum of the Armed Forces of the Russian Federation dated April 23, 2019 N 10 “On the application of part four of the Civil Code of the Russian Federation” // SPS “ConsultantPlus”Resolution of the Constitutional Court of the Russian Federation dated January 10, 2023 N 1-P
European Parliament agreed on restrictions on artificial intelligence
The end of 2023 was marked by a landmark event for the field of artificial intelligence - in December, the European Parliament agreed on a law defining the boundaries of the use of relevant technologies. To date, this is the largest attempt to take control and regulate relations in the relevant area.It is interesting to note that the first version of the bill on AI regulation was developed in the European Parliament back in 2021. It summed up the result of three years of cooperation between EU legislators and the world's leading experts in this field. This version of the bill was presented as a global model for the treatment of technology - it was assumed that the general provisions of the law on artificial intelligence would cover not only existing but also all possible technologies that may appear in the future. However, ChatGPT technology soon appeared on the world stage, which was dubbed a global sensation (for more details, see the article “ChatGPT Artificial Intelligence – a Tool of the Future or a Threat to Copyright”). This technology revealed the bill’s “blind spots” and highlighted new challenges.“We will always lag behind the speed of technology development,” one of the members of the European Parliament who participated in the preparation of the bill noted in this regard. As a result, it took about two years to finalize the law taking into account new realities.However, the problem of regulating the field of AI lies not only in the speed of technology development, but in the fears of leading states and associations of losing leadership in the global race for technological breakthroughs. The dilemma is that, on the one hand, national legislative restrictions can delay the development of AI technologies, which are expected to have neither more nor less, but the ability to radically change the existing system of economic and social relationships in society. On the other hand, the use of AI technologies already at the current stage has revealed many significant risks, including copyright violations, deepfakes, violations in the use of personal data; they shook the educational and scientific spheres of activity, etc. In addition, it is predicted that the development of technology can lead to mass unemployment in certain areas of activity, unfair competition, including not only economic, but also electoral processes, including the impact on the outcome of political elections and voter behavior.Having joined the technological race, the developers of AI systems themselves faced problems. First of all, they affected such IT giants as Microsoft and Google, which have financial and technical resources, as well as access to a huge amount of data (big data), necessary for the development of AI technologies. Moreover, the problems affected not only the moral and ethical side, but also the legal sphere, which in turn resulted in an avalanche of claims with multi-million dollar claims. This has led to the need to rethink the value of AI technologies from the standpoint of the relationship between their advantages and objectively existing and potential risks.At the same time, despite statements by IT corporations about reducing the volume and suspending the release of new technologies, as well as about voluntarily accepted obligations to focus on the development of responsible and safe AI, many states have begun to take measures aimed at controlling the use of AI technologies. Both advisory and restrictive measures were used (Japan, USA, China), as well as and direct targeted bans (for example, a ban on the use of ChatGPT in Italy).In the legal sphere, the key problem is the discrepancy between the current regulatory regulation of intellectual property relations and objective reality, which is based on the corresponding technological breakthroughs. Thus, problems in the field of intellectual property law have already affected both its general provisions and special rules for key groups of objects. In particular, issues related to the patenting of “synthetic” inventions and other objects of industrial property created with the help of AI systems are gaining relevance (for more details, see the article “On the problems of patent protection of inventions created by artificial intelligence”).The problem in the field of copyright is even more acute, especially in terms of protection by copyright holders of “input data” - materials that are used by technology companies to train neural networks and generate “synthetic” content (for more details, see the article "On the problem of training generative neural networks on objects protected by copyright"). Social media owners (Reddit and Twitter), news organizations, publishers, writers, artists and other copyright holders are bringing both individual and class action lawsuits against companies that develop AI systems.At the end of December 2023, the American media giant New York The Times has filed a lawsuit against technology companies OpenAI and Microsoft for copyright infringement. According to the plaintiff, the defendants illegally used millions of published articles, the copyrights of which belong to the plaintiff, to train chatbots. In addition to seeking actual damages, the New York Times wants to prevent chatbots from further using its content, citing unfair competition in the news industry and resulting loss of profits due to reduced traffic. In turn, OpenAI considers this claim to be groundless, and the use of open materials as fair use. Some of the problems associated with the use of “input data” are eliminated by concluding appropriate partnership agreements. Technology companies, including OpenAI, are calling on rights holders to collaborate on mutually beneficial opportunities based on the transformative potential of AI technologies and the new revenue models associated with it. However, it is obvious that in the absence of basic legislative regulation of the relevant area, this approach is a half-measure: as a rule, the competitive advantage is on the side of the former, and the process of agreeing on the terms of the transaction can drag on for a long time and ultimately fail to produce the desired results. For example, the New York Times and OpenAI initially tried to agree on cooperation, but the negotiation process was interrupted by filing a lawsuit. Given that the uncertainty of the situation and the “fair use” doctrine applied in the United States, in the absence of regulatory guidelines, does not provide reliable guarantees of protection for any of the interested parties.In this regard, the adoption of the law on artificial intelligence by the European Union seems to be a landmark event, guiding the development of revolutionary technologies in a reliable and environmental direction. According to the European Parliament press office, the law simultaneously protects against the use of high-risk AI, aims to stimulate innovation, making Europe a leader in this area, and also sets obligations for AI systems depending on their potential risks and level of impact.In particular, when developing and using AI technologies, the law generally establishes a number of prohibitions. For example, such as:a ban on the use of biometric systems for categorizing people based on political, religious, philosophical beliefs, sexual orientation and race;a ban on the inappropriate collection of images of faces from the Internet or recordings from CCTV cameras to create facial recognition databases (except for use for security purposes, preventing the threat of terrorism, etc.);prohibition of AI systems that manipulate human behavior, exploit their vulnerabilities due to age, disability, social or economic status, etc., recognize emotions in the workplace and in educational institutions (except for medical or security reasons, e.g. , monitoring the level of pilot fatigue), etc.At the same time, companies developing AI with a high potential risk for people and society (for example, if the technology can cause harm during hiring or training, etc.) will have to conduct a preliminary assessment of the compliance of AI models, assess and reduce systemic risks, conduct adversarial testing and report to the regulator.General purpose AI systems (including ChatGPT) and the models they are based on have transparency requirements that include:compilation technical documentation;compliance with EU copyright law;distributing detailed summaries of the content (“input”) that is used to train the AI system.In addition, the law provides for:certain measures to support small and medium-sized businesses involved in the development of AI systems;penalties for failure to comply with regulatory requirements, the amount of which will be incl. determined depending on the violation, the size of the violating company, etc.European parliamentarians are calling the AI law a deal on comprehensive rules for trustworthy AI that will have a significant impact on the digital future of the European Union. However, experts in the relevant field note that in addition to official approval, the new law still has a long and thorny road ahead.
Registration of color trademarks
By virtue of Art. 1482 of the Civil Code of the Russian Federation [1], the list of types of designations that can be registered as a trademark is open. In particular, in addition to traditional verbal, pictorial, three-dimensional designations or a combination thereof, a trademark can be registered in any color or color combination.The legislator does not directly indicate, but does not exclude the possibility of registering a color directly as a trademark. At the same time, this possibility follows from the methodological recommendations [2] of Rospatent, which provide the concept and features of registration of color trademarks.Thus, a color trademark refers to one specific color as such or a combination of colors. In an application for registration of a color designation, the color is accompanied by a color code from an international color classification system, such as the Pantone system Matching System [3]. In this case, it should be clear that the claimed designation is precisely a color or a combination of colors, and not a figurative designation, for example, an image of a square of a certain color.It is believed that color has a strong emotional impact on the consumer at the physiological, cultural and associative level [4]. According to marketing surveys and research, 62 - 90% of a consumer's initial judgment about a product is based on color, 52% of consumers believe that packaging color is an indicator of quality, color increases brand awareness by up to 80% [5]. In this regard, it is noted that the color of a product, packaging or material for promotion on the market, in addition to aesthetic properties, is often a decisive factor in distinguishing the goods and services of one manufacturer from another [6]. Obviously, these color properties arouse the interest of entrepreneurs in registering the corresponding non-traditional designation.At the same time, the share of registered color trademarks in relation to traditional marks remains negligibly small. This situation is typical not only for marks registered under the international system, but also for national registration systems. For example, the number of color trademarks registered in Russia today can be counted on one hand.In particular, the following domestic companies have a certificate of registration of a color trademark:In addition to national organizations, foreign companies also have a certificate of registration of color trademarks in Russia. In particular, the Dutch company Reckitt Benkaiser N.V., owner of the well-known brand “Vanish” (washing powders, stain removers and bleaches). Tiffany and Company (USA), a world-famous manufacturer of jewelry, costume jewelry, etc., also has a certificate of registration of the color mark.The insignificance of the number of registered color trademarks is due to the fact that the color designation, like most non-traditional designations, initially has a presumption of lack of distinctiveness. In practice, the procedure for registering color designations as a trademark is quite complex and takes a long time. For example, it took Sberbank of Russia PJSC about three years to register its corporate green color as a trademark.The main feature of the registration procedure is that the applicant usually needs to prove that the color designation has acquired distinctiveness as a result of its use, and the specific color, before the date of filing the application, was perceived by the consumer as a designation intended to individualize the goods of a particular manufacturer. In this regard, it is obvious that the chance to register a color trademark directly depends on the extent of the manufacturing company’s popularity in the product market and its corporate “color style.”First of all, the length of the registration procedure is due to the complexity of the examination, which is carried out to establish the protectability of a color designation, as well as the difficulties of proving its distinctive ability.An approximate list of documents that can be used to establish whether a color designation has a distinctive ability is given in the methodological recommendations mentioned above. These include, in particular:documents on transactions proving the significance of the volume of production and sale of goods/services, the territorial coverage of their implementation and the duration of use of the designation for marking the declared goods/services;materials of advertising campaigns in which the appropriate color designation is used (publications in the media, advertising on television, etc.);sociological surveys and studies confirming the strong associative connection of color with a specific list of goods/services from a particular manufacturer.However, practice shows that even providing the entire set of these and other documents does not guarantee a positive result. For example, Rospatent refused to register the purple color Pantone 248 C [7] for the manufacturer of cat food Whiskas (Mars, Incorporated) under application No. 2016715482. The refusal was motivated by the fact that color itself does not have distinctiveness and it has not been proven that it acquired it as a result of intensive and long-term use as an independent means of individualizing the goods in question.In addition, Rospatent noted that all the designations previously used by the applicant had, in addition to color, verbal or figurative elements used on the packaging, and that the acquired distinctiveness applies to such designations in general. The Intellectual Rights Court, in its decision dated May 21, 2019 in case No. SIP-836/2018, supported the position of Rospatent.They refused to register the color designation and the Wildberries marketplace under application No. 2020724011 [8]. Rospatent and the Intellectual Rights Court, which supported it, in a decision dated September 15, 2022 in case No. SIP-512/2022, also pointed out the lack of proof of the distinctive ability of the declared color and noted that color is a characteristic of a certain object, and not the object itself.Also, the Ozon marketplace (applicant: Internet Solutions LLC, application N 2023778241 [9]) applied to Rospatent for registration of a color trademark (combination of blue and pink colors).Let's see how events develop. After all, as experts in the relevant field note, each fact of registration of a color trademark is considered unique and deserves special attention, because it can have an impact on law enforcement practice.Sources:Civil Code of the Russian Federation (Part Four)” dated December 18, 2006 N 230-FZ (as amended on June 13, 2023)Order of the Federal State Budgetary Institution FIPS dated January 20, 2020 N 12 (as amended on March 25, 2022) “On approval of the Guidelines for the implementation of administrative procedures and actions within the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates"Pantone color model , PMS system (Pantone Matching System) is a standardized color matching system developed by the American company Pantone Inc. in 1963 // https://ru.wikipedia.org/wiki/PantoneKarliev R.A. Problems of registration of non-traditional trademarks // IS. Industrial property. 2017. N 11. P. 23 - 32; N 12. P. 27 - 36.https://thehustle.co/can-a-corporation-trademark-a-color/ German P.V. Legal protection of “non-traditional” trademarks in the Russian Federation and in the countries of the European Union: dissertation for the academic degree of Ph.D. n. M., 2007.https://www1.fips.ru/registers-doc-view/fips_servlethttps://www1.fips.ru/registers-doc-view/fips_servlethttps://www1.fips.ru/registers-doc-view/fips_servlet?DB=RUTMAP&DocNumber=2023778241&TypeFile=htmlSasina M.A. Monopoly on color. Color trademark // http://ipcmagazine.ru/yaa/color-monopoly-color-trademark
Peculiarities of trademark registration in China
