Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney
Sergey has been involved in IP for since 1995. He has counseled clients as a patent attorney in the field of inventions, utility models, industrial designs, trademarks and appellations of origin of goods since 2008.
Sergey has extensive experience in understanding the needs of his clients. He is an experienced and innovative leader who inspires his team to meet the client expectations. He is an excellent communicator and continues to hone his professional skills.
Sergey is a popular speaker and is a member of several IP associations, including INTA, AIPLA, AUTM, ECTA, ITMA, MARQUES, PTMG and ABA.
In 2010 Sergey Zuykov was President of the Noncommercial partnership "Guild of patent attorneys and patent experts", with a membership of more than 50 Russian patent attorneys from 2010 to 2014.
Sergey Zuykov graduated from the State University of Management. In 2015 he graduated from the law faculty of the Druzhbi Narodov University of Russia.
Sergey Zuykov has worked in the field of intellectual property since 1995.
- 1994–2002 — General Director of LLP Akorus
- 1998–2004 — Executive Director of the Regional common organization “Center of assistance in protection of legal and individual entities rights”
- From 2004 — General Director of Zuykov & partners
- 2010–2014 — President of the "Guild of patent attorneys and patent experts”
- In 2016 Sergey Zuykov was elected as Vice-President of the Association of patent attorneys and specialists with a membership of more than 100 Russian patent attorneys and specialists
It is for a purpose that entrepreneurs and manufacturers of goods register the trademarks they use. Registration and acquiring a certificate of protection is the main way to confirm the legitimacy of the trademark owner’s rights.
Modern economic markets are not limited to the territory of one country and offline mode of trade. This leads to the fact that controlling the integrity and legality of the actions of entrepreneurs is becoming increasingly difficult. Therefore, self-control on the part of producers for observance and non-infringement of their rights has particular importance. In this aspect, the registered trademark gives a distinct advantage, as in the case of illegal actions, the right holder has an official confirmation of owning the trademark and exclusive rights, and therefore having every reason to prohibit others from using the registered identity without the right holder’s consent.
When the media describe offenses in the field of trademarks, they most often mention counterfeit goods, knockoff and fake. However, for most readers it remains unclear whether these concepts differ from the legal perspective.
The Civil Code of the Russian Federation (hereinafter the Civil Code) defines counterfeit embodiments and counterfeit goods, also listing the unlawful actions that are associated with such objects. Part 4 of Article 1252 of the Civil Code states: “If the manufacture, distribution or other use as well as import, transportation or storage of embodiments in which a result of intellectual activity or visual identity is expressed, leads to a violation of the exclusive right to such result or identity, such embodiments are considered counterfeit”. The counterfeit goods are specified in part 1 of Article 1515 and part 4 of Article 1519 of the Civil Code. Counterfeit should include goods where a registered trademark is used in any way illegally.
The mentioned rules of the Civil Code allow to conclude that the production and other use of counterfeit goods is connected with the illegal use of intellectual property or visual identity, and such objects must be expressed in tangible form. That is, for example, disclosure of the secret of production will not be counterfeit, just as the products counterfeited without the use of someone else’s intellectual property will not be counterfeit.
The Civil Code does not contain the concept of “knockoff”. However, there is a legal definition of the term. For example, Article 1 of the Federal Law on Quality and Safety of Food describes knockoff food, materials and other products: “...food, materials and other products deliberately altered (counterfeited) and (or) having hidden properties and quality, information about which is knowingly incomplete or untrustworthy”.
There is also a definition of a knockoff drug: “... a drug accompanied by false information about the composition and (or) the manufacturer of the drug”.
The website of the Federal Service for Health and Consumer Rights states: “When goods are knockoff, one or more characteristics of the goods are usually falsified... Food products are mostly counterfeited...”.
Thus, knockoff is associated with a deliberate distortion or alteration of the characteristics and properties of goods. In this case, the transformations have a negative character and can cause harm to the health of consumers.
There is no description of this term in the aspect of the use of trademarks. The Ushakov’s Dictionary gives the following definition: “Something which is counterfeited, an imitation, an object made in the likeness of something real, a fake object, passed off as real”. From the above, we can conclude that a fake is an imitation or falsification of an original product. Thus, faking will be both full copying and distortion of individual qualities or characteristics. Consequently, both counterfeit and knockoff goods can be called fakes.
Summarizing the above, we can conclude about the relationship between the terms counterfeit, knockoff and fake which are often used interchangeably although their legal meanings are not identical.
