Natalia Polyanskaya

By registering a designation as a trademark, its owner receives the exclusive right to use such an object at his own discretion in any way that does not contradict the law. By virtue of paragraph 1 of Article 1484 of the Civil Code of the Russian Federation, such use implies not only the ability of the right holder to derive property benefit, but also to dispose of his exclusive right on the conditions determined by him. Despite the legal monopoly of the use of the exclusive right to a trademark belonging to the copyright holder, the current legislation still establishes some boundaries on his order, for example, when such an order concerns a trademark recognized as “well-known”. The disposal of the exclusive right to a well-known trademark by concluding a license agreement, a pledge agreement or another type of agreement does not raise any special questions, which cannot be said about the alienation of the exclusive right to such a well-known trademark.Let's start with the fact that, according to paragraph 1 of Article 1488 of the Civil Code of the Russian Federation, “under an agreement on the alienation of the exclusive right to a trademark, one party (right holder) transfers or undertakes to transfer in full its exclusive right to the corresponding trademark in relation to all goods or in relation to part goods, for the individualization of which it is registered, to the other party - the acquirer of the exclusive right.By virtue of paragraph 2 of Article 1490 of the Civil Code of the Russian Federation, “alienation and pledge of the exclusive right to a trademark, granting the right to use it under an agreement, transfer of the exclusive right to a trademark without an agreement are subject to state registration in the manner established by Article 1232 of this Code.”.At the same time, in accordance with paragraph 4 of Article 1234 of the Civil Code of the Russian Federation, “if the transfer of an exclusive right under an agreement on the alienation of an exclusive right is subject to state registration (paragraph 2 of Article 1232), the exclusive right to such a result or to such a means passes from the right holder to the acquirer at the time of state registration."When concluding an agreement on the alienation of the exclusive right to a well-known trademark, its parties may not suspect that the current legislation contains any restrictions on its disposal, which, as a rule, are clarified during the registration procedure mentioned above with the Federal Service for Intellectual Property (hereinafter- Rospatent). Such restrictions are related to the legal nature of a well-known trademark, which undergoes some changes when it acquires such a “status”, in comparison with the legal nature of a conventional trademark, so to speak.Thus, by virtue of paragraph 1 of Article 1508 of the Civil Code of the Russian Federation, “on the application of a person who considers the trademark used by him or the designation used as a trademark to be a well-known trademark in the Russian Federation, a trademark protected in the territory of the Russian Federation on the basis of its state registration or in accordance with an international treaty of the Russian Federation, or a designation used as a trademark, but not having legal protection on the territory of the Russian Federation, by decision of the federal executive authority for intellectual property may be recognized as a well-known trademark in the Russian Federation , if this trademark or this the designation as a result of intensive use of steel on the date indicated in the application is widely known in the Russian Federation among the relevant consumers in relation to the goods of the applicant. .A literal interpretation of the above national norm leads to the idea that the recognition of a trademark as “well-known” implies that consumers know and associate the specific right holder (applicant) with the goods/services for which this trademark is registered.In this context, case No. A40-149562/2021 is noteworthy, in which an application was considered to declare illegal the actions of Rospatent to refuse state registration of the alienation of an exclusive right, incl. to a well-known trademark under an alienation agreement concluded between Crostalia Trading LTD and Crostalia LTD. In refusing registration, Rospatent pointed out that the right holder did not submit documents confirming a stable relationship between the goods and the acquirer of the exclusive right to a well-known trademark.Agreeing with the conclusions set out in the judicial acts of the courts of the first and appellate instances, which invalidated the notice of Rospatent on the refusal to state registration of the alienation of the exclusive rights to a well-known trademark, the Intellectual Property Rights Court, in its decision dated October 20, 2022, referred to the provision of Article 6.bis of the Paris conventions and adopted resolutions of the AIPPI (International Association for the Protection of Intellectual Property), according to which a well-known trademark is a sign (designation) known to a large part of those persons who are involved in the production or use of the relevant goods, and in an obvious way associated with such goods as originating from a specific source.Taking into account the above, the Intellectual Property Court noted that “the above norms of international and national 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 be that the goods come from the same source, but the consumer does not have to identify the goods with a particular applicant.For the purposes of applying paragraph 1 of Article 1508 of the Civil Code of the Russian Federation, it is the declared designation that is generally known to consumers, and not the applicant who applied to the competent authority for recognition of the indicated fact of validity, is decisive. Therefore, the well-knowingness of a trademark does not mean the well-knowingness of a particular manufacturer.Thus, the well-knowingness of a trademark should be determined not in relation to a specific manufacturer, which may not be the same person as the right holder of trademarks (designations), but in relation to the company that is the source for the origin of goods under the designation applied for registration.A similar legal position is set out in the ruling of the Presidium of the Intellectual Property Rights Court dated October 11, 2020 in case No. SIP-961/2019.The above is important, since when alienating the exclusive right to a well-known trademark, it is also necessary to take into account paragraph 2 of Article 1488 of the Civil Code of the Russian Federation, according to which “alienation of the exclusive right to a trademark under a contract is not allowed if it may cause misleading the consumer regarding the product or its manufacturer."From the content of the above norms, it follows that registration of an agreement on the alienation of the exclusive right to a (well-known) trademark is not allowed if such alienation of the exclusive right contradicts its essence or may cause the consumer to be misled about the product / service or its manufacturer.According to the legal position of the Judicial Collegium for Economic Disputes of the Supreme Court of the Russian Federation, set out in Ruling No. 305-ES15-4129 dated February 10, 2017, in relation to paragraph 2 of Article 1488 of the Civil Code of the Russian Federation, misleading means cases where information about a product contained in a product a mark transferred to a new owner may create a distorted view of the product or its manufacturer, which can influence the decision of the consumer.In this regard, in paragraph 3.3.7.2. Order No. 186 dated December 29, 2009 “On Approval of Recommendations on Verification of Agreements on the Disposal of the Exclusive Right to the Results of Intellectual Activity or Means of Individualization” Rospatent explicitly states that "the alienation of the exclusive right to a trademark may be considered misleading when it is also carried out in relation to: - a trademark recognized in the established manner as well-known.".Since when alienating the exclusive right to a well-known trademark, due to its legal nature, there is a risk of misleading the consumer about the product / service or its manufacturer, Rospatent takes a more serious approach to checking such alienation agreements and registering the disposal of the right based on them.Based on the foregoing, we can conclude that in order to avoid being denied registration, according to judicial practice, it is necessary to stock up on documents that would indicate that the acquirer of the exclusive right to a well-known trademark is perceived by consumers as the source of origin of goods marked with such well-known trademark. Of course, such a task is simplified when the right holder and the acquirer are affiliated. At the same time, one of the ways to establish an associative relationship between a well-known trademark and the acquiring company as the source of origin of the goods marked by it, is to first grant such an acquirer the right to use this well-known trademark, for example, under a license agreement. After some time, the right holder will be able to transfer in full the exclusive right to a well-known trademark to such an acquirer.Summing up, as we can see, the alienation of the exclusive right to a well-known trademark has its own specifics, which requires more thorough preparation for the registration procedure and the implementation of additional actions in order to comply with the provisions of the current civil law.