In 2001, Russia and China signed an agreement on good neighborliness, friendship and cooperation between the Russian Federation and the People's Republic of China [1] (hereinafter referred to as the Agreement). The Parties to the Treaty assumed obligations on the basis of mutual benefit to develop cooperation in trade, economic and other areas, to ensure the protection of intellectual property in accordance with their national legislation and international treaties to which they are parties, etc. (Article 16 of the Treaty).In the years following the entry into force of the Treaty, both states comprehensively contributed to the implementation of their obligations, establishing and expanding strategic partnership, which has become even more relevant in the current political and economic situation.In particular, at present, one of the promising areas of bilateral cooperation is the trade sector, an important element of which is the ways of individualizing the goods of economic entities.In China, the main national source of regulation of relations in this area is the Trademark Law of the People's Republic of China, adopted on August 23, 1982 (as amended on April 23, 2019) [2] (hereinafter referred to as the Trademark Law). In addition, China became a member of the Paris Convention for the Protection of Industrial Property in 1985, ratified [3] the Madrid Agreement Concerning the International Registration of Marks [4] in 1989 [5], and its Protocol in 1995 [6].Thus, there are two trademark registration systems in China - national and international under the Madrid system, when compared, there are both disadvantages and advantages. In particular, the disadvantages of international registration include the need to go through a certain procedure in China with local authorities in order to recognize an international trademark [7], operation and use in China of its own system of subclasses of goods and services, which differs from the international Nice system of classification [8], etc.In this regard, in order to maximize the protection of their commercial interests in China, experts advise choosing a national trademark registration system. At the same time, it is recommended to take care of the registration of the mark before starting commercial activity, because. In China, the principle of "priority filing" is applied, according to which the acquisition of the exclusive right to a trademark depends on the registration of the mark, without regard to its previous use by others.A national trademark application is filed with the China National Intellectual Property Administration ( CNIPA ), which also has an electronic filing system. The application and accompanying documentation are submitted in Chinese, but if the application is accompanied by a document in a foreign language, then in most cases it must be accompanied by a notarized translation.China does not restrict the subject composition of the holders of the exclusive right to a trademark, and not only organizations, but also individuals can apply for its registration (Article 4 of the Trademark Law). However, by virtue of Art. 18 of the Law on Trademarks, foreign individuals and legal entities are not entitled to independently file applications, but must entrust the filing and management of cases related to the registration of a mark to an official specialized trademark agency (patent attorney).A foreigner or a foreign enterprise in relation to Art. 18 of the Trademark Law means a foreigner or a foreign enterprise that does not have a permanent residence or representative office in China (Article 5 of the Trademark Law Enforcement Regulation [9]). However, as clarified by CNIPA [10], a wholly owned subsidiary of a foreign enterprise established in China in accordance with national law is a Chinese enterprise, and not a location of a foreign company in China. A local office or representative office in China established by law by a foreign company is not the location of the foreign company in China.The Trademark Law establishes a rather extensive list of cases when a designation is not subject to registration as a trademark. For example, imperative restrictions apply to designations that are identical or similar to the names or symbols of states, international intergovernmental organizations, including their abbreviations, to designations that are contrary to the norms of morality, socialist ethics, may cause damage to religious beliefs and feelings, etc. (Article 10 of the Trademark Law). In turn, dispositive restrictions refer to cases where the designation does not initially have a distinctive character, for example, when it reflects only the function, consumer properties or other characteristics of the use of the product, etc. However, a designation with similar characteristics may be registered as a trademark if it has acquired distinctive features as a result of use and is easily distinguishable (Article 11 of the Trademark Law). This is in line with Art. 9 of the Trademark Law that the designation submitted for registration as a trademark must have conspicuous characteristics, be easily distinguishable and not conflict with the legal rights of third parties.As a general rule, any designations may be registered as trademarks, including words, graphics, letters, numbers, sounds, three-dimensional (three-dimensional) symbols, color combinations, or any combination of them that can distinguish the goods of an individual, legal entity or other organizations from the goods of other persons (Article 8 of the Trademark Law).It is interesting to note that, unlike Russia, in China since 2014 registration of a sound designation as a trademark is allowed. In this case, you must provide a qualified sound sample and description of the sound, as well as indicate how the sound designation is used as a trademark. The description of a sound trademark uses musical notations or numbered notations of sound in combination with notes in words; if a sound cannot be described by musical notation or numbered notation, it must be described in words; the description of the trademark must correspond to the sound pattern (clause 5, article 13 of the Regulation on the Application of the Law on Trademarks).As with traditional signs, a general requirement applies to audio trademarks that signs that directly represent the content, target consumer, quality or function of a product (service) do not have distinctive features. Thus, for example, barks or meows used in pet-related goods or services are not distinctive, but serve as a prime example of the utilitarian functionality of sound [11]. In this regard, the registration of a sound as a trademark presents significant difficulties, primarily related to proving its distinctive features and identification ability in relation to goods (services) of other persons.Registration of a trademark under the national system provides the owner of the mark with the exclusive right to the registered trademark for a period of 10 years, which is calculated from the date of registration of the trademark. In addition, the law provides the possibility of an unlimited prolongation of the validity of an exclusive right for the same period. At the same time, the renewal is not automatic, but is initiated by the applicant by submitting an appropriate application, otherwise the registered trademark is canceled (Articles 39, 40 of the Trademark Law).In conclusion, according to the WIPO 2022 report [12], the Chinese office accounted for more than half (55.6%) of all registered trademarks in 2021, which included about 7.8 million classes.These data confirm that China is rightfully considered one of the most economically developing countries in the world and is of significant interest for international economic partnership, including in the trade sphere.Sources:1.“Treaty on Good-Neighbourliness, Friendship and Cooperation between the Russian Federation and the People's Republic of China” (signed in Moscow on July 16, 2001, ratified by Russia on January 25, 2002) // ATP "ConsultantPlus"2.https://www.wipo.int/wipolex/ru/legislation/details/19559 (Accessed 08/19/2023)3."Convention for the Protection of Industrial Property" (concluded in Paris on March 20, 1883) (as amended on October 2, 1979) // ATP "Consultant Plus" // ATP "ConsultantPlus"4.“Agreement Concerning the International Registration of Marks” (concluded in Madrid on April 14, 1891) (as amended on October 2, 1979) // ConsultantPlus ATP5.https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/madrid_marks.pdf (Accessed 08/19/2023)6."Protocol to the Madrid Agreement Concerning the International Registration of Marks" (signed in Madrid on 06/28/1989) // ATP "ConsultantPlus"7.Carlo Diego D'Andrea, A Practical Guide to Intellectual Property Law in China // https://rusconshanghai.mid.ru/upload/iblock/fd7/59uprja42lzo0v0wtzb5ckhgvtr9x9ms.pdf (Accessed 08/19/2023)8.“Agreement on the International Classification of Goods and Services for the Registration of Marks” (concluded in Nice on 06/15/1957, as amended on 09/28/1979) // ATP ConsultantPlus9.Regulations on the Application of the Trademark Law of the People's Republic of China (Promulgated on 08/3/2002, Revised on 29 April 2014) // https://www.wipo.int/wipolex/ru/text/425591 (Accessed 08/19/2002) .2023)10.https :// english . cnipa . gov . cn / col / col 2996/ index . html (accessed 08/19/2023)11.Xia Sara. Trademarking a Sound in China, 2021 // URL: https://harrisbricken.com/chinalawblog/trademarking-a-sound-in-china/ (Accessed 08/19/2023)12.World Intellectual Property Indicators 2022 edition // https://www.wipo.int/edocs/pubdocs/en/wipo-pub-941-2022-en-world-intellectual-property-indicators-2022.pdf
On the registration of trademarks by citizens
On June 29, 2023, amendments to the Civil Code of the Russian Federation came into force [1], which removed restrictions on entities that have the right to apply for trademark registration. In particular, the legislator replaced in paragraph 1 of Art. 1492 of the Civil Code of the Russian Federation the words "individual entrepreneur" with the word "citizen", and Art. 1478 of the Civil Code of the Russian Federation recognized as invalid [2].By virtue of these changes, citizens have been given the opportunity to register trademarks, as well as to possess and dispose of the exclusive right to them, regardless of whether they have the status of an individual entrepreneur.The imperative requirement specified in the last edition of Art. 1478 of the Civil Code of the Russian Federation that only legal entities and individual entrepreneurs can have the exclusive right to a trademark has been the subject of controversy for a long time, incl. judicial.The main argument in favor of lifting restrictions on the range of subjects was the need to ensure equality of participants in civil circulation, in particular, with respect to foreign citizens. So, in the national legislation of many countries (for example, Austria, Germany, China, USA), as well as in the European Union, registration of a trademark by an individual is allowed. In addition, such registration is possible under the Madrid system in accordance with the Agreement on the international registration of marks [3]. In this regard, Russian applicants are discriminated against persons who claim that the legal protection of trademarks on the territory of the Russian Federation under international registration is extended and can receive protection.In turn, the need for restrictions was motivated by the fact that a trademark is used to individualize goods (Article 1477 of the Civil Code of the Russian Federation) and, accordingly, is intended for use in business activities. At the same time, as a general rule, a citizen can engage in such activities from the moment of state registration as an individual entrepreneur (clause 1, article 23 of the Civil Code of the Russian Federation). Thus, a citizen cannot be interested in owning a trademark if he does not intend to use it for commercial purposes.However, the adoption of Federal Law No. 422-FZ of November 27, 2018 “On Conducting an Experiment to Establish a Special Tax Regime “Tax on Professional Income” allowed citizens of certain constituent entities of the Russian Federation to conduct activities whose income is subject to tax on professional income, without state registration as individual entrepreneurs (part 6 of article 2 of Law N 422-FZ).Thus, the restriction established in Art. 1478 of the Civil Code of the Russian Federation, came into conflict with paragraph 1 of Art. 2 of the Civil Code of the Russian Federation, which guarantees the equality of participants in civil transactions, as well as the grounds for the emergence and procedure for exercising rights to the results of intellectual activity and equated means of individualization (intellectual rights), which prompted the legislator to change the approach to regulation [4].It is interesting to note that these amendments to the Civil Code of the Russian Federation removed restrictions not only for the self-employed, but also for citizens who do not have any entrepreneurial status. Time will tell how these changes will be implemented in practice.Sources:1."Civil Code of the Russian Federation (Part Four)" dated 12/18/2006 N 230-FZ (as amended on 06/13/2023) (as amended and supplemented, entered into force on 06/29/2023) // SPS "ConsultantPlus"2.Federal Law of June 28, 2022 N 193-FZ "On Amendments to Part Four of the Civil Code of the Russian Federation" // ATP "ConsultantPlus"3."Agreement Concerning the International Registration of Marks" (Concluded in Madrid on April 14, 1891) (as amended on October 2, 1979) // ATP "ConsultantPlus"4.Explanatory note in the draft Federal Law N 63528-8 "On Amendments to Part Four of the Civil Code of the Russian Federation (in terms of expanding the circle of trademark holders)"
Role of generalized approaches of Rospatent in litigation related to similarity of designations
According to paragraph 10 of Art. 1483 of the Civil Code of the Russian Federation [1] cannot be registered as trademarks in relation to homogeneous goods designations, the elements of which are means of individualization of other persons protected in accordance with the Civil Code of the Russian Federation, similar to them to the degree of confusion.The similarity of the compared designations and the likelihood of their confusion in civil circulation is determined by the registration authority in accordance with the methodology established in the relevant Rules [2] and Guidelines [3], which consolidates the generalized approaches of Rospatent in order to ensure a uniform practice of examination.The courts [4] use such generalizing materials of Rospatent to compare the legal position in a particular case with the position that this body considers to be a cut of its uniform practice, and in case of a divergence of the position in a particular case from the generalized position, to check whether there are motives for changing the approach of the administrative body.Obviously, the unmotivated discrepancy between the decisions of Rospatent and the indicated methodological approaches leads to litigation, in which the courts, recognizing such decisions as invalid, note, among other things, that Rospatent does not take into account its own practice.In particular, a deviation from the methodology occurs when comparing combined notation. According to the Rospatent Guidelines (clause 7.1.2.4.), combined designations are compared with combined designations, as well as with those types of designations that are part of the combined designation being checked as elements.To determine similarity, compared designations must be considered as a whole, i.e. the overall visual impression that these designations make on the average consumer of the relevant goods or services is assessed [5].At the same time, in the case of comparing similar elements of the compared designations, their location in the designation is taken into account, that is, it is determined whether similar elements are dominant, whether they occupy a central place in the overall composition of the designation, etc.The IP Court has repeatedly noted [6] that in the case of establishing strong (dominant) and weak elements in a combined designation consisting of a figurative and verbal element, the main element, as a rule, is a verbal element, because it is easier to remember than the pictorial one and it is on it that the consumer’s attention is focused when perceiving the designation. At the same time, only a reference to the presence of a figurative element in a combined designation or a reference to the absence of a distinctive ability of parts of a verbal element is clearly not enough to assess the individualizing ability of a verbal element as low compared to a figurative element.Thus, if the approach of Rospatent in determining the dominant element is based on the position of the insignificance of the individualizing function of the verbal element in the controversial combined designation, such a position cannot simply be stated, but requires appropriate justification. Otherwise, there is a risk of recognizing such a decision of the registration authority as illegal due to a violation of the methodology for comparing symbols.Thus, in case No. SIP-443/2022 [7], the court invalidated the decision of Rospatent, adopted as a result of consideration of the company's objection to the refusal to state registration of a combined trademark. According to Rospatent, which recognized the dominant pictorial element, the verbal element has a weak distinctive function, because is a compound word composed of two generally accepted abbreviations (abbreviations) logically separated in it that do not have a distinctive ability. However, the Court noted that simply referring to the lack of distinctiveness of parts of a word element is clearly not enough to assess the position in the designation of a word element, since elements made in the form of a single word are subject to evaluation without division into component parts. In this case, Rospatent did not take into account its own methodological approaches to assessing the dominant element, according to which the verbal element of the designation, made in a larger font, occupying the central place from which the examination of the designation begins, is recognized as dominant, unless otherwise specified.Thus, when determining the similarity of designations, it is necessary to take into account, among other things, the generalized practice of the administrative body, and in case of a different position, it is necessary to motivate its divergence from the basic (generalized) approaches.Sources:1."Civil Code of the Russian Federation (Part Four)" dated December 18, 2006 N 230-FZ (as amended on December 5, 2022) // ConsultantPlus SPS2.Rules for the preparation, submission and consideration of documents that are the basis for the performance of legally significant actions for the state registration of trademarks, service marks, collective marks, approved. Order of the Ministry of Economic Development of Russia dated July 20, 2015 N 482 (as amended on November 23, 2020) // SPS "ConsultantPlus"3.Guidelines for the implementation of administrative procedures and actions in the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates, approved. Order of FGBU FIPS dated 01/20/2020 N 12 (as amended on 03/25/2022) // SPS ConsultantPlus4.See, for example, the Resolution of the Presidium of the SIP dated 01/24/2022 N С01-2195/2021 in case N SIP-762/2021, the decision of the SIP dated 10/18/2022 in case N SIP-443/2022 // ConsultantPlus SPS5.P.37 of the Review of judicial practice in cases related to the resolution of disputes on the protection of intellectual property rights, approved. Presidium of the Supreme Court of the Russian Federation 23.09.2015 // SPS "ConsultantPlus"6.See, for example, Decision of the Presidium of the SIP dated 07.06.2021 N C01-345/2021 in case No. SIP-476/2020, Decision of the SIP dated 27.02.2023 in case No. SIP-858/2022, Decision of the SIP dated 16.02.2023 in the case N SIP-966/2022, Decision of the Court for Intellectual Property Rights dated February 9, 2023 in case N SIP-816/2022 // ConsultantPlus SPS7.Decision of the Intellectual Property Rights Court dated 10/18/2022 in case No. SIP-443/2022 // ConsultantPlus SPS
ChatGPT – tool of the future or threat to copyright