- Counterfeit goods are goods in which intellectual property is illegally used. The results of illegal actions of the infringer are embodied. In this case, both the distortion of the object of intellectual property, and its unauthorized copying will be considered counterfeit.
- Knockoff is related to the actions associated with the transformation of qualities or properties of the original product. In this case, offenders manufacture products with a distortion of the characteristics of the original, genuine product and pass off such a product as genuine.
- Fake is a non-legal term used to refer to the manufacture of goods in violation of the rights of producers, owners of intellectual property and consumers. Counterfeit goods include imitation, when a product or trademark is copied in its entirety, and faking, when goods are produced with transformations or changes.
If we consider these concepts with regards to protection of the right holder of the trademark, it can be noted that the Civil Code does not divide the illegal use of trademarks into counterfeiting with distortion and complete copying, and allocates only the concept of counterfeit consumer goods. Thus, regardless of how the offenders illegally used a trademark, the actions will qualify as counterfeit. In this case, if they also distort and change the quality of goods, then we can use “counterfeit goods” as a colloquial term, associated with faking.
As it is known, not every technical solution becomes the object of patenting. There may be different reasons for this: the invention does not meet the conditions of patentability, the inventor does not have the means to register it, the benefits of patenting are underestimated, and so on.
To increase the level of applicant activity in the field of industrial property in Russia, it was decided to stimulate and popularize inventive work. This year, in the framework of the outlined policy, the following positive changes have taken place and will probably take place:
- The amount of remuneration related to the creation and use of inventions in the course of official activities was increased. As of January 1, 2021, the Order of the Government of the Russian Federation containing the Rules for Remuneration for Service Inventions, Service Utility Models, and Service Industrial Designs (hereinafter the Rules) has come into force1. The adopted bylaw will be valid until January 1, 2027 and provides the following.
- Payment by the employer of remuneration to the employee in the amount of 30 percent of the average salary of the latter for the creation of a business invention.2
- Payment of remuneration for the use of the service invention in the enterprise. Paragraph 3 of the Regulations establishes the amount of such payment: “...in the amount of 3 average monthly wages of the employee over the last 12 calendar months, in which such invention was used.”
- Transfer of a certain amount to the employee, when granting the right to use the service invention under the license agreement or full transfer of rights under the contract of alienation. When granting the right to use an employee’s business invention to another person, the employer shall pay to the employee a remuneration equal to 10 percent of the remuneration due to the employer under the license agreement. In the case of a contract of alienation, the employer shall pay to the employee who created the business invention a remuneration equal to 15 percent of the remuneration provided by the contract of alienation and due to the employer. 3
- As Grigory Ivliev, the head of Rospatent noted, currently an active work on the development of tax incentives for companies that actively use patented technical solutions in production is underway. There are plans to reduce income tax for organizations that manufacture products on the basis of issued patents. Also, the patent office is promoting the dea: “to exempt intellectual property that has passed the inventory tax for a certain period of time.” 4
- Grigory Ivliev comments: “...I really like the initiative of the Ulyanovsk regional authorities, where an innovation voucher was introduced; the regional government allocates money for the promotion of an invention, its patenting and implementation in production. It is a very promising form of support for inventors, start-ups, medium and small entrepreneurs. Similar projects are now being launched in other regions of Russia. As a matter of principle, this should be a permanent federal form of grant support in the field of intellectual property.” 5
It is worth assuming that the measures taken and the ongoing activities will lead to a progressive increase in the applicant activity and active use of patented inventions by domestic enterprises.
1 Order of the Government of the Russian Federation of November 16, 2020 No. 1848 On Approval of the Rules for Payment of Remuneration for Official Inventions, Official Utility Models, Official Industrial Designs
2 See more details: paragraph 2 of the Rules
3 See more details: paragraphs 4 and 5 of the Rules
4 Grigory Ivliev: Rospatent Prepare New Services for Inventors // Rossiyskaya Gazeta URL: https://rg.ru/2021/01/03/grigorij-ivliev-rospatent-gotovit-novye-servisy-dlia-izobretatelej.html (Seen on February, 2021).
5 See ibid.
За это время было усовершенствовано и законодательство других стран. С самыми большими изменениями столкнулась Европа. После создания Евросоюза и имплементации законодательства стран-участниц началось формирование единых стандартов регулирования интеллектуальной собственности (ИС).