In the conditions of active development of the economy and overcrowding of market sectors, its participants seek to distinguish their product or service from others in order to increase demand and, accordingly, profit. This is achieved, among other things, by promoting their own brand, which, as a rule, is an already registered trademark.By registering a trademark in his own name, a person receives the exclusive right to use it in any way that does not contradict the law, due to which an individualizing function is achieved that allows one to isolate one's own product. However, owning the exclusive right to a trademark, especially one that is widely known, may entail the need to protect it from individuals seeking to take advantage of the reputation built around such a trademark and the goods marked by it. In order to ensure the legitimate interests of copyright holders and suppress the illegal actions of violators, the current civil legislation provides for effective measures of protection and liability. However, in order to apply such protection and liability measures, certain conditions must still be met.Thus, by virtue of paragraph 3 of Article 1484 of the Civil Code of the Russian Federation, “no one has the right to use, without the permission of the copyright holder, designations similar to his trademark in relation to goods for the individualization of which the trademark is registered, or homogeneous goods, if in as a result of such use there will be a possibility of confusion."Based on the above norm, one of the qualifying signs of the illegal use of a trademark is the occurrence of the likelihood of confusion. But let's imagine a situation where a third party publishes information comparing its product and a competitor's product, including which a registered trademark is applied, especially when this occurs in a negative context. It turns out that in such a situation, the trademark is, as it were, “used”, but the conditions for the right holder to apply protection and liability measures do not arise within the meaning of Article 1484 of the Civil Code of the Russian Federation, since a third party uses the trademark not to individualize homogeneous goods and indicates a clear difference in goods and designations, their marked. Despite the fact that the described actions of a third party have signs of bad faith and may harm the person concerned, it seems that under such circumstances there are no grounds for suppressing them. In this case, Federal Law No. 135-FZ of July 26, 2006 “On Protection of Competition” provides for an article prohibiting incorrect comparison of persons and (or) their goods, qualifying such actions as an act of unfair competition. Let's figure it out.According to paragraph 7 of Article 4 of the Law on Protection of Competition, “competition is the rivalry of economic entities, in which the independent actions of each of them exclude or limit the ability of each of them to unilaterally influence the general conditions for the circulation of goods in the relevant commodity market.”.In turn, as unfair competition, the law defines any actions of economic entities (groups of persons) that are aimed at obtaining advantages in carrying out entrepreneurial activities, contradict the legislation of the Russian Federation, business practices, the requirements of integrity, reasonableness and fairness, and have caused or may cause losses to others business entities that are competitors have either been harmed or may be harmed by their business reputation (Item 9 of Article 4 of the Law on Protection of Competition).From the above definition of unfair competition, it follows that in order to recognize the actions of a certain person as unfair competition, a set of conditions must be established, namely:relevant actions should be performed by economic entities-competitors;actions should be aimed at obtaining advantages in entrepreneurial activity;actions must be contrary to the legislation of the Russian Federation, business practices, the requirements of integrity, reasonableness and fairness;these actions have caused or may be capable of causing losses to another economic entity - a competitor, or to damage its business reputation.At the same time, in addition to the indicated signs, for each of the elements of the violation, it is necessary to establish special signs inherent in one or another type of unfair competition.In accordance with Article 14.3. The Law on Protection of Competition “unfair competition is not allowed by incorrect comparison of an economic entity and (or) its goods with another economic entity-competitor and (or) its goods, including:1) comparison with another economic entity-competitor and (or) its product by using the words "best", "first", "number one", "most", "only", "only", other words or designations that create the impression about the superiority of the product and (or) the economic entity, without specifying specific characteristics or comparison parameters that have objective confirmation, or if the statements containing these words are false, inaccurate or distorted;2) comparison with another economic entity-competitor and (or) its product, in which there is no indication of specific compared characteristics or parameters or the comparison results cannot be objectively verified;3) comparison with another economic entity-competitor and (or) its product, based solely on insignificant or incomparable facts and containing a negative assessment of the activities of the economic entity-competitor and (or) its product.When determining an incorrect comparison, the antimonopoly authority uses the method “on the contrary”, indicating that an incorrect comparison should include one that is opposed to a correct one, and therefore an incorrect comparison should be understood as an inaccurate, incorrect comparison, the purpose of which is