In the past few years, the issue of the relationship between copyright and the results of intellectual activity generated by artificial intelligence has gained significant relevance, but mainly remained in the field of theoretical research. The development of artificial intelligence is defined as a serious challenge for the law in general and for intellectual property law in particular. It is expected that this could seriously change the copyright system, as among other legal issues, it is not clear how to qualify works of science, literature and art that are created using machine learning technologies and neural networks [1].The problem quickly broke out of academic circles into practice when OpenAI developed and released ChatGPT (generative pre-trained transformer), the latest models of which allow you to create new levels of synthetic content. In particular, ChatGPT, using data from the Internet, is "trained" to generate text based on statistical data and patterns that it finds in large volumes of other texts. In addition, in the latest version of the neural network (ChatGPT-4) it is possible to process not only text, but also interact with images, audio and video content.The infiltration of synthetic content into scientific literature has led some scientific journals to change editorial policies. For example, the journal Science published on its website a rule that text generated using artificial intelligence, machine learning or similar algorithmic tools cannot be used in articles published in scientific journals. In addition, the program cannot be the author of a scientific article. Violation of this policy constitutes misconduct.Science.orgIn Russia, the news about how a student of one of the domestic universities created a thesis in 23 hours with the direct participation of the ChatGPT neural network caused a wide resonance.Cnews.ruAt the moment, the Internet is replete with offers and stories about cases of this or that use of the capabilities of a neural network, the number of offers (issues for a search query) is increasing every day. It is already obvious that artificial intelligence is not a fleeting mainstream, but a tool of the future that can change the existing system of social relationships.In terms of legal prerequisites, the problem is that, by virtue of the current wording of Art. 1257 of the Civil Code of the Russian Federation [2], the author of a work of science, literature or art can only be an individual - a citizen whose creative work it was created, and ChatGPT is trained to create works that are very difficult to distinguish from similar works created by a person's creative work. In addition, text generation does not mean copying it (and the program creates exactly generative content), i.e. from the point of view of the form, the result is assumed to be "author's" and unique. This means that the issue of direct plagiarism is virtually eliminated. Thus, formally, the creation of synthetic content does not violate the basic principles of copyright.Another problem is related to the fact that in the learning process, the neural network uses the so-called input data - the results of intellectual activity, which, as a rule, have copyright holders. But since copyright protects the objective form of the work, in this case it cannot be said that existing legal norms were violated when creating synthetic content.In addition to the above, the use of the controversial technology has caused other problems (for example, in terms of personal data), which leads to attempts to ban it (for example, blocking / limiting the use of the controversial neural network in Italy). In addition, tools are being created to identify texts created using artificial intelligence. However, it is logical to assume that further improvement of ChatGPT models, including the ability to self-learn, will make it easy to bypass such barriers, which will eventually lead to an endless race in circles.Skillbox MediaGiven the opportunities and widespread demand for the controversial generative technology, it seems that the most acceptable response to the challenge will be to recognize the fact that in the future a significant part of human creativity will be directly related to the participation of such technologies. At the same time, the recognition of this fact will inevitably require an early adjustment of regulatory norms in the field of intellectual property law.In particular, in the field of copyright, the following basic questions can be identified that need to be answered:Can a work created in whole or in part with the help of artificial intelligence be considered the result of intellectual activity (an object of copyright or related rights);Who owns the rights to a work created using artificial intelligence and to what extent: the query operator (the user who set the corresponding task for the program), the owner of the rights to the program with which the synthetic work was created, the owners of the input data (right holders whose works were used for algorithm training and generation), etc.In conclusion, a balanced approach to the use and regulation of artificial intelligence will bring much more benefits than trying to turn a blind eye to relevant technological breakthroughs. After all, as science fiction writer William Gibson said: “The future is already here. It's just that it's not evenly distributed yet.”Sources:1.Gurko A. Artificial intelligence and copyright: a look into the future // IS. Copyright and related rights. 2017. N 12. S. 7 - 18.2.Civil Code of the Russian Federation (Part Four) dated December 18, 2006 N 230-FZ (as amended on 12/05/2022) // SPS "ConsultantPlus"
Registration issues of trademarks incorporating official symbols
From time to time, objects that are part of the official symbols are included in trademarks - accidentally or intentionally, in order to attract the attention of consumers.In accordance with Art. 1231.1 of the Civil Code of the Russian Federation [1], objects that include, reproduce or imitate official symbols, names and distinctive signs (or their recognizable parts) cannot be registered as a trademark, namely:state symbols and signs (flags, emblems, orders, banknotes, etc.);names of international and intergovernmental organizations (including abbreviations), their flags, emblems, other symbols and signs;official control, guarantee or hallmarks, seals, awards and other insignia.Such objects, their recognizable parts or imitations may be included in a trademark as an unprotected element, if there is the consent of the relevant competent state body, body of an international or intergovernmental organization.It is interesting to follow in practice, the consent of which particular subjects Rospatent accepts as appropriate. Here are some examples:for the registration of a trademark АТФ, the consent of the Heraldic Council under the President of the Russian Federation - the State King of Arms was required, since the designation contained the Russian flag [2];in order to register a trademark RUOPT.COM, including the designation of the ruble, it was necessary to provide the consent of the Central Bank of the Russian Federation [3];the consent of the Green and Red Cross, respectively, was required for the registration of the designations ЕВРОМЕД КЛИНИКА [4] and ADОННИС [5];the registration of the designation OLIMP LABS was granted the consent of the International Olympic Committee [6].Cases in which the decision of Rospatent containing the assessment of the designation in accordance with Art. 1231.1 of the Civil Code of the Russian Federation, are not numerous, but are of practical interest.For example, in cases of 2022 N SIP-1079/2021 and N SIP-1080/2021 [7], trademarks РБ N 777957 and РБ Рейтинг Букмекеров N 668247 were registered in the name of the LLC, but their registration was challenged under paragraph 2 of Art. 1483 of the Civil Code of the Russian Federation (registration of designations that relate to objects not subject to legal protection in accordance with Article 1231.1 of the Civil Code of the Russian Federation) - but Rospatent refused to satisfy the objections. This served as the basis for the applicant's appeal to the Court for Intellectual Property Rights.The main argument of the applicant was the following: the letter combination "RB" is used as an abbreviation for the name of the subject of the Russian Federation - the Republic of Bashkortostan, in connection with which the registration of the element "RB" of the disputed trademark contradicts paragraph 2 Art. 1483 of the Civil Code of the Russian Federation.However, the IP Court, like Rospatent, considered that the letter combination "RB" could act as an abbreviation for various designations, including such as the Republic of Bulgaria, the Republic of Belarus, the Republic of Bashkortostan, the Republic of Buryatia, etc. At the same time, the unambiguous perception of the specified letter combination as “Republic of Bashkortostan” has not been proven, therefore, the grounds for concluding that the registration of the letter combination “RB” does not comply with the provisions of paragraph 2 Art. 1483 of the Civil Code of the Russian Federation are absent.Moreover, the court noted the absence of the applicant's interest in challenging the granting of legal protection to the trademark on the basis of the norm under consideration. The IP Court pointed out that, if signs, including official symbols, names and distinctive signs, are registered as a trademark, then the person interested in challenging the granting of legal protection to the trademark may be the relevant competent state body, body of an international and intergovernmental organization, while as the applicant did not have such a status.Also interesting is the practice in which the Chamber for Patent Disputes evaluated the designation differently than Rospatent during the examination process, and recognized registration as possible, refuting the inconsistency of Art. 1231.1 of the Civil Code of the Russian Federation.For example [8], the designation IPEK was recognized by Rospatent as similar to the official emblem of APEC (eng. Asia-Pacific Economic Cooperation), however, the failed copyright holder objected, citing the lack similarities.The Board of the Chamber noted that APEC trademarks are indeed protected designations, but the difference in sound in the initial part of the designations is a significant factor due to the small length of words; at the same time, the word element "Ipek" is fantasy and is not associated with the designation APEC in a semantic sense. The board also pointed out the difference in the overall visual impression.As a result, the Board of the Chamber considered that the designation could not be considered as inconsistent with Art. 1231.1 of the Civil Code of the Russian Federation and canceled the decision of Rospatent.In the case on the designation MOCEUTICALS [9] Rospatent also refused to register on the basis of paragraph 2 Art. 1483 of the Civil Code of the Russian Federation due to the fact that the pictorial element in the form of a red cross is confusingly similar to the official emblem of the International Committee of the Red Cross, and the applicant did not provide the consent of the relevant competent authority.In the objection, the applicant referred to his own request to amend the application materials by changing the color scheme of the applied for designation, in connection with which the legal protection of the designation is requested in black and white. According to the Applicant, these changes further reinforce the original differences between the declared designation and the official emblem of the Red Cross.The Board of the Chamber accepted these arguments and drew attention to the fact that the first and main emblem of the ICRC is a red cross on a white background, however, the change in the declared designation was carried out in such a way that the new designation "MOCEUTICALS" no longer contains a red cross, and the exclusion of this element from composition of the claimed designation eliminates the reasons for refusing registration.Thus, it can be concluded that the reason under consideration for refusing registration or invalidating it is not the simplest and most unambiguous, like any reason requiring a comprehensive comparison of designations.Sources:1.Civil Code of the Russian Federation (Part Four) dated December 18, 2006 N 230-FZ2.Conclusion of the Chamber for Patent Disputes dated 11/18/2021 (Appendix to the decision of Rospatent dated 12/18/2021 on application N 2020727969)3.Conclusion of the Chamber for Patent Disputes dated April 17, 2019 (Appendix to the decision of Rospatent dated May 16, 2019 on application No. 2017731803)4.Conclusion of the Chamber for Patent Disputes dated March 16, 2020 (Appendix to the decision of Rospatent dated April 6, 2020 on application No. 2018732277)5.Conclusion of the Chamber for Patent Disputes dated May 12, 2021 (Appendix to the decision of Rospatent dated May 28, 2021 on application No. 2019727793/33)6.According to international registration No. 1478790, from the author's archive7.Decisions of the Intellectual Property Rights Court dated May 26, 2022 in case No. SIP-1079/2021, dated March 28, 2022 in case No. SIP-1080/20218.Conclusion of the Chamber for Patent Disputes dated 08/29/2022 (Appendix to the decision of Rospatent dated 10/23/2022 on application N 2020738288)9.Conclusion of the Chamber for Patent Disputes dated 06/30/2022 (Appendix to the decision of Rospatent dated 08/12/2022 on application N 2020741305)Originally published in Trademark Lawyer Magazine
Women in IP Leadership: inspirations, experiences, and ideas for equality
Olga Plyasunova is a Trademark Attorney and the Head of The Trademark Department at Zuykov and partners. Olga has the status of Patent Attorney of the Russian Federation (No 1258) and Eurasian Patent Attorney (No 63). Olga has been working with Zuykov and partners LLC since 2007. She specializes in Appellations of origin of goods, trademarks and service marks, and industrial designs. Olga is fluent in English and is a member of ECTA (2019). She has extensive experience in the consideration of disputes, objections, and statements in the Chamber on patent disputes of trademarks. Here's Olga's interview for Women in IP Leadership series.Originally published in the Trademark LawyerWhat inspired your career? When I studied at the institute, I had the subject “Patent Law”, but I did not assume that my whole life would be connected with IP. It’s fate that after graduating from the institute I started working at Rospatent. At Rospatent, I was surrounded by interesting people devoted to their specialty, real professionals in their field. This inspired me to devote my life to the protection of intellectual rights, I realized that I was interested in this and I wanted to do it. How have you found the pathway to your current position? And can you offer advice from your experience?My IP career began in 1996 when I worked at the Russian Patent Office as an expert trainee in the expert department. While working at Rospatent, I simultaneously studied advanced training courses, including those organized by WIPO, which allowed me to grow professionally. A few years later, I took a management position and became Deputy Head of Trademarks at the Patent Office. After working for some time in this position, I realized that I wanted to plunge into this work from the “other side” and set myself the goal of becoming a patent attorney. In 2007, I joined Zuykov and partners and have been working here for 15 years. I continued to develop my career and in 2008 became a patent attorney with the right to work in the field of trademarks and appellations of origin. In 2021, I expanded my qualifications and became a patent attorney for industrial designs. In 2022, I received the status of a Eurasian patent attorney, having received the right to work in the field of design not only in the Russian Federation, but also in the CIS countries (Kyrgyzstan, Azerbaijan, Armenia, Kazakhstan, Tajikistan, Belarus). In our company, I am the head of the trademark department. The department employs 10 people - four of them are patent attorneys, the rest are assistants. The Trademark Department provides clients with trademark registration and design services.Intellectual property is an integral part of our life, and protecting the rights of customers is our priority. If you came up with a company logo, or invented a device or method, you must definitely register them, you can’t let the situation take its course. Otherwise, your competitor will appropriate the results of your intellectual activity and will reap commercial benefits.What challenges have you faced? And how have you overcome them? During my professional development, I realized that achieving professional goals and success depends only on me, and I need to work on myself and constantly improve myself to achieve them. In the Patent Office, I became a high-level manager at a young age, some of my subordinates were older than me and had more experience in the office than I had. It took a lot of strength, tact, and professional skills from me to gain authority among employees. But I coped with this task because I am a professional in my field. In addition, it was difficult for me, like any working woman, to combine my work, career growth, family, and children, since legal work in the field of IP requires complete immersion in the process. But I managed with this because I believe that a woman should be a diplomat and be able to negotiate not only in the legal field but also in everyday life.What would you consider to be your greatest achievement in your career so far? In my opinion, the most significant achievement in my work is the progress that I have made, climbing the steps of the career ladder from an intern in the field of IP to the head of a department in a large company, becoming a Russian and Eurasian patent attorney. I was able to realize myself in the profession and became a professional in my field. I also consider my department, which I created and developed, as my achievement – a team of colleagues who surround me and for whom I try to be an example in my professional activities, including working as a mentor, teaching the profession of young experts. So, many employees of the department came to the company in the position of attorney’s assistant, and in the process of working in the company they themselves became attorneys. This is a real team of professionals, ready to work in the difficult conditions that have now developed in the world. Life does not stand still. Our company is constantly expanding - both in terms of the number of employees and the geography of the provision of services. Recent events have forced us to look to the East - the countries of Asia, China, the United Arab Emirates. On January 1, 2023, we opened an office of Zuykov and partners in Dubai, UAE. This country and the region as a whole is a very promising area for business development. We are pleased that now we can provide our clients with a full range of services for the registration of intellectual property, including the services of trademark registration in the UAE.What are your future career aspirations? And how will you work to achieve them? Today, I am the Head of the Trademark Department at Zuykov and partners, which is the Russian market leader in the field of IP. In order to meet this level and not stop there, I plan to continue my professional growth, participate in IP conferences to exchange experience with colleagues and clients, such as INTA, ECTA (I have been a member of ECTA since 2019). I also plan to continue to develop the trademark department and its employees professionally. Particularly interesting for our clients in the current market conditions is the topic of regional patenting - the registration of Eurasian industrial designs, trademarks. Therefore, as soon as we have a Eurasian trademark, I will definitely become a Eurasian trademark attorney. I would like to see the introduction of a procedure for pre-registration public opposition to the Russian system of verification examination of intellectual property objects, in particular, for applications for industrial designs. The mechanisms of public opposition have been tested by a number of patent offices around the world when registering various industrial property objects. I believe that the introduction of public opposition will ensure convergence of the registration procedures for Eurasian, international and Russian industrial designs. In addition, we have been waiting for a year for a Eurasian trademark to appear. The Treaty on Trademarks, Service Marks and Appellations of Origin of Goods of the Eurasian Economic Union entered into force on International Intellectual Property Day on April 26, 2021. The Treaty creates a regional system for registration and legal protection of means of individualization of the EAEU, within which the applicant will be able to obtain legal protection of a trademark or an appellation of origin based on a single application filed with any of the five national patent offices. How do you think the empowerment of women can be continued and expanded in the IP sector? In my opinion, in Russia, unlike foreign countries, especially European ones, there are a lot of women working in the IP field compared to men. But at the same time, for the most part, they occupy ordinary positions, doing routine work. Women should invest more in their education, and develop professionally in order to show their value in the labor market, i.e. so that quantity turns into quality and more women can succeed in the IP industry in the future.