С уверенностью могу сказать, что законодательство России, регулирующее ИС, в целом лучше законодательства многих стран, в том числе и Евросоюза. Но правоприменение остается довольно слабым, долгим и разобщенным, позволяющим недобросовестным сторонам спора затягивать процесс.
Я обратил внимание на некоторые моменты правоприменения, изменение которых позволит существенно сократить сроки рассмотрения споров: как о регистрации товарных знаков, так и связанных с их защитой.
Нынешняя система разрешения подобных споров представляется мне неэффективной, долгой и громоздкой, а судебные процессы оказываются необоснованно затянутыми. При разрешении споров о незаконном использовании товарных знаков и оспаривании прав на товарные знаки все стадии процесса не связаны между собой. Это приводит к увеличению сроков рассмотрения дел, что позволяет нарушителям длительное время незаконно использовать чужие права на товарные знаки.
Сегодня довольно много заявителей регистрируют товарные знаки с целью получить некую гарантию для использования заявленного и зарегистрированного Федеральной службой по интеллектуальным правам (Роспатентом). Они знают, что полученное свидетельство позволяет им использовать зарегистрированный товарный знак вне зависимости от того, нарушает ли он более ранние права других правообладателей или нет. Получается, что для подобных заявителей товарный знак не является объектом исключительных прав, которые защищают их средство индивидуализации и репутацию, созданную правообладателем для собственного знака, а также позволяют бороться с нарушителями и запрещать использование сходных обозначений – для них товарный знак связан с «правом нарушать» более ранние права других правообладателей.
Подобная возможность существует и реализуется благодаря двум факторам:
- В принятых постановлениях, обзорах судебной практики, информационных письмах ВАС РФ и ВС РФ даны разъяснения о правильности применения тех или иных норм права. Согласно указаниям, содержащимся в этих документах, если у ответчика есть зарегистрированный товарный знак, то правообладатель раннего товарного знака не может запретить использование собственных прав, пока действие товарного знака ответчика не будет аннулировано. Суды получают возможность отказать в иске о защите товарного знака из-за наличия у ответчика/нарушителя зарегистрированного товарного знака с более поздним приоритетом.
- Споры по товарным знакам (о регистрации товарных знаков, об оспаривании товарных знаков, о запрете использования товарных знаков) разделены между собой и предполагают прохождение судебной процедуры, а также обязательной административной стадии. Это происходит из-за отсутствия нормативно-правового регулирования, которое позволило бы объединять ряд процессов, например, регистрацию и оспаривание товарного знака или его оспаривание и защиту.
Вывод о наличии указанных выше факторов получен в результате длительной практической работы, анализа нормативных и ненормативных правовых актов, а также изучения сложившейся судебной практики. Полагаю целесообразным обсудить каждый из обозначенных факторов в отдельности.
Откуда возникло «право нарушать»?
Фактор 1. Возможность отказа в иске о защите товарного знака из-за наличия у ответчика/нарушителя зарегистрированного товарного знака.
Первое нормативное положение, давшее возможность отказывать в иске в связи с наличием у ответчика зарегистрированного товарного знака, сформулировано в п. 9 Обзора практики рассмотрения арбитражными судами дел, связанных с применением законодательства об интеллектуальной собственности, утвержденного информационным письмом Президиума ВАС РФ от 13 декабря 2007 г. № 122 (далее – Обзор от 13 декабря 2007 г. № 122):
«При наличии двух патентов на полезную модель с одинаковыми либо эквивалентными признаками, приведенными в независимом пункте формулы, до признания в установленном порядке недействительным патента с более поздней датой приоритета действия обладателя данного патента по его использованию не могут быть расценены в качестве нарушения патента с более ранней датой приоритета.
…Если имеется несколько охранных документов на полезную модель с одинаковыми либо эквивалентными признаками, приведенными в независимом пункте формулы, вопрос о признании какого-либо из этих патентов недействительным отнесен к компетенции Палаты по патентным спорам и должен решаться в порядке, установленном статьей 29 Патентного закона.
В случае признания недействительным одного из патентов обладатель прав на иной патент вправе вновь обратиться в суд за защитой своих прав, в том числе путем возмещения убытков за весь период использования его патента, учитывая, что признание патента недействительным означает отсутствие правовой охраны такого патента с момента подачи в Федеральную службу по интеллектуальной собственности, патентам и товарным знакам (далее - Роспатент) заявки на выдачу патента.