to create a negative image of competitors and the products they sell.Meanwhile, the antimonopoly authority separately notes that an incorrect comparison can be not only negative, when an economic entity seeks to belittle a competitor’s goods, praising its own, but also positive, when the reputation of a competitor’s goods is not weakened, but is used by such an economic entity (Letter of the FAS Russia dated December 24, 2015 No. IA/74666/15 “On the application of the “fourth antimonopoly package”).In addition, the information provided in such a comparison may be in principle reliable, but their arrangement or choice creates a certain incompatibility. Also, with an incorrect comparison, there is no comparison criterion or it is unclear, inaccurate, words and lexical devices with a negative connotation are used (decision of the Sverdlovsk OFAS Russia dated 10.01.2023 in case No. .2021 in case No. 011/05/5-64/2021).Since the comparison can be carried out both with a specific product of a competitor, and with all products of a certain category (for example, by using the phrases “the best”), the legislator has divided unfair actions by incorrect comparison into three categories.1.  The first type of incorrect comparison is related to an unlimited range of economic entities-competitors and (or) their goods (paragraph 1 of Article 14.3 of the Law on Protection of Competition).In this case , a form of impersonal comparison is formed with the superiority of such a person (goods) in comparison with any person (goods) acting or located in this product market.To specify the specified type of incorrect comparison, verbal markers were established in the norm of the law that allow one or another information to be attributed to an incorrect comparison, in particular, “the best”, “first”, “number one”, “most”, “only”, “the only " etc. Thus, it is presumed that the use of such words can create an impression of a product or its seller in an unreasonably superlative degree without objective prerequisites for this, since the indicated actually means the presence of other persons and (or) goods that are worse than a competing business entity ( decision of the Arbitration Court of the Moscow District dated September 13, 2018 in case N A40-223476 / 17).In order to satisfy legal requirements, the statements used must be accompanied by an indication of specific characteristics or comparison parameters that have objective confirmation, for example, reference to the result of relevant studies and the source of data (Resolution of the Plenum of the Supreme Arbitration Court of the Russian Federation dated October 08, 2012 No. 58 “On some issues of the practice of application by arbitration courts of the Federal Law “On Advertising”, decision of the Sverdlovsk OFAS Russia dated January 10, 2023 in case No. 066/05/28 -3423/2022 ).2.  The second type extends to an incorrect comparison with a specific economic entity - a competitor (goods) (paragraph 2 of Article 14.3. of the Law on Protection of Competition).The specified type of incorrect comparison implies the impossibility of using information, statements or other information about the competitor’s product or its properties, if this information does not disclose all the properties, characteristics and parameters of the competitor’s product, but concerns only a part of them or does not disclose them at all, and may somehow or in a way to give the consumer the impression that the competitor's product is clearly inferior in quality and other properties to the product to which the information is dedicated.In addition, the dishonesty of the above actions lies in the fact that the consumer is provided with incomplete information about the compared goods, misleading him regarding their properties and characteristics and creating a distorted impression of the manufacturers of such goods (decision of the Ivanovo OFAS Russia dated November 29, 2022 on case No. 037/01/14.3-180/2022).As a result of the Judicial Collegium for Economic Disputes of the Supreme Court of the Russian Federation, in its ruling dated March 20, 2017 in case No. А41-947/2016, it was noted that when carrying out actions to publish information containing a comparison of their goods with the goods of a competing economic entity, they must be refuted to the extent that they affect the competitor's products.3.  The third type of incorrect comparison must be built using incorrect logical operations, the reliability of which can neither be objectively confirmed nor refuted (paragraph 3 of Article 14.3 of the Law on Protection of Competition).In the case of the third type of incorrect comparison, the so-called reputational borrowing takes place, which consists in transferring the recognition of someone else's product to one's own produced and sold product, while simultaneously creating a negative connotation by belittling the competitor's product, which, suppose, has already gained a certain reputation, has established itself in the eyes of consumers and with a sufficient degree of probability is guessed by them, along with the presentation of a positive characteristic of their product by stating that a competing product is better according to minor or incomparable criteria (decision of the Chelyabinsk OFAS Russia dated 03.08. 2021).Based on the interpretation of the relevant provision of the law, the comparison should take place on the basis of significant and comparable characteristics of a competitor or his product, which will not contain and be perceived by the consumer as a discrediting activity of such a person or his product.Thus, it can be concluded that the current legislation contains not only civil law leverage against persons seeking to parasitize on the reputation created around a product or, for example, its manufacturer, but also administrative measures that can stop such dishonest actions.