The court gave clarifications on the form of letters of consent for registration of a mark confusingly similar
In accordance with subparagraph 3 paragraph 6 article 1483 of the Civil Code of the Russian Federation [1], registration as a trademark in relation to homogeneous goods of a designation confusingly similar to a trademark is allowed with the consent of the copyright holder, provided that such registration cannot be a reason for misleading the consumer.In the case SIP-798/2022, it was the issue of letters of consent that became the key to invalidating the refusal of Rospatent to register a trademark for a part of goods. According to the circumstances of the case, based on the results of consideration of the application for registration of the designation "MaMate" as a trademark, Rospatent decided to register a trademark in respect of all declared goods and services, except for goods of the 5th class of the Nice Classification, since the designation is confusingly similar to a number of other trademarks signs - "Amate", "Momate Rino", "Momate Rino", "Damate", " Mammut ", " MixMate " and "MAMAVE" in relation to homogeneous goods.Challenging the refusal, the failed right holder submitted, before the start of the court session, letters of consent from the right holders of all opposing trademarks for registration "MaMate", in which they informed about the consent to register the claimed designation as a trademark in relation to the goods of the 5th class of the Nice Classification requested by the applicant, since such registration will not entail a violation of rights.The court noted that neither Art.6 septies of the Paris Convention for the Protection of Industrial Property, nor the Civil Code of the Russian Federation establish requirements for the form of consent to register a trademark; in p.3 of the Recommendations on the application of the provisions of the Civil Code of the Russian Federation regarding the consent of the right holder to register a similar trademark [2], documentary evidence of the consent of the right holder to register a trademark is drawn up in any form.The panel of judges, having evaluated the submitted consents to the registration of the disputed designation, found that the documents were legally signed either by representatives under notarized powers of attorney, or by persons entitled to act on behalf of the respective legal entities without a power of attorney.After examining the contents of the letters, the court noted that they contained all the necessary information, namely:full information about the person giving consent, which allows him to be identified (his name, indication of the place of residence or location);the same information about the person to whom the consent is given;direct expression of consent to the registration of the claimed designation as a trademark, citing the application number, if it has been assigned, and a description of the claimed designation with its own appendix;a specific list of goods / services in respect of which the right holder does not object to the registration of the claimed designation as a trademark;date of drawing up the document and the signature of the authorized person.As a result, the IP Court came to the conclusion that the letters of consent from the right holders of the opposing trademarks made it possible to establish the existence of the real will of the right holders to provide appropriate consent to register the disputed designation as a trademark.Thus, taking into account the proper letters of consent received by the court, the IP Court considered it necessary to oblige Rospatent to register the designation in relation to the named goods of the 5th class of the Nice Classification.It should be separately noted that in accordance with paragraph 6 of Art. 1483 of the Civil Code of the Russian Federation, another important requirement is imposed on letters of consent - irrevocability. This requirement is intended to ensure the stability of the registration process, and practice confirms that failure to comply with it can also become the basis for, for example, recognition of behavior in bad faith [3]. 1.Civil Code of the Russian Federation (Part Four) dated December 18, 2006 N 230-FZ2.Recommendations on the application of the provisions of the Civil Code of the Russian Federation regarding the consent of the right holder to register a similar trademark, approved. by order of Rospatent dated December 30, 2009 N 1903.Ruling of the Court for Intellectual Property Rights dated 03.06.2022 N C01-795/2021 in case N A60-8612/2020
IP Court reviewed the case of changing the color combination of a trademark
Each trademark owner has the opportunity to make changes to his mark, however, such changes must comply with the requirements of Art. 1505 of the Civil Code of the Russian Federation, namely, they must refer to individual elements of the trademark without changing its essence.According to a case N SIP-839/2022, Rospatent received an application from the owner of the trademark "AMD" (N 754324) to change the color combination of the trademark from the combination: dark yellow, blue, white to the combination: yellow, blue, white.The administrative body sent a notice of refusal to satisfy the application, motivated by the fact that the change being made changes the visual perception of the registered trademark as a whole.The right holder decided to challenge this refusal in the IP Court, motivating his claims by the fact that the change to the trademark is not significant. In his opinion, this change does not affect the designation itself, but only applies to the text indication of one of the colors: "dark yellow" must be changed to "yellow", and such edits cannot be recognized as changing the perception of the sign as a whole.According to Rospatent, changing the description of the trademark, namely the indication of yellow instead of dark yellow, will significantly change the scope of legal protection of the trademark, since yellow includes all shades of yellow, including dark yellow, light yellow, and others.IP Court, analyzing the degree of significance of the changes introduced, indicated that it is only supposed to change the tone within one of the colors of the trademark. After evaluating the overall impression that the trademark and its modified version produce, the court noted that the change does not lead to a significant change in the perception of the trademark.At the same time, the IP Court agreed with Rospatent that the indication of the color combination given in the State Register, along with the image of the trademark and the list of goods and services, also constitutes the scope of legal protection of the trademark, but in this case, it does not matter due to the insignificance of the transformation of the mark.The court took into account that the applicant also owns the trademark “AMD” N 433412, which has been granted legal protection for the combination of colors: yellow, blue, white. That is, this color combination is already known to the consumer, and therefore the changed color combination for the disputed trademark N 754324 is obvious will not lead to a significant change in the perception of the trademark as a whole.As a result, Rospatent's notification of refusal was declared invalid, since in this case only the tone of one of the colors used in the reproduction of the mark is changed, which cannot be considered a significant change in the scope of legal protection.In summary, it should be noted that Rospatent has a very strict approach to making changes to both registered trademarks and declared designations, while the above practice softens it. This example of court practice can help the applicant when making changes to a trademark, if he has such a need.
Case offers valuable clarity for trademarks based on cultural objects
A fresh decision from the IP Court (N SIP-298/2022) contains several important clarifications on the analysis of signs and provides invaluable insight into the Russian Federal Service for Intellectual Property (Rospatent) and the formation of legal precedents that could apply to similar cases.Article 1483(4) of the Civil Code of the Russian Federation prohibits the registration of trademarks that are identical or confusingly similar to the official names and images of valuable cultural objects if this is requested by any entity other than the owner or without the owner’s authorisation.Rospatent refused to register the combined designation ‘Thunder-Stone’ as a trademark because it contains a verbal element similar to the official name of a part of a just such a valuable cultural object – the monument to Emperor Peter I (the Bronze Horseman), arguably the most recognisable architectural landmark in St Petersburg.The applicant appealed this refusal to the IP Court, which ruled that registration of such a trademark without the owner’s consent is contrary to public interest and could mislead consumers with regard to the origin of the goods on which the mark appeared. In particular, the court considered each of Rospatent’s grounds and reached the following conclusions.The designation was not in the public interestThe court pointed out that the verbal element ‘Thunder-Stone’ is part of the monument but is not part of its official name. Therefore, it held that the registration of the trademark at issue was permissible without the monument owner’s consent, citing a lack of prohibition on registrations where the designation is identical or confusingly similar to the name of an object.Despite this, the IP Court still refused to register the mark, explaining that the presence or absence of consent did not affect its conclusion that the mark in question conflicts with public interest. In making this assessment, the court considered how customers will perceive the trademark designation. Ultimately, its decision opposed arguments that there is no evidence that ‘Thunder-Stone’ openly references part of a particularly valuable object of cultural heritage.The IP Court also noted that if a target group of consumers recognises a separate verbal element as indicating part of a specific cultural heritage object, then the rules of Article 1483(4) of the Civil Code will apply, as Rospatent believes.Misleading consumers about the product or its manufacturerThe court further stated that the discrepancies between the location of the applicant (Samara region) and the object (St Petersburg) and the part of the name included in the trademark application and the object’s full name are not in themselves bases for concluding that consumers may be misled in relation to the product or its manufacturer. The court also clarified that the declared designation contained no information that could mislead consumers with regard to the place of provision of services.Originally published in World Trademark Review
Russian IP courts ban ‘ros’ prefix in company name
In a welcome show of unity, three different Russian courts have upheld the rejection a trademark that contains the prefix ‘ros’ – holding that it is misleading to consumers.Article 1,473 of the Russian Federation’s Civil Code states that company names must not include full or abbreviated names of official federal government bodies or entities, or offensive labels that are contrary to public interest or moral principles. In 2019 the Russian Supreme Court went even further, holding that in accordance with Paragraph 148 of the Decree of the Plenum, the word ‘Russian’ and its derivatives cannot be included in company names without official permission. This provision also applies to the abbreviation ‘ros’ if this is intended as a short version of ‘Russia’ or ‘Russian’ or to represent those words (see IP Court’s rulings of N C01-446/2021 of 20 May 2021 N C01-446/2021, in case N A50-11396/2020 of 24 December 2020, N C01-1652/2020, in case N A40-23208/2020 of 8 November 2019, N С01-1050/2019, in case N А51-17617/2018). At the same time, if such an abbreviation is not derived from these words and is not associated with them, the practice is to approve such trademarks (see, for example, the IP Court’s rulings of 8 March 2020, N С01-745/2020, in case N А32-38939/2019 of 19 March 2020, N С01-26/2020, and in case N А32-22388/2019).In a recent case, the tax inspectorate filed a lawsuit against the company ROS-PRAVO, petitioning that it change its name to remove the ‘ros’ element from it (see rulings of the IP Court on 30 August 2022 N С01-1233/2022, in case N А41-81743/2021, 10th Arbitration Court of Appeal on 6 April 2022 N 10AP-4171/2022 and the Arbitration Court’s decision in the Moscow region on 19 January 2022).ROS-PRAVO pointed out that the courts had initially rejected the expert linguist's conclusion that the prefix ‘ros’ did not come from the same root as the words ‘Russia’, ‘Russian’ or ‘Russian Federation’, nor was it a derivative of them. According to the company, not all words in the Russian language that have this prefix are associated with these words, and thus qualify as official names.Despite this, three different courts came to the unanimous decision that the ‘ros’ element of the company’s name could cause consumers to strongly associate the business with Russia. Therefore the name failed to adequately meet the requirements of the law.The courts all held that the expert opinion could not be relied upon because the assessment of whether a company name complies with the Civil Code is not conducted by linguistic specialists, but is viewed from a consumer standpoint. The courts emphasised that the abbreviation ‘ros’ is most often included in the names of organisations in which the Russian Federation is a participant, or that carry out important state functions or activities (eg, Rosreestr or Rospatent). The courts held that this concept is a generally known and accepted by consumers.World Trademark Review
IP Court declared illegal the refusal to recognize the well-known trademarks "MEZIM"
In accordance with paragraph 1 of Art. 1508 of the Civil Code of the Russian Federation, a trademark may be recognized as well-known if, as a result of intensive use, it became widely known in Russia among the relevant consumers in relation to the goods of the applicant as of the date specified in the application. Thus, several evaluative concepts are subject to analysis (intensity of use, breadth of fame, the proper circle of consumers, fame precisely in connection with the applicant's goods), and the probability of disagreement in such a multivariate analysis is quite high.An example of a case in which the positions of Rospatent and the court diverged on the well-knownness of a trademark is the recent case on trademarks "MEZIM" N 152521 (in relation to pharmaceutical and medicinal products) and "MEZIM" N 248463 (in relation to digestive aids, enzymes for pharmaceutical goals).The right holder, a foreign company, challenged Rospatent's refusals to recognize these trademarks as well-known. In refusing to satisfy the applications, Rospatent came to the conclusion that the applicant did not provide evidence proving that the signs acquired the properties of well-known trademarks.Disagreeing with the said decisions of the administrative body, the foreign person applied to the Intellectual Property Court.First of all, the IP Court noted that the relevant administrative regulation includes an exemplary, non-exhaustive list of evidence of the well-known trademark, therefore, the applicants are not limited only to the information listed in it (for example, the names of the settlements where the sale of goods was carried out, in respect of which the use of the trademark was carried out). sign or designation, indicating the volume of sales of these goods, etc.).The IP Court also emphasized that the duration of the use of a trademark does not matter - neither national legislation nor international treaties contain such a requirement for recognition of a mark as well-known. Duration can be only one of the factors that influences the formation of a certain idea in the minds of consumers, but not the only and not decisive.The Court paid special attention to the fact that the establishment of the relevant range of consumers is one of the key tasks of Rospatent in assessing well-knownness. This circle may include actual and / or potential consumers of the type of goods and / or services for which the mark is used, persons involved in providing channels for their distribution, “business circles” involved in the type of goods and / or services for which the mark is used.One of the numerous grounds for invalidating a refusal pointed out by the IP Court was a change in the position of Rospatent regarding the amount of evidence. At the court session, the representative of Rospatent noted that the case materials contained only “fresh” packages, while samples of packages issued before the requested date were not presented; however, in response to a clarifying question from the court, the representative corrected his position, indicating that there were packages before the legally significant date, indicating the applicant as the manufacturer in the case file, but they were not enough to draw conclusions and recognize the means of individualization as well known. The IP Court noted that such a change in position cannot be taken into account, since the first option is reflected in the decision of Rospatent.Rospatent also demonstrated a change in its position on another issue - in another case, it had previously admitted that the trademarks in question were used by the right holder and that consumers associate them with the right holder, while at the same time, in the decisions on the current case, the position of the administrative body turned out to be exactly the opposite. The IP Court pointed out that under such circumstances, Rospatent is not entitled to change its position in the absence of proper grounds.The IP Court also drew attention to the burden of proof, noting that the administrative body is not entitled to independently seek evidence of the well-known means of individualization or to refute this circumstance. One of the central issues of the case was the question of what is evidence of the well-known trademarks; Rospatent analyzed the popularity of marks in relation to the applicant as such, and not in relation to his goods.The IP Court stressed that the well-knownness of a trademark should not be determined in relation to a specific manufacturer, which may not be the trademark owner and/or the person introducing the product into civil circulation and ensuring its delivery to the consumer, but in relation to the subject perceived by consumers as a source origin of goods under the designation declared for registration. However, the norms of the legislation do not connect the recognition of a trademark as well-known with the condition that the applicant as a specific person is known to consumers of the relevant goods/services marked with a trademark - consumer awareness should consist in the fact that the goods come from the same source, but the consumer does not have to identify the product with a specific applicant.Rospatent referred, among other things, to the fact that the evidence submitted by the applicant contains a designation that is different from the trademark (which is part of the mark). Despite the formal significance of this argument, the court noted that one statement is not enough - the administrative body is obliged to assess whether the essence of the trademark (from the point of view of consumer perception) was affected by the difference between the trademark and the image used on goods, therefore Rospatent cannot limit itself to a statement of the fact of the difference between the trademark and the designation used on the goods.At the same time, Rospatent additionally referred to the fact that a simple "withdrawal" of a verbal element from a combined trademark cannot automatically indicate the well-knownness of this verbal element, since the well-knownness of the combined designation in itself does not indicate the well-knownness of a separate part of the combined designation. With regard to this argument, the CIP noted that this legal position does not conflict with the need for Rospatent to assess whether the essence of the trademark, from the point of view of consumer perception, was affected by the difference between the designation under study and the one declared as a well-known trademark.As a result, as part of the restoration of the violated rights and legitimate interests of the applicant, the court ordered Rospatent to re-examine applications for recognition of trademarks as well-known.