При наличии же двух патентов на полезную модель с одинаковыми либо эквивалентными признаками, приведенными в независимом пункте формулы, до признания в установленном порядке недействительным патента с более поздней датой приоритета действия обладателя данного патента по его использованию не могут быть расценены в качестве нарушения патента с более ранней датой приоритета»1 (здесь и далее курсив мой. – С. З.)
Несмотря на то, что упомянутый пункт обзора арбитражной судебной практики относится к патентам, суды, используя аналогию права, начали применять его к товарным знакам. В качестве примера можно привести выдержку из текста постановления СИП от 13 мая 2019 г. по делу № А40–77364/2018:
«Вместе с тем Суд по интеллектуальным правам полагает, что не все вышеуказанные выводы суда апелляционной инстанции, можно признать законными и обоснованными, поскольку они сделаны с нарушением норм материального права, повлекшим неполное исследование обстоятельств дела.
В соответствии с разъяснениями, изложенными в пункте 9 Обзора практики рассмотрения арбитражными судами дел, связанных с применением законодательства об интеллектуальной собственности, утвержденного информационным письмом Президиума Высшего Арбитражного Суда Российской Федерации от 13.12.2007 № 122 (далее - Обзор от 13.12.2007 № 122), при наличии двух патентов на полезную модель с одинаковыми либо эквивалентными признаками, приведенными в независимом пункте формулы, до признания в установленном порядке недействительным патента с более поздней датой приоритета действия обладателя данного патента по его использованию не могут быть расценены в качестве нарушения патента с более ранней датой приоритета.
…Данные положения применимы и к товарным знакам»2.
Такой же подход был применен и в Постановлении ВАС РФ от 1 декабря 2009 г. № 8091/09 по делу № А65-26171/–СГ5–28:
«При рассмотрении спора суды установили, что изобретение истца используется в продукте ответчика, изготовленного по техническим условиям. И это обстоятельство подтверждено в заключении судебной экспертизы. Вопрос об использовании изобретения комбината в изобретении общества, защищенном более поздним патентом № 2325821, то есть о включении в формулу изобретения общества всех признаков, указанных в независимом пункте формулы изобретения комбината, истцом не ставился, судом и экспертами не исследовался. Ответчик при этом настаивал на наличии у него изобретения, отличающегося от изобретения истца, то есть «независимого» патента, и использовании именно своего патента, а комбинат не оспаривал патентоспособность изобретения ответчика.
Исходя из сказанного, у судов не было оснований для применения абзаца третьего пункта 3 статьи 1358 и статьи 1362 Гражданского кодекса Российской Федерации.
Таким образом, при наличии двух патентов на изобретение с одинаковыми либо эквивалентными признаками, приведенными в независимом пункте формулы, действия общества по использованию своего патента не могут быть расценены в качестве нарушения патента с более ранней датой приоритета.
Довод суда кассационной инстанции о различиях в правовом режиме изобретения и полезной модели не вызывает возражений, однако это не влияет на возможность применения указанного в пункте 9 информационного письма подхода не только к полезным моделям. Он применим также и к другим объектам, исключительное право на которые признается и охраняется при условии государственной регистрации»3.
Отказывая в иске в связи с наличием зарегистрированного товарного знака у ответчика, суды начали применять п. 62 Постановления Пленума ВС РФ и Пленума ВАС РФ от 26 марта 2009 г. № 5/29 «О некоторых вопросах, возникших в связи с введением в действие части четвертой Гражданского кодекса Российской Федерации» (далее – Постановление № 5/29)4.
Например, в постановлении СИП от 1 февраля 2017 г. по делу № А51–5817/2016 на решение Арбитражного суда Приморского края от отказано в защите права на товарный знак в связи с наличием у ответчика своего товарного знака5. При этом суды применили п. 62 Постановления № 5/29:
«Отказывая в удовлетворении заявленных требований, суды первой и апелляционной инстанций исходили из того, что в действиях общества отсутствует состав административного правонарушения, предусмотренного частью 1 статьи 14.10 КоАП РФ.
Так, судами установлено, что принадлежащий компании товарный знак «ХААНЧАЙ» по свидетельству Российской Федерации № 410016 имеет дату приоритета от 28.04.2009.
В то же время, товарный знак «ХАН» по свидетельству Российской Федерации № 410322 имеет более раннюю дату приоритета от 30.03.2009 и принадлежит обществу с ограниченной ответственностью «ПРОФИТ-С», которое 01.01.2016 дало обществу разрешение № 1 на использование названного товарного знака.
Правовая охрана указанных товарных знаков является действующей.