When creating any object of intellectual property, the right holder, as a kind of remuneration, is granted the exclusive right to use such an object at his own discretion in any way that does not contradict the law, which causes the emergence of a so-called "legal monopoly" for this person. The presence of such a monopoly makes it possible not only to derive property benefits from the use of the result of one's intellectual work, but also the opportunity to protect it from encroachments by third parties.The essence of the exclusive right is reflected in Article 1229 of the Civil Code of the Russian Federation, which stipulates that “a citizen or legal entity that has the exclusive right to the result of intellectual activity or to a means of individualization (right holder) has the right to use such a result or such means at its discretion in any way not contrary to the law. The right holder may dispose of the exclusive right to the result of intellectual activity or to a means of individualization (Article 1233), unless otherwise provided by this Code.The right holder may, at its discretion, allow or prohibit other persons from using the result of intellectual activity or means of individualization. The absence of a prohibition is not considered consent (permission).Other persons may not use the corresponding result of intellectual activity or means of individualization without the consent of the right holder, except for the cases provided for by this Code. The use of the result of intellectual activity or means of individualization (including their use in the ways provided for by this Code), if such use is carried out without the consent of the right holder, is illegal and entails liability established by this Code, other laws, except for cases when the use of the result of intellectual activity or means of individualization by persons other than the right holder, without his consent, is allowed by this Code.It follows from the above norm that the exclusive right to use, dispose and protect the result of intellectual activity or means of individualization belongs initially to the right holder.In addition to the general methods of protection given in Article 12 of the Civil Code of the Russian Federation, civil law also provides for special ones - specifically for exclusive rights which are listed in article 1252 of the Civil Code of the Russian Federation, where the right holder has the right, among other things, to demand: recognition of the right; suppression of actions that violate the right or create a threat of its violation; indemnification/recovery of compensation; seizure/destruction of the material carrier in which the object of intellectual property is expressed; publication of the court decision on the violation committed.At the same time, the current legislation provides for “natural” or “contractual” mechanisms for restricting the legal monopoly that the right holder has by disposing of his rights, including under a license agreement under which the right holder has the right to grant an exclusive or simple (non-exclusive) license.So, by virtue of paragraph 1 of Article 1236 of the Civil Code of the Russian Federation , “a license agreement may provide for:1) granting the licensee the right to use the result of intellectual activity or means of individualization with the licensor retaining the right to issue licenses to other persons (a simple (non-exclusive) license);2) granting the licensee the right to use the result of intellectual activity or means of individualization without retaining the right of the licensor to issue licenses to other persons (exclusive license).Moreover, according to paragraph 2 of the above article, as a general rule, the licensor, among other things, is deprived of the right to independently use the intellectual property object within the limits granted to the exclusive licensee, unless otherwise provided by the terms of the license agreement.The norms presented above illustrate such a situation when the monopoly right regarding the use of an intellectual property object in certain ways, in a certain territory and for a certain period of time actually passes from the right holder to the exclusive licensee.Based on the foregoing, it is clear that the exclusive licensee has more rights than the non-exclusive licensee.These circumstances necessitated the creation of legislative conditions that would allow protecting the economic interests of the exclusive licensee as a kind of "derivative" right holder.The prerequisites for such conditions are contained in paragraph 2 of Article 1250 of the Civil Code of the Russian Federation, which notes that “the methods of protection of intellectual rights provided for by this Code can be applied at the request of copyright holders, organizations managing rights on a collective basis, as well as other persons in cases established by law.".The above norm directly establishes the possibility of protecting intellectual property rights not only by the copyright holder, but also by other persons.The legislator also included the exclusive licensee among other persons who have the opportunity to apply the methods of protection of intellectual property provided for by the Civil Code of the Russian Federation, stating in Article 1254 of the Civil Code of the Russian Federation that “if third parties violate the exclusive right to the result of intellectual activity or to a means of individualization, for the use of which an exclusive license has been issued If a license affects the rights of the licensee received by him on the basis of a license agreement, the licensee may, along with other methods of protection, protect his rights in the ways provided for in Articles 1250 and 1252 of this Code.”.It is noteworthy that in the original version of this article, the legislator, along with the methods of protection provided for in Articles 1250 and 1252 of the Civil Code of the Russian Federation, also provided the opportunity for the exclusive licensee to use the remedy provided for in Article 1253 of the Civil Code of the Russian Federation, which fixes the liquidation of a legal entity or the termination of the activity of an individual entrepreneur in connection with with repeated or gross violation of exclusive rights by a court decision. Subsequently, this right of the exclusive licensee was limited and left within the jurisdiction of the right holder himself, probably due to the seriousness of the consequences of applying this construction, the initiation of which should come only from the owner of the exclusive right.Therefore, since the above article regulates the legal status of the exclusive licensee and provides special protections similar to those of the right holder, the owner of a simple (non-exclusive) license can only be guided by the protection methods provided to him under the concluded license agreement.Continuing the discussion of the protection of an exclusive right by an exclusive licensee, the Plenum of the Supreme Court of the Russian Federation, in order to specify the mechanism of Article 1254 of the Civil Code of the Russian Federation, presented a number of clarifications in paragraph 79 of Resolution No. Article 1254 of the Civil Code of the Russian Federation, it must be taken into account that it does not provide licensees - holders of a simple (non-exclusive) license with the right to protect their rights in the ways provided for in Articles 1250 and 1252 of the Civil Code of the Russian Federation. On the basis of this article of the Civil Code of the Russian Federation, only licensees - holders of an exclusive license have such a right.The basis for the licensee to claim compensation for violation of the exclusive right is the violation of the rights of the licensee itself, and not the right holder, received on the basis of a license agreement.With this in mind, licensees - holders of an exclusive license can protect their rights in the ways provided for in Articles 1250 and 1252 of the Civil Code of the Russian Federation, only if the committed violation affects the rights granted to them to use the result of intellectual activity or means of individualization.Based on the above rules, it follows that the resolution of the issue of whether or not the exclusive licensee has the right to judicial protection from a specific violation committed depends on the scope of rights granted to him on the basis of a license agreement, as well as the validity period of such a license agreement.Here it is necessary to make a reservation that with all of the above, the right holder himself does not lose the possibility of independently protecting his exclusive right, despite some limitation when granting an exclusive license to a third party.Is it possible in this case to apply for protection of the exclusive right to the right holder and the exclusive licensee at the same time? Wouldn't that violate the principle of good faith?The current legislation does not contain restrictions on applying for the protection of exclusive rights, along with the copyright holder, as well as the exclusive licensee. At the same time, it must be borne in mind that the exclusive licensee can apply for protection only of those rights that were granted to him under the license agreement, and not earlier than the date of registration of this license agreement with the Federal Service for Intellectual Property (Rospatent), since, by virtue of paragraph 6 Article 1232 of the Civil Code of the Russian Federation, the granting of the right to use is considered to have taken place from the date of state registration of the granting to another person the right to use such a result of intellectual activity under a license agreement.A similar conclusion can be drawn from the analysis of judicial practice, namely the rulings of the Intellectual Property Rights Court of October 21, 2016 in case No. A40-176412/2015 and of May 29, 2020 in case No. A66-18127/2018, where the courts drew attention to the illegality of the appeal in defense of the rights of a non-exclusive licensee, and not on the simultaneous presentation of claims by the right holder and the licensee.Thus, we can conclude that Russian legislation guarantees the right to protection of an intellectual property object not only on the part of its right holder, but also on the part of a person who has been granted the exclusive right to use such an object under a license agreement, which, of course, has a positive effect on the economic development of civil circulation of objects of intellectual rights.