Current practice of IP Court on challenging the agent trademark registration of a foreign right holder
According to Art. 6.septies of the Paris Convention for the Protection of Industrial Property, if an agent or representative of a trademark owned in one of the Union countries files, without the owner’s permission, an application for this trademark registration on their own behalf in another Union country, the owner has the right to demand the cancellation of such registration, if the agent or representative fails to provide evidence, justifying their action. It should be noted that in some cases such registrations are the result of simple ignorance - it is not immediately obvious whether the consent of a person to use their trademark under a distribution agreement is consent to filing an application for registration of this trademark in the name of an agent (distributor). However, often the acquisition of the exclusive right to such a trademark pursues parasitic goals - the means of individualization is already recognizable, has a certain reputation, there is no need to invest in its “promotion”. In practice, the qualification of legal relations as agency relations often causes difficulties due to the ambiguity of the corresponding concept, but difficulties also arise with other issues. For example, in case No. SIP-244/2020, the Rospatent refused to satisfy an objection to the legal protection of a trademark on the grounds that the agency relationship between the applicant and the owner of the Russian trademark "ABC Design" N 350373 was not proven. The application for the Russian trademark was filed by a person potentially having an agency relationship with a foreign copyright holder, but subsequently the exclusive right to the trademark was repeatedly transferred. The Administrative Authority considered that there were no grounds for examining the agency relationship between the foreign right holder and the original applicant, noting that the filing of a trademark application by an agent or representative of such a person has no legal significance if the rights subsequently transferred to another person.However, the Intellectual Property Court indicated that in order to invalidate the legal protection of such trademarks, the relationship between the principal and the applicant at the time of filing the application is important. In this connection, it is necessary to establish the following conditions in the aggregate:the objector must be the owner of the earlier trademark;the applicant must be or must have previously been an agent or representative of the trademark owner;the application for registration should have been filed in the name of an agent or representative without the consent of the copyright holder, without justifying reasons;the application must concern designations that are identical or similar in essence to the original trademark.Since these conditions were not established by the court in full, the case was sent for a new trial. Recently, by a ruling of the Supreme Court of the Russian Federation, it was refused to transfer a cassation appeal in case No. SIP-224/2020 for consideration in a judicial session of the Judicial Collegium for Economic Disputes - in a judicial act, the Supreme Court of the Russian Federation confirmed the position of the IP Court, which was as follows: The company challenged the decision of Rospatent to satisfy the objection to the granting of legal protection to its trademark N 691175 “MAGYARICA”.The objection came from the Hungarian company Horizon Food Kft. and individual Bajaki Ferenc and was motivated by the inconsistency of the trademark registration with the requirements of paragraphs. 5 p.2 art. 1512 Civil Code of the Russian Federation, Art. 6. septies of the Paris Convention. The IP Court in two instances recognized the conclusions of Rospatent as justified, refusing to satisfy the application.In the name Bajaki Ferenc, a trademark was registered with the word element “Magyarica” under the laws of Hungary with an earlier priority in the same class of the Nice Classification, in respect of which the disputed mark was registered in the Russian Federation. Moreover, Bajaki Ferenc was a founder of the applicant company Horizon Food Kft and entered into a trademark license agreement with his company. All this made it possible to recognize persons as affiliated, having the same business goals and acting in the common interest.As for the confirmation of agency relations, between Horizon Food Kft. and the owner of the disputed trademark entered into a distribution agreement and a contract for the supply of goods, on the basis of which the court concluded that the company acted as a distributor for the “Madjarica brand” before the priority date of the disputed trademark. However, the company denied the existence of agency relations and referred to the fact that relations with the company were not based on an agency agreement. In response to this argument, the IP Court considered it possible to give a broad interpretation of the agency and representative relations between the right holder of the disputed trademark and the trademark in the state party to the Paris Convention and noted that in such a case such relations include any contractual relations for the sale of goods on the territory of the Russian Federation, labeled with a controversial designation.The company also challenged the application of the considered grounds for recognizing the grant of legal protection as invalid on the basis of the following:Bajaki Ferenc ceased its status as a member of the company from a certain date and at the time of filing an application for registration of a trademark in Hungary was no longer such;the license agreement for the right to use the Hungarian trademark was concluded on the day of filing an application for its registration and was not registered in the prescribed manner.Rejecting the arguments of the society, the court proceeded from the fact that on the priority date of the disputed trademark Bajaki Ferenc and the company were in any case affiliated persons: until 05/09/2017, this person was the sole participant of the company, and after that date, his wife became the owner of the company.The IP Court also came to the conclusion that the norms of the Hungarian Law XI of 1997 “On the Protection of Trademarks and Geographical Indications” do not contain a prohibition on concluding a license agreement for the use of a designation after the filing of an application, but before its registration as a trademark, as well as not providing for a mandatory procedure for registering a license agreement.Thus, IP Court acknowledged the presence of the entire set of circumstances that are the basis for the application of the provisions of Article. 6.septies of the Paris Convention and paras.5 p.2 art. 1512 of the Civil Code of the Russian Federation.A similar case with the same participants recently passed the first instance of the IP Court. Rospatent also satisfied the objection on the same grounds in relation to the trademark N 690394 ”МАДЬЯРИЦА” (“Mad’yarica”), and the IP Court sided with Rospatent.As can be concluded, disputes over contesting the legal protection of trademarks due to the inconsistency of Art. 6.septies of the Paris Convention seem to be quite complex - one may encounter ambiguity in the legal qualification of relations between applicants and copyright holders of Russian trademarks, and the need to analyze foreign legislation, and with a multi-link chain of copyright holders as a result of the transfer of the exclusive right to a disputed mark. Also, in practice, there are cases in which the ultimate trademark owner is liquidated (according to the IP Court position, this should not prevent the consideration of objections).Originally published in Trademark Lawyer Magazine (Issue 4, 2022)
IP Court overrules Rospatent’s finding of similarity for marks in different classes
The Presidium of the IP Court has, on appeal, overturned an earlier refusal to register an entrepreneur’s trademark registration by both Rospatent and the IP Court. The complainant had questioned the court’s finding that specific goods and services for the sale of goods were homogenous, without specifying their types.The entrepreneur challenged Rospatent’s refusal to register the trademark ("Myasnoy Edem") in relation to services in Class 35 of the Nice Classification – “sale of goods, including through stores; advertising” (decision of the Presidium of the IP Court 26 July 2022 N C01-850/2022 in case N SIP-1061/2021 decision of the IP Court 28 February 2022). The mark was refused registration due to its similarity with another mark ("Myasnoy Edem") (N 571978), which was registered for goods in Class 29 of the Nice Classification, “meat”.Rospatent considered the goods being applied for in Class 29 in the applications of both the entrepreneur and the owner of an existing mark. The IP Court determined that the marks were too similar, which would therefore likely to lead to confusion.Rospatent and the IP Court cited homogeneity in both instances. The court of first instance did not exactly agree with Rospatent with regard to the homogeneity of the declared services of Classes 29 and 35, since the purpose of the services in Class 35 is the direct sale and promotion of various goods on the market, and maintaining interest in such goods. The services of this class contain no indications of the type of goods and may belong to different part of the market, which creates interest among a wide consumer base – not merely those interested in purchasing meat. Rospatent noted that the declared services of Class 35 are for the promotion and sale of goods, including meat and meat products.The IP Court Presidium stressed that when establishing similarity of services, it is advisable to be guided primarily by the purpose of the service provided for a specific type of activity. However, one should also bear in mind that services belonging to the same type can be provided in different areas and thus cannot be said to be the same. Under certain circumstances, goods and services can be recognised as homogeneous among themselves if the services are formulated with clarifications on the range of goods sold or on the field of activity (eg, food retail services). However, services without such clarifications − as a general rule − cannot be homogeneous.As a result, the IP Court Presidium concluded that the services for the sale of goods and advertising specified in the registration − without specifying the list of goods − can be associated with any type of good, and, accordingly, cannot be recognised as homogeneous for a particular product. Therefore, goods in Class 29 of the Nice Classification, meat, are distinct from the declared services of Class 35 of the Nice Classification “sale of goods, including through stores; advertising”.It should be noted that the IP Court Presidium’s actions may affect Rospatent’s registration practice, since the office has recently tightened the requirements for uniformity at the examination stage. Today where a mark contains an identical verbal element and is registered in relation to Class 35, the sign can be compared to classes of product categories.Originally published in World Trademark Review
IP Court clarifies partial refusal due to risk of confusion
There are two main consequences of a partial refusal to register a trademark: the denial of protection to the right holder who received such a refusal, as well as the significance of the early termination of the legal protection of the opposing trademark, which took place after the refusal to register the disputed mark.In the decision of the Court for Intellectual Property Rights dated 6 February 2022 in Case SIP-1152/2021, the trademark owner learned that Rospatent did not register his mark (No 826493, "Aleksandra") in relation to all the goods that were indicated in the application. Some of them were refused due to being confusingly similar to the previously registered trademark (No 658784, "AleXandRA"). The copyright holder tried to challenge the partial refusal of registration, but to no avail.The main argument of the right holder was the early termination of the protection of the opposing mark, so, according to the right holder, the mark can no longer be taken into account when considering an application for registration of a designation. Rospatent insisted that the early termination of the protection of the opposing mark does not affect the assessment of the legality of the contested decision.Rospatent also referred to the fact that contesting the decision is not an appropriate way to protect a violated right and cannot lead to the restoration of rights. Rospatent pointed out that since legal protection for a trademark had already been granted, the right holder cannot exercise the right granted by Clause 1 of Article 1500 of the Civil Code of the Russian Federation. This possibility exists only before the registration of the mark. The mechanism for challenging the protection is specified in articles 1512 and 1513 of the Civil Code of the Russian Federation.The IP Court, considering this argument, noted that Rospatent misinterpreted the applicability of the two methods of challenging the decision to register a trademark. According to Rospatent, to challenge the decision to register a mark in accordance with Paragraph 1 of Article 1500 of the Civil Code of the Russian Federation is impossible if the mark has already been registered, even if such a decision contains a refusal in relation to some part of the goods or services.At the same time, such a non-normative legal act actually contains two decisions - on the registration of a mark in relation to some goods, and on the refusal to register in relation to others. Indeed, if the mark is registered, an exclusive right arises to it, and the subsequent challenge to protection of it can be carried out by another person (not the applicant) in accordance with articles 1512 and 1513 of the Civil Code of the Russian Federation.However, if the registration is denied, the exclusive right does not arise, and the applicant retains the right to challenge the decision regarding the refusal to register the claimed designation on the basis of Article 1500 of the Civil Code before the expiration of the period established by law (four months from the date of sending the decision to the applicant).Regarding the significance of the termination of the legal protection of the opposing mark, the court noted that on the date of refusal of registration and on the date of consideration of the objection, the legal protection of the mark was in effect. A successful claim for early termination of legal protection was only made after the registration of the disputed mark. The court pointed out that even taking into account the above mentioned, the termination of legal protection entails the impossibility of its opposition to the designation in respect of which an application for registration has been filed.Since the opposing trademark was the only obstacle to the registration of the disputed mark, the court reversed the decision of Rospatent, emphasising that the state body could not take into account the future termination of legal protection; therefore the cancellation of the decision does not indicate its illegality.It should be noted that this trend was recently reflected by the IP Court in one of the private definitions due to the systematic mistakes of Rospatent in similar situations. The court noted that the position of Rospatent is “obviously erroneous and contrary to both the law and common sense”, and that the proper way to protect a mark if the right holder disagrees with a partial refusal is to challenge the granting of legal protection to their own mark in accordance with articles 1512 and 1513 of the Civil Code of the Russian Federation. These norms:do not provide for the grounds for the right holder to challenge such registration; anddo not imply an expansion of the scope of legal protection of a mark in the event of a challenge to its registration, but only annulment or reduction of the legal protection.Thus, the court concluded that the application of this procedure cannot lead to the restoration of rights that the right holder considers violated.Orginally published in World Trademark Review
Court rules on conflict between a trademark and an indication of origin arising from licence agreement
An appeal was brought before the Russian IP Court on 29 April 2022 after Rospatent rejected an application made by the owner of an existing word mark, RUSSIAN STEEL, to use said mark for an unrelated product category, vodka (Case N A40-35976/2021). The owner applied to Rospantent for the exclusive right to use their mark in this differing context on the basis of a licence agreement. In rejecting the application, Rospatent cited the fact that the licensee did not have the right to use the appellation of origin (NMPT) ‘Russian vodka’, which was confusingly similar to the applied-for mark. The owner appealed and the requirements were satisfied in full. In response, Rospatent pointed out that:granting the right to use a trademark that is similar to an NMPT to a person who does not have the right to use such an NMPT can mislead consumers as to the place of origin and special properties of the goods; andit is only permissible to grant the right to use a trademark that includes an NMPT to a person who is entitled to use the NMPT.The IP Court indicated that the trademark was registered subject to the legal protection of the NMPT and that the specified name was not opposed to it at the time of registration. Therefore, the legal protection of the named trademark has not been invalidated or challenged. The court noted that Rospatent applied Article 1489(3) of the Civil Code of the Russian Federation (Part Four, 18 December 2006, N 230-FZ) to circumstances that were irrelevant to the legislation. According to these provisions, the prohibition to grant the right to use a trademark due to the licensee lacking the exclusive right to an NMPT applies only to cases where such an NMPT is included in the trademark as an unprotected element. The court also confirmed that although Paragraph 3(i) of the Rules for the Registration of Disposition of the Exclusive Right (approved decree of the government of the Russian Federation, 24 December 2015, N 1416), establishes that the registration of the disposal of the exclusive right is carried out when the alienation of the right to a trademark is not the reason for misleading the consumer. But in the disputed act at hand, it is not clear how granting the right to use the trademark could cause a misrepresentation of the product or its manufacturer, which might influence consumers. Moreover, the court also questioned the degree of similarity between the designations, referring to case A40-58488/2020 (Resolutions of the Ninth Arbitration Court of Appeal 12 July 2021, N 09AP-30469/2021, 09AP-30470/2021, IP Court 17 November 2021, N С01-1848/2020), in which the similarity between the same designations was established but not identified. In this case, the courts pointed out that the designations are not similar. Since the NMPT is a single designation ‘Russian vodka’, the individual words ‘Russian’ and ‘vodka’ did not become known as an NPMT in the territory of Russia, and the combined designation placed on product labels – ‘vodka Russian steel real’ did not contain the phrase ‘Russian vodka’. Thus, the court emphasised that Rospatent’s application of the provisions of Article 1489(3) of the Civil Code in the case of the alleged similarity of the trademark and the NMPT constituted an unacceptably broad interpretation of the norm. Originally published in World Trademark Review
IP Court upholds refusal to register the trademark, despite to the US origin of opposed trademark