С учетом этого суды первой и апелляционной инстанций пришли к выводу о том, что обществом ввезены товары, маркированные товарным знаком «ХАН» по свидетельству Российской Федерации № 410322, слово же «ЧАЙ» использовано в качестве характеристики этого товара.
…Вместе с тем, как указано выше, судами первой и апелляционной инстанций установлено, что обществом ввезены товары, маркированные товарным знаком «ХАН» по свидетельству Российской Федерации № 410322, принадлежащим обществу с ограниченной ответственностью «ПРОФИТ-С», давшему разрешение на использование этого товарного знака обществу.
Как отмечено в постановлении Президиума Высшего Арбитражного Суда Российской Федерации от 15.12.2009 № 10519/09 при наличии двух действующих свидетельств на товарные знаки, в качестве которых зарегистрированы сходные или тождественные обозначения, до признания в установленном статьей 1513 ГК РФ порядке недействительным свидетельства с более поздней датой приоритета действия обладателя своего свидетельства по использованию своего обозначения не могут быть расценены в качестве нарушения прав на товарный знак»6.
Аналогичный подход к применению п. 62 Постановления № 5/29 отражен в постановлении СИП от 30 октября 2015 г. по делу № А40–195695/2014. Идентичный подход, но без ссылки на п. 62 Постановления № 5/29, применен в деле № А55–20196/2013: в иске о защите права на товарный знак отказано в связи с наличием товарного знака у ответчика.
23 апреля 2019 г. Пленум ВС РФ принял Постановление № 10 «О применении части четвертой Гражданского кодекса Российской Федерации» (далее — Постановление № 10), в п. 154 которого указано:
«В силу пункта 1 статьи 1484 ГК РФ исключительное право использования товарного знака принадлежит лицу, на имя которого соответствующий товарный знак зарегистрирован (правообладателю).
Следовательно, лицу, на имя которого зарегистрирован товарный знак, не может быть отказано в защите права на товарный знак (даже в случае, если в суд представляются доказательства неправомерности регистрации товарного знака) до признания предоставления правовой охраны такому товарному знаку недействительным в порядке, предусмотренном статьей 1512 ГК РФ, или прекращения правовой охраны товарного знака в порядке, установленном статьей 1514 ГК РФ»7.
Такой же подход к применению п. 154 Постановления № 10 отражен в постановлениях СИП, в частности, вынесенных по делам № А41–39867/2019, № А63–14419/2018.
Кроме того, к спорным отношениям суды применяют аналогию права и распространяют на них положения п. 125 Постановления № 10:
«При наличии двух патентов с разными датами приоритета, выданных на идентичные изобретения, полезные модели и промышленные образцы либо на изобретения, отличающиеся только эквивалентными признаками, до признания в установленном порядке недействительным патента с более поздней датой приоритета действия обладателя данного патента по его использованию не могут быть расценены в качестве нарушения патента с более ранней датой приоритета.
Если в независимом пункте формулы патента ответчика, помимо всех признаков независимого пункта формулы патента истца (для изобретений также эквивалентных), имеются и иные признаки, то изобретение, полезная модель или промышленный образец ответчика с учетом пункта 1 статьи 1358.1 ГК РФ являются зависимыми, а следовательно, в силу пункта 2 данной статьи действия ответчика по использованию патента истца без согласия последнего (даже если он одновременно использует свой патент) могут быть признаны нарушением исключительного права истца вне зависимости от того, был ли патент ответчика признан недействительным в установленном порядке»8.
Аналогичный подход к применению п. 125 Постановления № 10 отражен в постановлениях СИП, вынесенных по делам № А40–77364/2018, № А40–132697/2019.
Зная о такой судебной практике, закрепленной постановлениями ВС РФ, возникает понимание того, для чего ряду заявителей нужно получить свидетельство о регистрации товарного знака как можно быстрее – для этих заявителей товарный знак становится «правом нарушать».
Для решения указанной проблемы, по моему убеждению, должны быть отменены или изменены самым кардинальным образом и разъяснены п. 125 и п. 154 Постановления № 10.
Логичным видится развитие событий следующим образом: необходимо внести изменения в нормы ГК РФ, которые должны разрешать судам (или, может быть, даже обязывать суды) выносить решения о запрете нарушения права на товарный знак вне зависимости от того, является ли ответчик/ нарушитель правообладателем сходного товарного знака, либо требуется принять и опубликовать разъяснения ВС РФ, в которых будет указано на неправильность отказа в исковом заявлении истцу со ссылкой на поздний товарный знак ответчика.