The rapid development of the information space gives rise to fierce competition among its subjects. The hardest hit are startups that are just becoming part of the “business” ecosystem. And in order not to be overboard, young companies often resort to external sources of financing, such as loans. At the same time, the fulfillment of credit obligations must be secured by something, however, as a rule, business newcomers have little to offer as such. One undervalued asset is a website with a unique domain name. Despite the fact that the domain name is still looking for its own place in civil law, in practice the question has already arisen regarding the possibility of providing a domain name as, for example, a pledge under an obligation secured by it. What will be the answer? Let's figure it out.Let's start with the fact that the legal definition of a domain name is enshrined in paragraph 15 of Article 2 of the Federal Law of July 27, 2006 No. 149-FZ "On Information, Information Technologies and Information Protection", which is understood as "a symbol designation intended for addressing sites on the network "Internet" in order to provide access to information posted on the "Internet".Since domain names are of an intangible nature, as such they cannot be entered and circulated in civil circulation, and therefore the subjects of transactions will not be the domain names themselves, but the rights in relation to them (by analogy with paragraph 4 of Article 129 of the Civil Code of the Russian Federation (hereinafter referred to as the Civil Code of the Russian Federation).As you know, Article 128 of the Civil Code of the Russian Federation contains a closed list of objects of civil rights, which include: “things (including cash and documentary securities), other property, including property rights (including non-cash funds, book-entry securities, digital rights); results of work and provision of services; protected results of intellectual activity and equivalent means of individualization (intellectual property); intangible benefits.Considering the above list, the right to administer a domain name should be attributed to a property right that has an independent economic value determined by the participants in civil circulation and market conditions, as has been repeatedly pointed out by the courts (for example, in the ruling of the Supreme Court of the Russian Federation dated 05.08.2021 in case No. А76-51680/2019, in the decision of the Arbitration Court of the Moscow District dated July 20, 2020 in case No. А40-122333/2015, etc.).Can such a right be pledged?Proceeding from paragraph 1 of Article 336 of the Civil Code of the Russian Federation “any property, including things and property rights, can be the subject of pledge, with the exception of property on which foreclosure is not allowed, claims that are inextricably linked with the personality of the creditor, in particular claims for alimony, about compensation for harm caused to life or health, and other rights, the assignment of which to another person is prohibited by law."As a separate type of pledge, civil legislation singles out a pledge of rights of obligations, which states that “the subject of pledge may be property rights (claims) arising from the obligation of the pledgor. The pledger of the right may be a person who is a creditor in an obligation from which the pledged right (right holder) follows (paragraph 1 of Article 358.1 of the Civil Code of the Russian Federation).Thus, the provisions of the Law provide an opportunity to conclude a pledge agreement, the subject of which will be the property right to administer a domain name.Russian courts come to similar conclusions despite the fact that the issue considered in this article is far from a frequent subject of judicial consideration.Thus, one of the first judicial acts, in which the idea of a domain name as a pledge was noted, is the decision of the Presidium of the Supreme Arbitration Court of the Russian Federation dated November 11, 2008 in case No. А56-46111/2003.Unfortunately, due to the fact that the issue we are considering was not included in the subject of this dispute, but was only one of the circumstances of the case, the Supreme Arbitration Court of the Russian Federation was unable to provide a detailed legal position, pointing only to the fact that it is possible to use a domain name as a pledge to secure an agreement leasing.Later, the Ninth Arbitration Court of Appeal, in its decision dated 06/04/2021 in case No. A40-114510/2020, considered the issue of providing a domain name as a pledge, indicating the following:«On February 25, 2019, in order to ensure the proper fulfillment of obligations under the above agreement, between AEROTEMA LLC and IP Glazkova A.L. a contract of pledge of property rights No. 1 was concluded, according to which, in order to ensure the proper fulfillment of the obligation, the domain names aerotema.ru, vetromer.ru were pledged.The current legislation does not prohibit the pledge of any property, including property rights (Article 128, clause 1 of Article 329, Article 334 Civil Code of the Russian Federation).A domain name pledge agreement may establish restrictions on the rights of the domain name owner, for example, provide for a ban on the use of the domain name, restrict the scope of use, prohibit the alienation of the domain name, its provision for use, or transfer the rights to administer the domain name to third parties, etc.The specified Pledge Agreement has not been challenged by anyone, has not been declared invalid in the manner prescribed by law, and is binding on the Claimant, including in terms of transferring the administration of the domains aerotema.ru and vetromer.ru (subject of pledge).Therefore, both the Law and the Courts do not prohibit granting domain names, or rather, the rights to administer them, as security for the performance of obligations.If a domain name can be pledged, it means that in case of non-fulfillment or improper fulfillment of the obligation secured by it, there is a possibility of foreclosure on the subject of pledge.In this case, it must be emphasized again that since the subject of the pledge agreement is the right to administer the domain name, insofar as the foreclosure will also take place precisely on the specified property right, and not on the domain name itself, in accordance with Article 75 of the Federal Law of 02.07.2007 No. 229- Federal Law "On Enforcement Proceedings".By virtue of paragraph 1 of Article 358.7 of the Civil Code of the Russian Federation,“unless otherwise provided by the agreement, in the event of a