In case N SIP-238/2022, the entrepreneur applied to the Intellectual Property Court, challenging the refusal of Rospatent to satisfy the objection to the refusal to register a trademark.The main reason for invalidating the refusal was the lack of confusing similarity between the potential trademark “ADVENTURE CATS” and the opposite means of individualization “CAT” of another person.However, the IP Court considered the conclusion of Rospatent about the similarity to the degree of confusion between the claimed designation and the opposing trademark correct, noting that a high degree of similarity of designations along with a high degree of homogeneity of goods increases the likelihood of confusion between designations.In addition, the applicant drew attention to the fact that the copyright holder of the opposing trademark is the American company Caterpillar Inc (Delaware Corporation).The failed copyright holder referred to the fact that, according to the order of the Government of the Russian Federation of March 5, 2022, N 430-r, the United States is included in the list of foreign states and territories that commit unfriendly actions against the Russian Federation, Russian legal entities and individuals.The entrepreneur pointed out that there is no likelihood of confusion between the compared trademarks in the eyes of the consumer, and the refusal to register a trademark “in order to protect the exclusive right to the opposed trademark” is contrary to the national interests of the Russian Federation. At the same time, the applicant referred to the notorious decision in the Peppa Pig case, as well as information about a donation through the fund of the owner of the opposed sign of more than one million dollars to support the needs of the humanitarian crisis in Ukraine and the suspension of Russian production facilities.However, the IP Court rejected the argument that the provision of legal protection for a trademark owned by an American company and the refusal to register the claimed designation as a trademark violates the national interests of the Russian Federation. The CIP pointed out that the inclusion of the United States in the list of foreign states and territories that commit unfriendly actions against the Russian Federation, Russian legal entities, and individuals does not remove the fact of opposing a trademark registered in the territory of the Russian Federation in the prescribed manner, especially considering that any retortions in the considered area were not introduced.Originally published in World Trademark Review
The approaches of “first to file” and “first to use” protection and defense of trademarks
There are the opposite concepts regarding the determination of the moment, since which the legal protection of a trademark emerges – “first to use” and “first to file.”In the Russian Federation and other countries of the Romano-German legal family, the more common “continental” approach of “first to file” prevails, according to which the grounds for the emergence of the legal protection is registration, and its validity starts since the date of filing the corresponding application.In accordance with Article 1494 of the Civil Code of the Russian Federation, the priority of the trademark shall be established according to the date of filing the application for the trademark to the Federal Executive Authority on Intellectual Property. The priority of the trademark according to a divisional application (Paragraph The priority of the trademark according to a divisional application (Paragraph 2 of Article 1502 of the Civil Code of the Russian Federation) shall be established according to the date of filing the original application and provided there is a right to an earlier priority according to the original application - according to the date of this priority.On the contrary, the legal orders of the common law countries adhere to “first to use” - according to which, the right to the trademark shall emerge after the start of using the designation that complies with protectability conditions. For example, in Canada or the USA, the marks are assigned the legal protection based on their actual use in a trade or at providing services (depending on the situation – for example, according to sec. 1 (a) or (b) of the Lanham Act - either in connection with the current use or in connection with a good faith intention of such use, which will be confirmed with evidence in the future). Thus, when implementing “first to use,” the priority of the mark is guaranteed not by the very filing of the application, but by the actual use.However, despite the seemingly unambiguous enshrinement of the principle of “first to file” in the Civil Code of the Russian Federation, while granting the legal protection to the trademarks, one can notice an indirect manifestation of the approach of “first to use” in the norms of the Civil Code of the Russian Federation, as well as in the law enforcement practice.For example, according to 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 misleading a consumer regarding a product or its manufacturer, what entails both preventing the registration of the relevant designations, and invalidating such registration if the latter has taken place. One of the most common cases of misleading the consumers is potential confusion between the manufacturers operating at the market under similar designations.In accordance with Subparagraph 6 of Paragraph 2 of Article 1512 of the Civil Code of the Russian Federation, granting the legal protection to the trademark may be challenged and invalidated, if the right holder’s actions related to granting the legal protection to the trademark or to another trademark being confusingly similar to it, have been recognized as an abuse of the right or unfair competition (which, in turn, may imply a wide range of situations, in particular, and the competition to the designation performing the functions of a means of individualization).Articles 14.2, 14.4, 14.6 of the Law on Defense of Competition also provide directly or indirectly the opportunities for restricting the rights holders of trademarks in connection with the competition of the individualizing designations (including those that have emerged earlier than the priority date of the trademark), since they contain such grounds for establishing unfair competition, as misleading, creating confusion, the unfair registration itself and the use of the mark.The law enforcement practice, in turn, also allows identifying and confirming the factors that are likely to entail the restriction of the rights holders’ opportunities. Such factors may be the emergence of special individualizing properties at the particular designation as a result of its mass application in business activities by a number of persons, and acquiring an exclusive right to such designation by one right holder.This model implies the right holder’s intention to take advantage of the recognizability of the designation, wherein often immediately after the registration of the trademark, he begins the legal prosecution of the competitors.Thus, the designation that has acquired a distinctive ability as a result of the longstanding efforts of various (and sometimes numerous) manufacturers unreasonably brings advantages to one economic entity, and a prohibition to this can be called a mediated implementation of the “Anglo-Saxon” principle of “first to use.”As examples, we can cite the following cases on challenging the decisions of the antimonopoly authority with an opposite result, but applying the concept of providing an advantage to good-faith users of the individualizing designation:The right holder of the trademark “HANSOL” failed to challenge the recognition of its mark registration as unfair competition: by the time of filing the application for the trademark, the homogeneous product marked with the above designation had been sold for a long time at the Russian market by various market players, as a result of which the mark became widely known among the consumers of this product, and it was associated directly with that product.In another case, the applicant, on the contrary, managed to cancel the decision of the Federal Arbitration Court, by which its actions for the registration and use of the trademark had been recognized as unfair competition -prior to the date of the registration by the applicant of “Antigrippin” as a medicinal drug trade name in 1996 and prior to the priority dates of the similar trademarks (2007, 2009), the designation had been widely used by pharmacists and doctors, pharmaceutical enterprises, while not being tied to a specific composition and a specific manufacturer, and it had related to the drug manufactured by pharmacy. The designation had appeared massively in the mass media relating to medical themes and even in regulatory documentation.According to the explanations of Sergey Zuykov (the managing partner of Zuykov and Partners, the patent attorney of the Russian Federation, a Eurasian patent attorney), the approach of “first to use” is also periodically used in the Russian judicial practice on a violation of the exclusive right to the trademark, wherein this often occurs in the cases regarding the designations that can be generically called “Soviet.”This can be clearly seen in the examples of the cases regarding the prohibition to use the trademarks and/or the recovery of appropriate damages, often using the schemes for the abuse of the right:In the case, which underwent two rounds of instances and reached the Supreme Arbitration Court of the Russian Federation, the TV company tried unsuccessfully to prohibit the magazine to use the designation “Chelovek i Zakon,” which was similar to the trademark; as a result, the Supreme Arbitration Court of the Russian Federation dismissed the claim, since the priority had been granted to the trademarks later than the registration of the defendant’s mass media in 1990 and the beginning of publishing this mass media, which name coincided with the plaintiff’s trademarks, as early as in 1971. The court, although referring to the norms on the priority of the trademark, however, considered that the plaintiff’s actions could be qualified as the abuse of the right due to the confirmed activity of the defendant prior to filing the application by the plaintiff.In another case on the defense of the exclusive right to the trademark and the recovery of damages, the courts also dismissed the claim due to the fact that the manufacturer-defendant had been manufacturing the homogeneous products under the designation constituting a word element of the trademark “Malvina” 13 years prior to the priority date of the trademark.In 2006, the Supreme Arbitration Court of the Russian Federation, in the resolution on a particular case regarding the designation “Spartak,” indicated obiter dictum, “... if the use of the designation by the subject of economic activity has started and become known in circulation prior to the priority date of the trademark, such use cannot be recognized as a violation of the exclusive rights to the trademark.”In 2019, the Intellectual Property Court dismissed the claim for the defense of the trademark “Detskiy” with the priority of 2016 (regarding the cream, which design was developed as early as 1955), because it established the fact of using the disputed designation by the defendant for a long time prior to the registration of the trademark, as well as the fact it had gained a fairly wide popularity among the consumers in relation to the manufacturer-defendant.Thus, formal adopting the approach of “first to file” in the Civil Code of the Russian Federation does not exclude completely the partial, pointwise application of an opposite principle - at least when implementing the prohibition to the abuse of the right and unfair competition. Originally published in World Trademark Review
Features of law enforcement practice on well-known trademarks
So far, 299 people have been registered in Russia well-known trademarks, the first of which is the designation "ИЗВЕСТИЯ". According to Article 1508 of the Civil Code of the Russian Federation, the conditions for recognizing a designation as well-known in Russia are as follows:use it as a trademark, even if no state registration has been made;its wide popularity in the Russian Federation due to intensive use concerning the applicant's goods on the date specified in the application, but not after the priority date of an identical or confusingly similar trademark of another person concerning similar goods.There is no final list of evidence that guarantees recognition of the designation as well-known; in accordance with paragraph 17 of the relevant administrative regulation documents containing the following information:on the intensive use of the designation, in particular, on the territory of the Russian Federation;about countries where the designation has become widely known;information about the costs incurred for advertising the designation (for example, annual financial statements);on the value (value) of the trademark in accordance with the data contained in the annual financial statements;on the results of a survey of consumers of goods on the issue of common knowledge of the designation, conducted by a specialized independent organization.  At the same time, the practice of successfully canceling Rospatent's refusals to recognize designations as well-known is much greater than the reverse one. In most cases, refusals are considered invalid either due to Rospatent's unjustified evasion from analyzing the evidence or its misinterpretation of the concept of "common knowledge."For example, if Rospatent ignored that public knowledge may be a consequence of intensive use of the trademark and the result of "a long, well-known history of designation," as in the trademark case UAZ.In case N C01-1371/2020, the court overturned the refusal of Rospatent concerning the designation "РОЛЛТОН" for another reason – the authority mistakenly proceeded from the need to prove the wide popularity of the applicant and not the designation. At the same time, the determining factor is the general knowledge of the claimed designation to consumers and not the knowledge of the applicant who applied for recognition of the specified fact.In trademark case МЕРКАТОР, Rospatent incorrectly assessed a different factor - the lack of positive dynamics in the copyright holder's financial performance- and considered it a ground for refusing to recognize the designation as well-known.Rospatent's refusal to recognize designations as generally known remains in force if the court confirms that the conditions for such recognition are not met. For example, in the case of the designation "Baikal", the applicant could not challenge Rospatent's refusal since only a combined trademark could be recognized as well-known БАЙКАЛ, which does not yet indicate that its verbal element is generally known.In accordance with clause 3 of Article 1508 of the Civil Code of the Russian Federation, legal protection of a well-known trademark also applies to goods that are not homogeneous with those for which it is recognized as well-known. Still, only under certain conditions-if, the use of this trademark by another person concerning these goods will be associated by consumers with the owner of the exclusive right to a well-known trademark. It may infringe on the legitimate interests of such an owner.However, courts do not always separately assess the existence of such associations. For example, in the case file N С01-32/2020 the court recognized the fact of the sign's common knowledge KAMAZ sufficient to extend legal protection to heterogeneous goods and pointed out that the use of confusingly similar designations with a well-known trademark poses a high risk of confusion in the minds of consumers.In the case of infringement of the exclusive right to a well-known trademark in a firm name, the same principle applies. In case N C01-23/2017 the right to the well-known Detsky Mir trademark was found violated as a result of the use of Detsky Mir Trading House in the brand name, despite the implementation of various types of activities by the plaintiff and the defendant.Violation of the right to a well-known trademark is covered by a separate paragraph of the Plenum of the Russian Federation Supreme Court No. 10 of 23.04.2019. However, concerning a fairly limited number of cases according to paragraph 158 of the resolution, the exclusive right violation to a well-known trademark maybe not only the use of a domain name but also the fact of a domain name registration that is identical to this well-known trademark or confusingly similar to it.For example, in case N C01-1248/2019, domain name registration kamas-tyumen.ru is recognized as a violation of the exclusive right to the well-known sign "KAMAZ" with reference to this resolution paragraph. The court stressed that the very fact of owning an Internet page, the domain name of which contains a designation that is confusingly similar to the plaintiff's trademarks, creates an opportunity for the defendant to attract potential consumers to his page.With reference to clause 3 of Article 1508 of the Civil Code of the Russian Federation, sub-clause 4 of clause 2 of Article 1512 of the Civil Code of the Russian Federation allows invalidating the grant of legal protection to a trademark if it was granted to a trademark with a later priority in relation to a well-known registered trademark of another person. At the same time, it has been repeatedly noted in court practice that the list of grounds for challenging trademark registration is broader than the list of grounds for refusal of registration - in Article 1512 of the Civil Code of the Russian Federation, we are talking about the recognized well-known registered trademark 1483 of the Civil Code of the Russian Federation - about a well-known trademark, which may be a designation that is not registered as a trademark.In cases, N M & A-1071/2019 and N SIP-687/2019 the copyright holder of the well-known trademark "ARARAT" unsuccessfully tried to cancel the registration of the mark ARARAT. Although the main reasons for the refusal were the lack of similarity to the point of confusion between the designations and the heterogeneity of goods, the Intellectual Property Court also spoke about general requirements for revoking registration on this basis.The court, responding to the argument about the well-known nature of the applicant's trademark, pointed out that in relation to heterogeneous goods/services, the registration of a trademark can be challenged and declared invalid if the following conditions are simultaneously met:there is a registered trademark of another person recognized as well-known on the territory of the Russian Federation;the disputed trademark has a later priority date in relation to the well-known one;the use of a disputed trademark in relation to heterogeneous goods/services will cause associations with the right holder of a well-known trademark;the use of the disputed mark concerning heterogeneous goods/services may infringe on the legitimate interests of such owner.In another case, on the contrary, the trademark "Pesnyary", which was identical to the well-known one, was initially declared invalid only partially, since a number of goods and services had a different purpose than those for which the well-known trademark was registered.Rospatent pointed out that "the established popularity of the opposed well-known trademark ...does not give rise to plausible associations associated with the same manufacturer in relation to the listed goods and services."However, at the right holder request of a well-known trademark, the court reversed this decision, explaining that it is necessary to analyze the possibility of extending the legal protection of the opposing well-known trademark to goods that are heterogeneous with those for which it is recognized as well-known, but only after evaluating the associative relationships among consumers between heterogeneous goods and the well-known trademark right holder. Rospatent considered such associations absent only on the basis that it recognized goods and services as heterogeneous after registering a well-known trademark.The court also stressed that, contrary to the opinion of Rospatent, the lack of evidence of the production of heterogeneous goods (services) by the right holder of a well-known trademark does not in itself exclude infringement of the latter's legitimate interests.