Вынесение судебного решения, запрещающего нарушать права на товарный знак, имеющий ранний приоритет, не может и не должно каким-либо образом зависеть от наличия более позднего товарного знака. Вопрос о правомерности регистрации товарного знака на имя нарушителя может быть рассмотрен в отдельном процессе, что при этом необязательно и остается на усмотрение владельца более раннего товарного знака.
Следует также отметить, что п. 1 ст. 1484 ГК РФ («Исключительное право на товарный знак») определяет способы использования товарного знака:
Лицу, на имя которого зарегистрирован товарный знак (правообладателю), принадлежит исключительное право использования товарного знака в соответствии со статьей 1229 настоящего Кодекса любым не противоречащим закону способом (исключительное право на товарный знак), в том числе способами, указанными в пункте 2 настоящей статьи. Правообладатель может распоряжаться исключительным правом на товарный знак.
Так вот, в п. 2 ст. 1484 ГК РФ не указан такой способ использования товарного знака, как «право нарушать» ранние товарные знаки. Информационные письма ВАС РФ и ВС РФ, в которых фактически признается такое «право», должны быть отменены или изменены в этой части.
«Право нарушать» существует в судебной практике, несмотря на положения п. 6 ст. 1252 ГК РФ, предусматривающие следующее: если различные средства индивидуализации (фирменное наименование, товарный знак, знак обслуживания, коммерческое обозначение) оказываются тождественными или сходными до степени смешения и в результате такого тождества или сходства могут быть введены в заблуждение потребители и (или) контрагенты, преимущество имеет средство индивидуализации, исключительное право на которое возникло ранее, либо в случаях установления конвенционного или выставочного приоритета средство индивидуализации, которое имеет более ранний приоритет.
При разработке проекта законодательной инициативы для изменения сложившейся судебной практики, в ст. 1252 ГК РФ должно быть четко указано, что эта норма применяется не только для случаев столкновения товарного знака с фирменным наименованием (или наоборот), товарного знака с коммерческим обозначением (или наоборот), но и в случае столкновения товарного знака с другим товарным знаком.
При этом я вполне допускаю, что ВАС РФ и ВС РФ, принимая п. 9 Постановления № 122, п. 62 Постановления № 5/29, п. 125 и п. 154 Постановления № 10, имели в виду совсем иное, а не то, что по факту применяют и указывают суды.
Пункт 9 Постановления № 122, п. 125 Постановления № 10 содержат положения, относящиеся к патентам, которые суды стали применять по аналогии для товарных знаков. Могут ли суды применять положения патентного законодательства по аналогии к отношениям, предметом которых являются товарные знаки? Полагаю, что в конкретной ситуации никакой аналогии быть не может.
В патентном праве действуют абсолютно иные критерии охраноспособности его объектов, и довольно часто встречается ситуация, когда могут существовать два «похожих» патента, имеющие разных правообладателей – это зависимые патенты. Сегодня такая сфера правоотношений регулируется ст. 1358.1 ГК РФ. И вполне допустимо, что более поздний патент имеет формулу, отличающуюся настолько, что патент имеет новизну и/или изобретательский уровень. Но при этом поздний патент включает в себя формулу раннего патента, то есть является зависимым, его нельзя использовать без согласия правообладателя раннего патента и выплаты лицензии за такое использование.
Применительно к товарным знакам такого понятия, как «зависимый товарный знак» нет. Так о каком применении аналогии права можно говорить?
В соответствии с п. 62 Постановления № 5/29, п. 154 Постановления № 10 у суда, рассматривающего спор о нарушении права на товарный знак, нет права рассматривать вопрос об охраноспособности товарного знака как истца, так и ответчика. В этих пунктах ничего не сказано о том, что наличие товарного знака у ответчика предоставляет возможность суду отказывать в иске владельцу раннего знака. Разве для принятия решения о нарушении товарного знака истца важно наличие товарного знака у ответчика?
О «праве нарушать» в других странах
Современные открытость и доступность информации позволяют исследовать законодательные положения и судебную практику других государств и выяснить, существует ли так называемое право нарушать закон в области товарных знаков за рубежом.