violation of the obligations provided for in Article 358.6 of this Code, the pledgee has the right to demand from the pledgor early performance of the obligation secured by the pledge, and in case of its failure, to levy execution on the subject of pledge in the prescribed manner.".Foreclosure on a pledged right can be carried out by a court decision or out of court if the parties agree on such a method in a pledge agreement (paragraph 1 of Article 349 of the Civil Code of the Russian Federation).Realization of the pledged right is carried out, as a rule, through its sale at (public) auction or by assignment of the pledged right by the pledgor to the pledgee (Article 358.8 of the Civil Code of the Russian Federation).So, for example, in the above decision of the Ninth Arbitration Court of Appeal dated 06/04/2021 in case No. A40-114510/2020, the rights to administer domain names were transferred to the pledgee in fulfillment of the main obligation:“Since the resulting debt was not paid by the plaintiff, IP Glazkova A.L. sent a pre-trial claim to AEROTEMA LLC and a notice of extrajudicial foreclosure of the collateral, which offered to pay off the resulting debt within 10 days, leaving the collateral for itself in the absence of payment under the transaction.In view of the foregoing, the administration rights to the domain were acquired by the plaintiff and transferred with his consent in payment of the debt to the defendant, in connection with which the defendant is the proper administrator, the claims made by the plaintiff in the framework of this case are aimed at unilateral refusal to fulfill obligations under payment for services for tailoring windsocks and obligations under a pledge agreement on the part of the plaintiff.Given the above, why has this method of securing obligations not yet gained due popularity?Firstly, as already mentioned at the beginning of this article, today there are still disputes regarding the legal regime of a domain name and its place in civil law, in connection with which its use as a pledge to secure an obligation, where the relationship itself already bear a possible risk of non-execution, raises doubts on the part of the subjects of civil circulation.Secondly, one of the essential conditions of the pledge agreement is the assessment of its value, which, by virtue of paragraph 1 of Article 340 of the Civil Code of the Russian Federation, as a general rule, is determined by agreement of the parties. And if in the case of other objects of civil rights, the parties to contractual relations, as a rule, turn to an independent appraisal organization that determines the value of the pledge, guided by the approved federal appraisal standards, then as for domain names, at the moment there is no such single standard for them which makes it difficult for the parties to determine its value. Of course, there are organizations that provide domain name valuation services, but each of them relies on its own methodology with its own valuation criteria, which can lead to significantly different results, causing an unnecessary dispute between the parties to the contract.In conclusion, I would like to note that while the legal community is conducting doctrinal research on the legal nature of a domain name, in practice there has long been a need for legislative regulation of its legal regime, as well as civil law relations associated with it . The possibility of using a domain name as a subject of a pledge agreement is especially important for the development of start-up companies, which is undoubtedly a priority in a situation where the Russian market has become empty after the departure of many international companies. Thus, until domain names are legally bound, pledging them, unfortunately, will remain an unclaimed way to enforce obligations.

In order to encourage authors to create new objects in the scientific and technical field, the authors were given the opportunity to secure monopoly rights to the results of the intellectual activity they created. The confirmation of the exclusive right to such objects is a patent, which certifies the priority, authorship, and exclusive right to an invention, utility model, or industrial design (paragraph 1 of Article 1354 of the Civil Code of the Russian Federation (hereinafter referred to as the Civil Code of the Russian Federation).According to the statistics provided by Rospatent in the annual report 2021, an average of about 35,000 patents for inventions, utility models, and industrial designs are issued annually. These indicators illustrate the active participation of the authors in the scientific development of our state.It should be borne in mind that after filing an application for registration of an invention, utility model, or industrial design, the fight for a patent does not end, but only begins since there are still people who would also like to use similar objects in their activities. Here, the future copyright holders have a question, from what moment do they have the right to protect their object?Ways to protect patent rights are listed in Article 1252 of the Civil Code of the Russian Federation and involve, among other things, the use of measures to recognize, restore, and suppress the illegal use of objects of patent rights, as well as recover damages/compensation for such illegal use.By virtue of Article 1353 of the Civil Code of the Russian Federation, “the exclusive right to an invention, utility model or industrial design is recognized and protected subject to state registration of the relevant invention, utility model or industrial design, on the basis of which the federal executive authority for intellectual property issues a patent for the invention, utility model or industrial design".Accordingly, the emergence and protection of exclusive rights to patent objects are made dependent on their mandatory state registration, as a result of which a corresponding patent is issued by the federal agency for intellectual property.The above provision is continued in paragraph 1 of Article 1363 of the Civil Code of the Russian Federation, which indicates that the exclusive right to an invention, utility model, industrial design, and the patent certifying this right are valid subject to the requirements established by this Code, from the date of filing an application for a patent to the federal executive authority for intellectual property or in the event of separation of the application (clause 4 of Article 1381) from the date of filing the original application <…>.”