Trademarks and Mandatory Labeling Interplay in Russia
In order to confirm the authenticity of goods and the legality of their origin, they are labeled. Such labeling can be called a kind of quality mark. Initially, excise stamps and holographic stickers were used for labeling in Russia, and a narrow list of goods was subject to labeling, among which were alcohol and tobacco products, as well as audiovisual works. This list of goods was due to the extremely high level of counterfeit and fake goods in these markets.Over time, unauthorized production and sale of goods expanded in other industries as well. In order to counteract offenders, the list of goods that must be marked was also expanded. The nature of the applied symbols has also changed and improved. Now, to confirm the authenticity of the goods, a unique digital code, which is protected by cryptography, is applied to the packaging of each product unit.In 2018, the Russian government approved the following list of goods that will also be subject to mandatory labeling starting in 2019.·        Tobacco products;·        Perfume and eau de toilette·        New pneumatic rubber tires and tires ·        Clothing, including work clothes, made of leather or composite leather·        Shirt-waists and shirt-waists knitted machine or hand-knitted, women’s or girl’s·        Coats, short coats, capes, raincoats, jackets (including skiing), windbreakers, jackets, and similar products·        Linen bedding, tableware, toiletry, and kitchen·        Footwear·        Cameras (except movie cameras), flash cameras and flash lampsIt is worth noting that by 2024, it is planned to create a system of continuous product labeling in Russia. That is, all categories of goods will be labeled. Thus, over time, any product, regardless of whether it is produced in Russia or imported from other countries will be marked with a special means of identification, which is a generated digital code. The use of such a code makes it possible to trace the entire “path” of a product, identify its manufacturer, distributor, and so on. Of particular interest is the following question: how does compulsory labeling relate to a trademark?At first glance, the only thing in common between the concepts is that they are signs that are applied to goods, as a digital code; albeit a digital, but still a designation.Owning a registered trademark is the right of the person. In turn, labeling is a prerequisite for the legal sale of goods in Russia. A trademark has a rightsholder with exclusive rights, which can make a profit by concluding a franchise agreement or alienating the trademark. The procedure for securing a trademark on the goods is different. Thus, each item of goods is subject to mandatory labeling, and one type of product, for example, shoes, one manufacturer, or distributor will be identified by the same code. At the same time, one person can register several trademarks for one type of goods; for example, several designations for different lines of shoes.Although from the legal point of view the use of these signs does not intersect in any way, there is still some element of interaction between these institutions. Taking into account the possibility to read various information from the digital labeling code, Rospatent concluded on the possibility of successful interaction with the company responsible for the mandatory labeling of goods. Thus, in February 2021 Rospatent, the Ministry of Industrial Trade of Russia, and Operator-CRPT, the Operator of the product labeling system, signed an agreement on information interaction and data exchange. Now, the patent office will have access to the information indicated by the owner of the goods during the mandatory labeling of goods, including trademarks.Grigory Ivliev, the head of Rospatent, comments: “Through this cooperation, we will be able to reconcile trademarks declared in the labeling system with information about them in Rospatent. The labeling system will contain information about the trademarks, which indicate its participants. Watchdog agencies will receive information about companies that use trademarks but have no rights to them, and information about goods with such trademarks.Thus, we can note a positive trend for trademark owners. The interaction of the above-mentioned institutions will allow to track the distributors of counterfeit goods and reduce the use of trademarks which is uncoordinated with the right holder.Originally published in World Trademark Review
Slogan as a Component of Corporate Identity and Slogan Protection Under Trademark Law in Russia
Modern marketing strategies require manufacturers not only to provide high-quality products, but also to pay a lot of attention to the promotion and popularization of their own brand. In this case, the brand consists of a set of objects that form the company’s image. Such should include brand name, trademarks and other means of individualizing, logos, slogans, business reputation, and other intangible assets of the enterprise, which affect the image.Some of these objects can be registered in the patent offices and provide recognition of the owner’s rights at the nationwide level. Others, such as a company’s reputation, are not subject to registration, but this does not mean that such concepts are not recognized. The difference in legal protection regimes affects the degree of protection of an object: official registration or another way of certifying rights, such as escrow, makes it possible to clearly identify the owner's property, determine the beginning of ownership and confirm the owner’s exclusive rights. This makes it easier to prove a person’s entitlement, and the protection of interests in registered intangible assets becomes more effective.Articles 1477-1515 of the Civil Code of the Russian Federation deal with trademark and service mark rights. According to the provisions of the said rules of law, trademarks among others also include verbal designations registered as required.It should be noted that these kinds of trademarks are traditional signs, and most often these objects consist of one or more words in the original graphic style. The right holder may use a means of individualizing on a label, in the name of the domain name, advertising, etc. Quite often, along with such trademarks, companies use slogans. If you compare the slogan with a trademark consisting of one or two words, the first can be called a charactonym. This name can be explained as follows: the slogan is a short phrase that carries a certain idea, describes and characterizes the company’s policy and in such a way says something to the consumer. For example, one of the Adidas company slogans sounds like: Impossible is Nothing. Thus, the manufacturer declares that its customers are capable of anything. That sounds promising.Unlike standard one-word trademarks, a slogan is created for active use in advertising campaigns, to be seen and heard by the customer, and to reflect the needs and priorities of the intended target group. It is also worth noting that the slogan is a very dynamic designation, which changes together with the needs of customers under the right internal company policy. So, all the well-known Nike slogans Just do it! and the Coca-Cola company slogan Taste the Feeling changed with the arrival of the pandemic caused by COVID-2019. Nike now calls for Play inside, play for the world, and Coca-Cola declares Be Open Like Never Before. In this way, the companies communicate the necessity of following safety rules to prevent infections and ask to help each other in these times of turbulence.The above-mentioned examples show that companies actively use slogans, thus entering a dialogue with consumers. At the same time, slogans, along with simple verbal trademarks, also become the subject of unfair actions by offenders. This raises the logical question: “Can a rightsholder protect its slogan?” Fortunately, the answer is positive. Under the Russian trademark law, there are no provisions prohibiting the registration of trademarks, consisting of 3 or 4 words. Therefore, provided other requirements are met, the slogan can be registered as a trademark. This is exactly what Nike did, securing the famous slogan Just do it! the status of a trademark in Russia.Originally published in World Trademark Review
Imported goods, false advertising and trademarks – CIS countries strengthen consumer protection
Economic areas are no longer limited to geographical regions, as e-commerce has made products from local manufacturers available to consumers across the globe. While this is a positive for businesses, there are some negative side effects, including an increase in the volume of counterfeit goods and parallel imports, and the potential for consumers to be misled about the manufacturer and/or quality of products.Following the creation of the Eurasian trademark registration system and the need to improve the legal framework surrounding the protection of IP rights in Commonwealth of Independent States (CIS) countries, on 9 December 2020, the CIS Economic Council held its 88th meeting, where it approved the new draft of the Agreement on Measures to Prevent and Combat the Use of False Trademarks and Geographical Indications.Article 1 of the agreement states that a “false trademark is a trademark used by a third party infringing the rights of the trademark owner, or a trademark containing false indications of the origin of goods, as well as data or such an element that could mislead consumers”. The signatories aim to strengthen interstate cooperation to counteract goods with such trademarks entering the CIS trade area.According to the analytical report of the Eurasian Economic Commission established within the Eurasian Economic Union (EAEU) – which includes CIS countries Armenia, Belarus, Kazakhstan, Kyrgyzstan, and Russia – between January and December 2020, the volume of imports to the EAEU amounted to $258.4 billion, with 82.7% being delivered to Russia. These high figures indicate the need to pay additional attention to consumer interest, which has resulted in a tightening of control over online sales involving foreign stores.According to the official CIS website, consumers in EAEU member states are often misled, as the goods supplied to EAEU markets often differ in quality indicators to similar goods of the same producer supplied to the European market. To resolve this issue, a certification of imported products will be introduced, which will confirm compliance with EAEU technical regulations.Trademark owners that supply goods to the Russian market in the near future will be provided with additional measures to protect against the unauthorized use of their marks. There are also plans to introduce a notification process for goods to comply with the technical regulations on quality and safety in the EAEU.On the one hand, this process will complicate the conditions for selling imported goods in Russia. On the other hand, it will make it possible to confirm the quality of the goods supplied and their relationship with similar goods produced for consumers in other countries. It is worth assuming that certification will foster consumer loyalty for a certain product and trademark.Originally published on World Trademark Review
Registrability in Russia: alike objects as trademark and industrial design
Registration of a trademark abroad allows the right holder to provide the necessary level of protection of the designation for trade on the territory of a foreign country. If we consider Russia as a foreign country from the perspective of the trademark owner, it should be noted that the visual identity registered in Russia, regardless of the citizenship of the right holder, the same protection is provided, regardless of whether the company is Russian or foreign.In certain cases, when desired, the right holder may strengthen the protection of the object. To do so, it is possible to register it with Rospatent not only as a trademark but also as an industrial design. According to the current Russian legislation, a number of objects have been simultaneously regulated by the rules of law on trademark and the rules of law on industrial design.According to paragraph 1 of Article 1482 of the Civil Code of the Russian Federation (hereinafter the Civil Code): “Verbal, pictorial, volumetric and other designations or combinations thereof may be registered as trademarks”. At the same time, clause 1 of Article 1352 of the Civil Code states: “As an industrial design, the solution of the external appearance of a product of industrial or artisanal and handicraft production is protected”. Thus, the analysis of the above rules of law leads to concluding that some objects may simultaneously correspond to both the description of trademarks and the description of industrial designs. For example, the original form of product packaging, unique graphic design of the appearance of products, and the like may become both a trademark and an industrial design. Do the Russian legislative bodies consider such a situation in detail? No. Is there a possibility of simultaneous registration as two different objects? Yes, however, it is important to note that in such a case, the rules of the Civil Code contain an indication of the possibility of such actions only if the owner or applicant of the trademark and the owner of industrial design are the same person. This can be considered as a preventive measure in order to minimize the likelihood of a conflict of rights of the owners of intellectual property and the possibility of misleading consumers. In addition, it should be noted that as a result, in case of a positive decision of the experts of the patent office, two independent objects will be registered, and the applicant will have a certificate of trademark and a patent for an industrial design. That is why the applications for registration of these objects are filed separately. At the same time, all the stages of examination and requirements for compliance with the conditions of protectability are imposed on each object separately, in accordance with the requested protection. Thus, it is possible that in the end only a trademark or only an industrial design will be registered.Why would the right holder try to register the object as different types of intellectual property at the same time? Thanks to this, the owner will have cross-protection, which implies simultaneous protection as different types of intellectual property, namely a trademark, and visual identity. It can also be noted that the registration of a design, in addition to the trademark, will help to minimize the likelihood of registration of a design identical to the trademark by unscrupulous businessmen.To summarize the above, we can note the following:Registration of the object as different types of intellectual property allows the company to expand the scope of the legal protection of the object.By providing cross-protection, the right holder minimizes the risk of conflict of rights with the rights of others.Such protection can be considered a kind of insurance because if the protection of one type for any reason is canceled, the protection of the other type will continue.The above conditions allow us to conclude that it is advisable and justified to have cross-protection.Originally published on Trademark Lawyer, issue 4
The competition of the rights to different means of individualization in the defense of the exclusive rights
Despite the fact that the right to any of the means of individualization is exclusive, and the legal regulation of their statuses seems unambiguous and well-established, the “conflicts” of these subject matters and appropriate legal collisions often occur, which are aggravated by the fact that the protectability conditions are different, and the norms cover not all cases of the correlation of the subject matters. The majority of the conflicts in this field occur due to the fact that the players of particular markets use similar trademarks and company names, less often - commercial designations. Whatever the reasons for such similarity (intentional use of someone else’s reputation or an accidental coincidence) may be, the result may be confusion in the eyes of the consumer of products, works, services, and the legal entities themselves. The rules for the correlation of a part of the means of individualization are directly stipulated by the Civil Code of the Russian Federation. For example, Article 1476 and Paragraph 1 of Article 1541 of the Civil Code of the Russian Federation establish the criteria for the correlation of the rights to a company name, a commercial designation, and a trademark, according to which the company name (its elements) may be used in the commercial designation or the trademark of one and the same right holder being protected independently of each other.  Similarly, according to Paragraph 2 of Article 1541 of the Civil Code of the Russian Federation, the commercial designation (its elements) may be used by the right holder in the trademark belonging to him. Courts stressed repeatedly that the commercial designation is an independent means of individualization, that is, its legal protection is autonomous and it does not depend on the legal protection of any other means of individualization, including the trademark belonging to one and the same person. However, it is obvious that the functions of the means of individualization and the fields of their application should not be confused, and this is confirmed by the law enforcement practice. For example, in case No. A43-8220/2018 on the recovery of damages for the violation of an exclusive right to the trademark “SINTEC,” the defendant tried to substitute the functions of the trademark and the company name: referring to the legality of using the mark due to the fact that the disputed products, when bought, had already been marked with the plaintiff’s trademarks, including a part of the company name of one of the persons, who had introduced the products into circulation (LLC “Scientific and Production Company “Sintek”), and the exclusive right to that name had arisen earlier than the priority date of the plaintiff’s trademark. But the court pointed out to the fact that the exclusive right to the use of the own company name as a means of individualization in any way that does not contradict the law does not mean that such designation may be used as a means of individualization of the products (the trademark) without the state registration as such. Furthermore, when the company name is included in other means of individualization, other problematic situations are possible – for example, if the company name is changed, the means of individualization, in which it has been included, will remain unchanged; or if the legal entity ceases its activity under the particular name (as a result of liquidation or reorganization), the right to the company name will also cease to exist, while, for example, the commercial designation that has included it may already belong to another right holder, for example, to a legal successor – thus, the subject matters of one order may belong to different persons. In addition, the mechanism for preventing a conflict between the rights to different means of individualization is contained in Article 1483 of the Civil Code of the Russian Federation, according to which, under particular conditions, the trademarks competing to the identifiers of alcoholic beverages originating from the territory of the state and having particular properties (Paragraph 5), to the geographical indication, the name of the place of origin of the product (Paragraph 7), the company name or the commercial designation (Paragraph 8) cannot be registered. The basic norm that regulates the conflicts of the means of individualization is Paragraph 6 of Article 1252 of the Civil Code of the Russian Federation, which establishes a principle of priority of senior subject matters, which is sometimes called a seniority principle. If the different means of individualization (the article enumerates the company name, the trademark, the commercial designation) turn out to be identical or confusingly similar, and as a result of this, the consumers/counterparts can be misled, the advantage shall belong to the means of individualization, the exclusive right to which has arisen earlier, or, in the cases of establishing a priority under the Convention or an exhibition priority, to the means of individualization, which has a senior priority. A similar rule also acts in the case of the confusing identity/similarity of the means of individualization and the industrial design. This rule is widely applied in practice - for example, in cases No. A36-13477/2017 and No. A14-19259/2017, where the defendant’s commercial designation competing to the plaintiff’s trademark “Armada” allowed the court to establish the absence of a violation based on the earlier emergence of the exclusive right, although the designations were similar and the activity was homogeneous. In case No. A63-3960/2019, the court, though recognizing the confusing similarity between the trademark “Continental” and the name of the Commercial Bank “Continental,” as well as the homogeneity of the services, dismissed the claim due to the earlier date of the registration of the bank name. Sometimes, in practice, one can find a peculiar interpretation of the moment from which the right to the means of individualization emerges, in particular, to the company name. For example, in case No. A31-14529/2019, the plaintiff-right holder of the trademark “Korolevskoye” considered mistakenly that the change in the organizational legal form of the legal entity (without changing an arbitrary part) entailed a new countdown of the validity of the exclusive right, consequently, the defendant acquired the right to the name later. The main criteria, which existence allows counting upon upholding the claim in the event of a conflict of the means of individualization, are the following:the distinctive ability of the designations that is legally inherent in each means of individualization;the confusing similarity of the designations;the homogeneity of the products and services. If one of the criteria is not proved, this shall entail dismissing the corresponding claim.  For example, in case No. A40-236550/2019, there was a conflict of several similar trademarks “СИТАЛ” and “SITAL” - on the part of the plaintiff and on the part of the defendant, but this did not save the latter from the need to pay damages, since the products in the defendant’s trademark certificate were not identical or homogeneous with respect to the products for the individualization of which the defendant had used the designations, thus, referring to the availability of the means of individualization did not lead to dismissing the claim. The cases on the competition of the trademarks and the company names are very common. For example, in case No. A50-908/2020, the court established the senior priority of the plaintiff’s trademark “Muravey,” and it naturally upheld the claim for damages on the part of the company “Muravey+,” which was engaged in identical activities. In case No. A40-177805/2019, the company names of the plaintiff and the defendant (“ASHLEY GROUP” and “ASHLEY DECOR”) were confusingly similar, but the companies were engaged in the activities with different core activities; at the same time, their activities coincided in respect of the activities indicated in the Unified State Register of Legal Entities as the additional ones – it is in their respect that the court prohibited to use of the company name. The cases on the defense of the exclusive right to the commercial designation are less common in practice. For example, case No. A17-545/2019 is notable for simultaneous filing two claims in respect of the designation “ZOZH” – for the protection of the exclusive rights to the commercial designation on the part of the plaintiff and for the protection of the right to the trademark - on the part of the defendant as a counterclaim. The activities of the parties were similar, the designations were confusingly similar, however, the plaintiff proved the emergence of the exclusive right to the commercial designation a few months prior to the defendant’s file of an application for the trademark, this was a conclusion of the first-instance court, which upheld the claim.  The cassation considered the case and sent it for a new consideration, pointing out to the fact that the start of using the designation did not yet confirm the acquisition of the distinctive features and special popularity, as required by Paragraph 1 of Article 1539 of the Civil Code of the Russian Federation, and that in order to establish the fact, whether the person had the exclusive right to the commercial designation, it was necessary to establish whether the disputed designation existed, whether it was used by the particular person to individualize a particular entity, since which moment such use had started, and whether it continued. The Intellectual Property Court also stressed that, in addition, it should be established separately, whether the commercial designation possessed sufficient distinguishing features and whether there were the appropriate proofs of popularity acquired by it at a particular territory. Thus, it can be noted that in practice, the conflict of the exclusive rights to the means of individualization occurs quite often, while the seniority principle established by the Civil Code of the Russian Federation prevails; however, there are certain nuances as well, while applying this principle.