Изучив решения немецких судов по искам о запрете использования товарных знаков, не удалось найти ни одного решения, в котором истцу было бы отказано в иске в связи с наличием зарегистрированного товарного знака у ответчика. Возможно, ответчику не приходит в голову ссылаться на зарегистрированный товарный знак в качестве основания для отказа в иске из-за того, что у немецкого суда, рассматривающего иск о незаконном использовании товарного знака истца, есть полномочия по аннулированию товарного знака ответчика. Только и такие судебные решения найти не удалось. Ответчики не ссылаются на наличие у них зарегистрированного товарного знака, имеющего более поздний приоритет по сравнению с товарным знаком истца.
Впрочем, стоит отметить, что суд также может аннулировать и товарный знак истца, признав недобросовестность акта регистрации им товарного знака.
Такая же практика существует в Италии, Франции, США.
В Китае судебная практика аналогична действующей сегодня судебной практике в Российской Федерации.
Практика разрешения конфликтов, возникающих принарушении прав на товарные знаки
Фактор 2. Споры по товарным знакам разделены на виды (о регистрации товарных знаков, об оспаривании товарных знаков, о запрете использования товарных знаков) и предполагают прохождение судебной процедуры и обязательной административной стадии.
Существующая процедура регистрации товарных знаков не позволяет эффективно бороться с «правом нарушать» и препятствовать регистрации товарных знаков на имя вероятных ответчиков/нарушителей.
На примере спора между АО «РЕГИОН-ПРОДУКТ» (далее – «Регион-Продукт») и ООО «Глобал Снек» предлагаю рассмотреть, как в настоящее время выглядит разрешение конфликта, возникшего при нарушении права на товарный знак9.
Истец «Регион-Продукт» является правообладателем товарных знаков «ХРУСТ» по свидетельствам: № 298533, дата приоритета 10 марта 2004 г., дата регистрации 23 ноября 2005 г.; № 309406, дата приоритета 5 ноября 2004 г., дата регистрации 27 июня 2006 г.; № 379509, дата приоритета 16 августа 2007 г., дата регистрации 20 мая 2009 г.; № 389058, дата приоритета 16 августа 2007 г., дата регистрации 11 сентября 2009 г.; № 288513, дата приоритета 16 сентября 2003 г., дата регистрации 11 мая 2005 г.; № 542516, дата приоритета 18 октября 2013 г. дата регистрации 19 мая 2015 года.
Согласно свидетельствам товарным знакам предоставлена охрана в отношении всех товаров 29 и 30 класса МКТУ, в том числе для таких товаров, как: мука и зерновые продукты; хлебобулочные изделия; кондитерские изделия; дрожжи; пекарные порошки; бисквиты; блины; бриоши; булки; дрожжи; загустители для муки; печенье; продукты зерновые; продукты мучные; сладкое сдобное тесто для кондитерских изделий; сухари; сухари панировочные; ферменты для теста; хлеб; хлеб из пресного теста. А также для услуг 39 класса МКТУ, а именно: упаковка и хранение товаров.
Ответчик — конкурент истца ООО «Глобал Снек». Общество приступило к продаже товара с товарным знаком «ХРУСТЕЦ». Затем его представители подали на регистрацию заявку на товарный знак, и Роспатент зарегистрировал «нарушителю» товарный знак № 684718 «ХРУСТЕЦ» с датой приоритета от 30 марта 2018 г. в отношении товаров 29 и 30 классов МКТУ.
23 сентября 2019 г. «Регион-Продукт» подает на «Глобал Снек» исковое заявление в суд о запрете использования товарного знака. Суд отказывает виске, так как у ответчика к моменту вынесения решения есть зарегистрированный товарный знак.
Истец с решением не согласился и обжаловал судебный акт. В итоге решение первой инстанции оставлено без изменения апелляционным и кассационным судами.
«Регион-Продукт» подает в Роспатент возражение об оспаривании товарного знака нарушителя «Глобал Снек», и здесь возможны два варианта развития событий.
Вариант 1. (что произошло на самом деле и предположительно произойдет дальше).
Роспатент решением от 8 июля 2020 г. аннулировал действие товарного знака № 684718 «ХРУСТЕЦ».
Затем правообладатель товарного знака «ХРУСТ» АО «Регион-Продукт» обращается в суд с заявлением о пересмотре судебного решения по вновь открывшимся обстоятельствам. Суд первой инстанции принимает заявление к рассмотрению, но приостанавливает его в связи с тем, что решение Роспатента оспаривается в Суде по интеллектуальным правам компанией «Глобал Снек» (дело СИП-770/2020).