.Despite the fact that this paragraph indicates that the exclusive right to objects of patent law arises from the date of filing an application for a patent, the legislator in the next paragraph, nevertheless, clarified that the protection of the exclusive right certified by a patent can be carried out only after state registration of an invention, utility model or industrial design and the grant of a patent.It follows from this that the legal regulation of relations related to the use of exclusive rights to inventions, utility models, or industrial designs provided for by law implies the possibility of protecting the rights to the objects in question and, accordingly, the possibility of applying civil liability measures for their illegal use only after the occurrence legally significant circumstances, due to the occurrence of which all third parties are considered notified of the emergence of patent rights from the right holder. Such circumstances are the state registration and grant of a patent for an invention, utility model, or industrial design.Given that, unlike other objects of intellectual property, the creation of inventions or industrial designs, as a rule, requires more financial and time costs, the legislator decided to provide temporary legal protection for such objects.So, in accordance with article 1392 of the Civil Code of the Russian Federation, an invention or industrial design, for which applications have been filed with Rospatent to the federal executive body for intellectual property, from the date of publication of information about these applications until the date of publication of information about the grant of a patent, temporary legal protection is provided.Since, after the publication of information about applications for an invention or industrial design, the claims or essential features of an industrial design become publicly available, the interests of the person who filed such applications may be affected and have negative consequences.At the same time, according to paragraphs 2 and 3 of the same article, temporary legal protection is considered not to have occurred if the application for an invention or industrial design was withdrawn or recognized as withdrawn, or a decision was made to refuse to grant a patent on an application for an invention or industrial design and the possibility of filing an objection against this the solution provided for by this Code has been exhausted.It is this paragraph of the norm of the law that makes the legal protection granted to new inventions and industrial designs “temporary”, setting the conditions for their activation.If the person who filed the application has been granted a patent for an invention or industrial design, a such patent owner has the right to receive monetary compensation from the person using the claimed invention or industrial design during the period specified in paragraph 1 of Article 1392 of the Civil Code of the Russian Federation. The amount of such remuneration is determined by agreement of the parties, and in the event of a dispute - by the court.Consequently, this provision does not give the future right holder the right to prohibit the use of inventions or industrial designs, applications for which were filed with Rospatent, before the date of issue of the relevant patents to him, however, it warns third parties that if a special federal body decides to grant patents for such objects, they will have to compensate for the losses, by paying remuneration, that have been incurred by the patent owner in connection with the use of his patents.From the systematic interpretation of the above norms, it can be concluded that the current legislation does not provide for the possibility of the patent owner using liability measures in the form of recovery of damages or compensation to persons who used the invention or industrial design in the absence of the patent owner's consent, for the period between the date of filing an application for the invention or an industrial design and the date of registration of patents.In turn, in order to ensure the legitimate interests of entities that have filed an application for a patent for an invention or industrial design, the current rules of law provide for the possibility of such persons using protective measures, expressed in receiving remuneration for the use of the claimed industrial design by a third party from the date of publication of information about the application until the date of publication of information on the grant of a patent, the amount of which is determined by agreement of the parties, and in the event of a dispute - by the court.Considering a court case on the issue that is the subject of this article, the Intellectual Property Court stated the following:“The legal regulation of relations on the creation and use of industrial designs implies the possibility of protecting exclusive rights to the relevant intellectual property objects and, thus, the possibility of applying civil liability measures for their illegal use only after the state registration of such objects and the issuance of a patent for them, that is after the occurrence of legally significant circumstances, due to the occurrence of which all third parties are considered notified of the emergence of patent rights from the right holder.Along with the guarantee of protection of the exclusive rights of persons who have received a patent for an industrial design, the current legislation also provides for the possibility of ensuring the legitimate interests of entities that have filed an application for a patent for an industrial design. This possibility is expressed in the right of such persons to receive remuneration for the use of the claimed industrial design by a third party from the date of publication of information about the application until the date of publication of information about the grant of a patent. The amount of this remuneration is determined by agreement of the parties, and in the event of a dispute - by the court.Thus, the regime of legal regulation of relations for the creation and use of industrial designs is not uniform, and its content depends on the occurrence of specific legally significant circumstances that constitute the procedure for obtaining a patent for an industrial design provided for by law.”.Summing up, we can conclude that the current Russian legislation guarantees the protection of the exclusive rights not only of holders of patents for an invention or industrial design but also of persons who have just filed an application for a patent for such an invention or industrial design, which, it seems to me, encourages authors to the creation of new objects of intellectual property.