Amendments to Design Application
To register a design in Russia, the right holder should contact Rospatent. The submission of documents for registration is allowed in the traditional paper or electronic form.A person has the right to independently prepare and send an application or use the services of a competent representative. Foreign citizens must interact with the patent office through a patent attorney.A number of requirements are imposed on the application materials:Use Russian language for filing.The application form is established by Rospatent. The right holder fills in all the columns in the document.The text indicates the true information about the owner of the intellectual property.At the end, the document is certified by the signature of the submitter.When applying for registration, the applicant sends to Rospatent:The application for a patent.A set of images.A drawing of the general appearance and a team chart, if they are necessary to reveal the essence of the declared object.Description of the industrial design.Document on the payment of the state duty.After Rospatent receives the application, specialists carry out a formal examination and check the correctness and completeness of filling in the declared documents.In the “Articles” section, a lawyer from Zuykov and partners describes the procedure for filing an application for patenting an industrial design in detail.
Trademarks which may be considered pseudo-foreign and outlines its application by the Russian companies
One of the prerequisites for the profitable sale of goods in today’s commercial spaces is the use of a trademark on products. Such an identity allows buyer to distinguish the product among similar ones and make it memorable and recognizable. The brand identity development is the first of the stages on which the success of the future designation depends.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.
Best possible ways of trademark registration abroad
If the entrepreneur has decided to start trading in foreign markets, it is important to pay attention to the protection of the trademark in the selected states.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 officeIf 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 trademarksWhen 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 agreementsIn 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.
About the advantages of using a well-known trademark and the special conditions that must be met in order to register such a trademark in Russia
Pursuant to paragraph 1 of Article 1508 of the Civil Code of the Russian Federation (hereinafter the Civil Code), a trademark may be recognized as well-known: “...if this trademark or this designation as a result of intensive use has become widely known in the Russian Federation among relevant consumers in respect of the applicant's goods on the date specified in the application”. It is important to note that such status can be assigned to a trademark legally protected in Russia, as well as to a designation which is not registered in the Russian Patent Office. Thus, the owners of trademarks registered in other countries also have the right to apply for and register with Rospatent a well-known mark. However, in order to do that, the right holders need to prove and confirm the long-term use and prominence of the trademark in the territory of the Russian Federation.Recognition of a trademark as a well-known 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 well-known 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 well-known trademark and may infringe the legitimate interests of such owner”. This rule allows the holder of the well-known 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 well-known 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 Well-known Trademark in the Russian Federation contains an extended description of the procedure and conditions for the recognition of a trademark as well-known 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 well-known 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 well-known 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.
Celebrity Branding: Famous Names and Pseudonyms as Trademarks
Increasingly, celebrities are beginning to sell various products by announcing their uniqueness and putting their own name on them. This article explains why in such a case it is worth registering the name or pseudonym as a trademark.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:If a person has begun to use his or her own name or pseudonym as a trademark, which can be considered original in terms of use as a trademark for certain goods or services;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.
Pandemic Impact on Trademarks
How the pandemic hasaffected the number of trademark registrations in Russia, which countries Russian applicants most often apply for trademark registration abroad, and from which foreign countries applicants most often file trademark applications with Rospatent.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.Source: Rospatent: 2020 Annual ReportThe 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.Source: Rospatent: 2020 Annual ReportAs 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 ReportAlso, 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.Source: WIPO «World Intellectual Property Indicators 2020Despite 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.Author of materialOlga PlyasunovaHead of Department / Trademark Attorney
UK Trademark Registration: What has Changed Since Leaving EU
Let us analyse legal framework in the UK that governs trademarks registered with the European Patent Office and see where to apply now to obtain legal protection for a trademark in England.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.Herewith: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 applicationsGiven 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.
Trademarks: Consumer Surveys
The use of a trademark helps consumers memorize products and choose them in the future. In this case, the sociological survey can help the right holder to prove the recognizability and originality of their own trademark.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 trademarkAccording 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.1These 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 consumersCurrently, 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.
Rebranding: Reasons, Examples and Legal Framework
Changeability is one of the governing characteristics of the contemporary world. Everything and everywhere is changing and transforming: information is updated regularly, thanks to the public availability and openness of information and the Internet, discoveries and achievements are made faster, people are constantly communicating and often change their preferences.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.
Trademark vs. Corporate Identity and Brand Name
Often enough, the above terms are used as synonyms in newspapers and magazines, as well as in spoken language. Is such use permissible? Is the legal protection of these types of intellectual property the same? Let us take a deeper look. 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. 
Why trademark can be cancelled?
A trademark can be cancelled if it is no longer in useOften 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 certificateEarly cancellation of legal protection in regard to some goods and/or services that trademark holder cannot prove using or that the applicant is not claimingA 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 UseTrademark 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-knownAny 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.Service: Cancellation of the legal protection of a trademark
Benefits of Using Notorious Trademarks
Without referring to the current rules of law and analyze the term “notorious” (well-known) trademark, we can conclude that it is a visual identity which has an immediate connection in the minds of the consumers with a specific product or service and the source of that product or service. It is worth assuming that the risk of confusion of such a trademark with other, similar designations is higher. In this regard, it is logical to combine such visual identities in a special category and provide a special legal regime for them.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.
Certificate of Trademark: Possible Modifications
Upon sealing with Rospatent on registration of brand, property specifications and information about the right holder shall be recorded onto the Public Register of Trademarks and Service Marks of the Russian Federation. The owner of the visual identity shall be issued a certificate.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.Application.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/tableConsent 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.
Design Patent: Possible Modifications
When the result of the examination of the claimed intellectual property is positive, Rospatent experts endorse the registration of the design invention. Information about the owner and the design are recorded onto the State Register of Design Inventions of the Russian Federation (hereinafter the State Register) and the applicant is granted a patent certifying the legality of his powers. Thus, if the owner of an existing document of title wants to make any modifications, such modifications have to be recorded in both the patent and the State Register.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.
What the Future May Hold for Trademark Registration by Individuals in Russia
Under the legislation in force, as provided by Article 1478 of the Civil Code, the owner of the trademark must have status of a legal entity or an individual entrepreneur. The nature of this provision is determined by the description and purpose of the visual identity. Both trademark and service mark are a creation to identify a business product used or intended to be used to identify and distinguish homogeneous or similar goods and services on the market from those of another provider.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[1].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.
The first practice of the registration of geographical indications
On July 27, 2020, the amendments to Part 4 of the Civil Code of the Russian Federation dedicated to the introduction of the new legal Institute of the geographical indications in Russia came into force.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.
Filing a divisional application for an industrial design – a procedure and why it may be necessary
According to Paragraph 1 of Article 1352 of the Civil Code of the Russian Federation, the following shall be related to industrial designs: “the implementation of the appearance of the article of an industrial or handicraft manufacture.... The essential features of an industrial design shall include the features that determine the aesthetic peculiarities of the appearance of the article, in particular a shape, a configuration, an ornament, a combination of the colours, lines, the contours of the article, the texture or facture of the material of the article.”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 applicationSuch 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.
A trademark priority – on what date it can be established by the Office
The entrepreneurs and the manufacturers of products are aware and recognize the need of the use and the protection of trademarks. This is evidenced by the high number of the registered subject matters of intellectual property in this field. According to the Annual Report of Rospatent for 2019, the experts of the Patent Office received 87,509 applications for trademarks, 35,511 requests for the registration of inventions, 17,878 applications for the registration of programs for electronic computing machines, 10,136 requests for the grant of the legal protection to utility models and 6,920 applications for the registration of industrial designs. For clarity, the information is shown in the diagram. TrademarksInventionsPrograms for Electronic Computing MachinesUtility ModelsIndustrial DesignsOther 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.
How to register a trademark in the country that is not the member of the Madrid System for the registration of trademarks
The use of a trademark on the international market requires a serious approach to the full defense of a designation. It is advisable to register the subject matter of intellectual property not only at the territory of the state, where the company is located, but also in the countries, where the right holder plans to be engaged in business activities.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. 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.
How to file an international application using the Madrid System of the registration of trademarks
The international registration of the means of individualization according to the Madrid System procedure is carried out in order to simplify the registration of designations in the countries that are the parties to the Madrid Agreement Concerning the International Registration of Marks of 1891 and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks of 1989.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.
How should the applicant act if he has received a notification from Rospatent about the results of verification of the claimed designation with the requirements of the law?
If the means of individualization meets the conditions contained in part four of the Civil Code of the Russian Federation, it is registered by the federal executive body. Otherwise, in accordance with paragraph 3 of Article 1499 of the Civil Code of the Russian Federation the applicant is sent a notice of the results of the verification of the designation.This state of affairs allows us to highlight the following significant circumstances:• A notification is sent between the completion of the substantive examination and the adoption of the final decision by Rospatent on the refusal to provide legal protection.• The applicant is given the opportunity to influence the final conclusions of experts, which are drawn up based on the results of the trademark verification.A notification is a written document. It contains a motivated examination position with a description of the reasons for which a decision of refusal to register the designation (for the entire list of declared goods and / or services or parts of them) will be presumably made, and it also suggests the applicant submit his own arguments regarding the current situation.Depending on which of the patentability conditions the trademark does not comply with, the notification may indicate:• The presence of an already registered trademark / claimed designation with an earlier priority, which may be recognized as identical or similar to the extent of confusion with the declared object.• The absence of a verified designation distinctiveness.• The possible likelihood of misleading the consumer regarding the type of product, manufacturer, place of origin.• On the mismatch of the trademark with other conditions of protection, for example, when the object contains elements that are contrary to the principles of humanity and morality.Sometimes, in a notification, the specialist indicates elements, the removal of which will increase the protectability of the trademark. For example, if the combined designation contains an indication of the type of product, for example, “milk”, and the mark is declared for a wider list of goods, for example, “kefir, fermented baked milk, sour cream”, its exclusion allows registering the declared designation for a wider list of goods, i.e. the trademark will be granted wider legal protection. Or the applicant may be asked to refuse to register the means of individualization in relation to that part of the goods for which a trademark similar to the degree of confusion has already been registered. In this case, when registering a new trademark, the risk of confusing the objects will be minimized.If similar signs are found, the patent attorney, as a rule, offers the following actions:- filing a statement of claim with the Intellectual Property Rights Court on early termination of legal protection of a given mark in connection with its non-use, if the registration date of the opposed mark allows this to be done.- appeal to the rights holder of trademarks for a letter of consent to register the claimed designation. In this case, the decision on the acceptance or rejection of the letter of consent is the competence of the expert examination.- proof of the absence of confusing similarity of the signs as part of the response to the notification.The above list of grounds for refusal of registration, as well as methods and means of responding to them are not exhaustive.The applicant has the right to send a response with arguments justifying his point of view. In support of his position, it is advisable for the applicant to refer to examples of court decisions or Rospatent's practice in cases with similar circumstances.The received response is taken into account by experts when making the final decision on the trademark in question if the deadline for its submittal is not violated. In paragraph 3 Article 1499 of the Civil Code of the Russian Federation, the maximum term for the applicant to submit arguments for consideration is set: "... if they are submitted within six months from the date the notification was sent to the applicant." It is important to note that, unlike the response time to the examination request, the response time to the notification cannot be extended.Therefore, in case of receiving the notification, the applicant should:• Carefully study the grounds for refusal indicated by the expert in the notification.• Prepare a logical and motivated answer based on the current legislation in the field of trademarks, in which he has to give reasons in defense of the claimed designation, i.e. give reasons why the expert should draw a conclusion in favor of registering the designation.• In certain cases, consider the possibility of amending the claimed designation or make a decision to reduce the list of goods for which a trademark is claimed.• Send a response to the notification, taking into account the need to comply with the deadlines indicated in the text of the document.In conclusion, it is worth noting that the response to the notification can play a decisive role in determining the protectability of a trademark, and therefore we strongly recommend that you do not ignore the letters received from Rospatent and entrust professional patent attorneys to respond to such correspondence with the Patent Office.At the same time, the information set forth in the response to the notification should be informative and created in a comprehensible format for the specialist.
Correspondence from Russian Patent Office: what shall the applicant do if he received a request from
Introduction: The article describes the procedure for the applicant in case of receiving a request or notification of the specialists of Rospatent when examining the trademark applied for registration. Also substantiates the need for communication between the experts of Rospatent and the applicants and gives advices on the content of the response that the applicant directs to the patent office.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 examinationIn 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 objectThe 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.
How to apply for a designation of origin
The current stage of economic development of the society is characterized by fierce competition, partly due to the growth in the number of entrepreneurs. The main methods of competition are price and non-price competitions. The latter include actions to obtain a competitive advantage without using various changes in the value of a product or service. Non-price methods of competition are: improving product quality, improving design, adding new product properties, developing a corporate identity, etc.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.
What shall the applicant do in case of receiving a decision on refusal to register a trademark in Russia?
If Rospatent refused to register the trademark, the applicant has the right to appeal such a decision. The appeal will be examined by the Chamber for Patent Disputes.In the article describes the features of the consideration of cases in the Chamber for Patent Disputes and notices the possibility of further appeal of decisions by the applicant in court.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.
How to apply for an industrial design
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• electronicHow to choose an application methodBefore 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 designThe 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.
The system of the state regulation in the field of intellectual property in the Russian Federation
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.[1]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 5.4.10.7 and Paragraph 5.4.10.8 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.[2]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.
Is it possible to defend a geographical designation as a trademark?
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.”[1]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.”[2]  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.
How to individualize the products with geographical names at the consumer market
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.
The review of the legislative initiatives in the field of the defense of intellectual property
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 propertySumming 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.[1] 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.[2] 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.
The Rospatent’ approaches in respect of the registration of the trademarks for pharmaceutical drugs and BASs
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.[1]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 BASsLike 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.[2]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.[3] 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... .”[4] 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.[5] 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.
The confusing similarity of trademarks from the point of view of consumers and professionals: who is right?
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.[1] 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.”[2] 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 coincideThere 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.
The registration of trademarks in relation to BASs and medicinal products from the point of view of the coexistence of similar marks
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.”[1]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.[2]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.
BASs - what it is from the point of view of the registration of a trademark
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.”[1]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.”[2]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.[3] 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.[4] 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 (INN): why do manufacturers choose similar names for trademarks?
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.[1]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.[2] 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.[3] 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.[4]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.[5]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 “+,” “®.”[6] Thus, the approved and applied INN was withdrawn from the legal protection.Fig. 1In 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.
The differences between the international nonproprietary names and the trademarks at the registration of the medicinal 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 trademarksAs 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 productsFirst 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 International Nonproprietary Names of the medicinal products (INN) — what it means as applicable to the registration of a trademark
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.[1] 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.[2]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)[3], 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 trademarksTaking 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.[4] 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)[5] 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.
The peculiarities of an examination of the trademarks registered in respect of medicinal products
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 productsIf 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.[1] 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.[2] 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 productsThe 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 trends in the creation of the trademarks in the field of pharmaceuticals
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 trademarkDespite 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 fieldThe 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.
How to convert intellectual property to a source of the profits
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.
The ways of the monetization of intellectual property in Internet projects
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.[1] The foreign colleagues are even more optimistic and they predict an increase up to 3.49 trillion roubles.[2] 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 projectsDiscussing 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.
The role of intellectual property in the pharmaceutical industry
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 industryAccording 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.”[1] 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 industryThe 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.[2] 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.[3]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 industryThe 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.”[4] 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 industryReasoning 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.
Monetization as the best driver for the development of the intellectual property market
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