In view of the limited civil circulation, the legislator established an antimonopoly instrument that deprives the right holder of a legal monopoly (exclusive right) in relation to a trademark registered by him, by means of early termination of his legal protection in relation to all or part of the goods/services due to non-use by the right holder of this trademark continuously for three years (paragraph 1 of article 1486 of the Civil Code of the Russian Federation (hereinafter referred to as the Civil Code of the Russian Federation)).Having received a claim for early termination of a trademark, the right holder must prove the use of the trademark in relation to each product for which the trademark is registered, and for which the person who applied for early termination proved his interest (paragraph 166 of the Decree of the Supreme Court of the Russian Federation No. ).Thus, paragraph 2 of Article 1486 of the Civil Code of the Russian Federation establishes that “for the purposes of this article, the use of a trademark is recognized as its use by the right holder or a person to whom such a right is granted on the basis of a license agreement in accordance with Article 1489 of this Code, or by another person using the trademark under the control of the right holder, provided that the use of the trademark is carried out in accordance with paragraph 2 of Article 1484 of this Code <…>.”At the same time, paragraph 38 of the Review of judicial practice in cases related to the resolution of disputes on the protection of intellectual property, approved by the Presidium of the Supreme Court of the Russian Federation on September 23, 2015, clarifies that for the purposes of applying the provisions of Article 1486 of the Civil Code of the Russian Federation, not any use of a trademark by the right holder is taken into account, but only the performance of actions provided for by paragraph 2 of Article 1484 of the Civil Code of the Russian Federation, directly related to the introduction of goods into civil circulation.Specifying the methods of using a trademark, paragraph 2 of Article 1484 of the Civil Code of the Russian Federation establishes the possibility of its placement:1) on goods, including on labels, packages of goods that are produced, offered for sale, sold, demonstrated at exhibitions and fairs, or otherwise introduced into civil circulation on the territory of the Russian Federation, or stored or transported for this purpose, or imported to the territory of the Russian Federation;2) when performing work, rendering services;3) on documentation related to the introduction of goods into civil circulation;4) in proposals for the sale of goods, for the performance of work, for the provision of services, as well as in announcements, signboards, and advertisements;5) on the Internet, including in a domain name and with other addressing methods.In the meaning of the above norms, the main task of the right holder in the category of a dispute under consideration is to prove the introduction of products (provision of works/services) marked with a trademark into civil circulation and bring it to the consumer.However, a situation often arises when the right holder actually carried out actions to individualize his goods (works and services) with a trademark but violated the norms of other legislation when introducing these products into civil circulation.It would seem that this fact should not have legal significance if paragraph 1 of Article 1484 of the Civil Code of the Russian Federation did not stipulate that “the person in whose name the trademark is registered (right holder) has the exclusive right to use the trademark in accordance with Article 1229 of this Code by any in a manner that does not contradict the law (exclusive right to a trademark), including the methods specified in paragraph 2 of this article.”Is it possible to state from the above norm that the use by the trademark owner in a manner contrary to the law cannot confirm its proper use, which is required by Article 1486 of the Civil Code of the Russian Federation in the framework of a case on early termination?Consider specific examples from judicial practice.The Presidium of the Intellectual Property Rights Court, in its ruling dated April 30, 2015, in case No. SIP-531/2014, where the copyright holder violated the provisions of the legislation on the production and circulation of alcoholic beverages, indicated that “the procedure for the circulation of ethyl alcohol, alcoholic and alcohol-containing products is regulated by the provisions of Law No. 171 -FZ, article 10.2 of which contains a list of accompanying documents certifying the legality of such production and circulation.Since, by virtue of the provisions of paragraph 2 of Article 1484 and paragraph 2 of Article 1486 of the Civil Code of the Russian Federation, a circumstance of significant importance for the consideration of this case is the fact of the introduction into civil circulation of goods marked with contested trademarks, which, in turn, for alcohol-containing products on the territory of the Russian Federation The Federation is governed by the norms of Law No. 171-FZ, the application of the norms of this Law in the consideration of this dispute was mandatory.Thus, the court of the first instance correctly concluded that the defendant did not provide evidence confirming the introduction into civil circulation of goods on which the disputed trademarks would be used.The court concluded that there was no evidence of the proper use of the trademark in the ways specified in paragraph 2 of Article 1484, due to the illegal production and circulation of alcoholic products by the copyright holder.Later, the judicial practice changed the vector of direction, focusing on the purpose of using a trademark within the meaning of paragraph 1 of Article 1477 of the Civil Code of the Russian Federation.Thus, the Presidium of the Intellectual Property Rights Court, in its ruling dated January 16, 2017, in case No. SIP-185/2016, where the copyright holder violated the requirements of legislation on certification, as well as on tax and accounting, indicated that “within the meaning of Article 1486 of the Civil Code of the Russian Federation, by itself, the non-compliance of the goods introduced into civil circulation with the requirements of legislation on certification or violation of the legislation on tax and accounting in the course of such circulation cannot be grounds for early termination of the legal protection of a trademark if proper evidence is provided that such goods are actually introduced into civil circulation.Violations of the requirements of other legislation of the Russian Federation are not the subject of this dispute.».The Presidium of the Intellectual Property Rights Court came to a similar conclusion in its ruling dated 08/05/2019 in case No. SIP-222/2018, where the right holder violated the requirements of the law for declaring products, indicating that “The reference of the applicant of the cassation complaint to the fact that the defendant did not provide evidence of the declaration of products - drinking water in accordance with the Federal Law “On Technical Regulation” and the Technical Regulations, is subject to rejection since the determination of whether the product is certified from the point of view of state bodies, controlling such proceedings is not included in the subject of the court's investigation in the case of early termination of the legal protection of a trademark due to its non-use and does not affect the resolution of a specific dispute.A similar approach can also be found in the decision of the Court for Intellectual Property Rights dated June 21, 2017, in case No. SIP-84/2016, the decision of the Presidium of the Court for Intellectual Property Rights dated January 18, 2019, in case No. SIP-125/2018, the decision of the Court for Intellectual Property Rights dated May 15 .2020 in case No. SIP -782/ 2019, the decision of the Court for Intellectual Property Rights dated June 17, 2021, in case No. SIP-373/2021.Thus, according to the prevailing judicial approach, the circumstances related to compliance with the law when goods (works, services) are introduced into civil circulation are not included in the subject of research in cases of early termination of the legal protection of trademarks due to their non-use and do not affect the resolution of a specific dispute over essence.The above also follows from the fact that paragraph 2 of Article 1484 of the Civil Code of the Russian Federation specifically draws attention to the need to analyze not the circumstances associated with the placement of a trademark on a product, but the circumstances associated with the introduction of goods into civil circulation - that is, with bringing it to the consumer.In summary, the current position taken by the courts is more justified than the original one, since cases of early termination of the legal protection of a trademark due to its non-use should be considered through the prism of the main function of a trademark, which is to individualize goods (works, services), in connection with which it is necessary to take into account the actual use of the trademark, even if it is carried out in violation of the provisions of other legislation of the Russian Federation.