Можно ожидать, что к началу 2021 года СИП вынесет какое-то решение, затем оно будет обжаловано в кассации указанного Суда, и к середине 2021 года этот этап обжалования решения Роспатента получит свое завершение. Первая инстанция не ранее конца 2021 года сможет рассмотреть заявление о пересмотре судебного акта по новым обстоятельствам, и, вероятно, отменить судебное решение, а далее приступить к повторному рассмотрению иска без учета наличия у ответчика товарного знака.
К моменту вынесения повторного судебного решения судом первой инстанции пройдет более двух лет.
Вариант 2. (возможное развитие событий).
Роспатент принимает решение об отказе в аннулировании товарного знака нарушителя № 684718 «ХРУСТЕЦ».
В таком случае «Регион-Продукт» подает в СИП заявление об оспаривании решения Роспатента. И если СИП и Президиум СИП поддерживают решение Роспатента, то спор между правообладателем и нарушителем фактически заканчивается.
Если же СИП отменяет решение Роспатента и либо аннулирует действие товарного знака, принадлежащего «Глобал Снек», либо отправляет возражение на новое рассмотрение – в этом случае дело затягивается на 12–15 месяцев (время для повторного рассмотрения возражения в Роспатенте, обжалования такого решения в СИП и Президиум СИП сторонами).
Таким образом, в описанной выше ситуации, нарушитель может использовать спорный товарный знак 2–3 года и более, до тех пор, пока его товарный знак не будет оспорен и аннулирован.
Стоит ли нарушителю нести расходы по регистрации товарного знака и судебные издержки, чтобы получить «право нарушать»? Да, вероятно, раз такие ситуации происходят регулярно. Сможет ли правообладатель компенсировать понесенные им расходы на защиту собственного товарного знака? В большинстве случаев очевидно, что нет.
Конечно, аннулирование товарного знака означает его аннулирование с момента регистрации. После аннулирования товарного знака его как бы не существовало с момента вынесения решения о регистрации (п. 1 ст. 1512 ГК РФ).
Однако при предъявлении требований к нарушителю о возмещении ущерба и взыскании компенсации, нарушитель (ответчик) всегда аргументирует собственное поведение тем, что обладал зарегистрированным Роспатентом товарным знаком, использовал то, что зарегистрировал компетентный орган, и не он виноват в том, что такое право («право нарушать») было предоставлено ему компетентным госорганом. В результате суды снижают размер взыскиваемой компенсации.
Таким образом, из примеров рассмотренных судами споров о запрете использования или об оспаривании товарного знака видно, что не существует процедуры для эффективной борьбы с нарушителями. Нет системы, которая могла бы значительно ускорить рассмотрение спора о правомерности регистрации товарного знака, дающего ответчику «право нарушать».
Как можно ускорить процедуру оспаривания товарных знаков?
Сегодня не только предполагаемые нарушители знают о «праве нарушать». Многие добросовестные компании-правообладатели следят за заявками, подаваемыми на регистрацию, и направляют обращения с возражениями против поданных на регистрацию товарных знаков с целью предотвращения регистрации сходного знака конкурентом.
Правда, нынешняя процедура рассмотрения обращения против заявки весьма формальна и не стимулирует к подаче таких обращений. Если Роспатент, несмотря на поданное обращение, зарегистрирует товарный знак, то оспорить его можно только через подачу возражения против действия товарного знака.
Поэтому необходимо изменить процедуру рассмотрения обращений, которые подают правообладатели товарных знаков против заявок на регистрацию сходных обозначений. На сегодняшний день, хотя возможность подачи обращения и прописана в ст. 1493 ГК РФ, рассмотрение такого обращения происходит формально и заканчивается получением письма с ответом ФГБУ «Федеральный институт промышленной собственности» (ФИПС) о том, что обращение получено и будет учтено при проведении экспертизы заявки.
Экспертиза может не учесть сведения, указанные в обращении, и зарегистрировать товарный знак. В таком случае правообладатель раннего знака должен подать отдельное возражение в Палату по патентным спорам, фактически продублировав ранее поданное обращение и, возможно, расширив мотивы возражения.
Вероятна ситуация, когда экспертиза учтет поступившие в обращении сведения и откажет в регистрации заявленного обозначения. Тогда заявитель может подать возражение на решение экспертизы, правообладатель более ранних прав также имеет возможность направить обращение в Палату по патентным спорам. Однако, чаще всего, Палата по патентным спорам не соглашается с мнением экспертизы и правообладателя, отменяет решение об отказе в регистрации и регистрирует товарный знак заявителя (потенциального нарушителя).
При таком развитии событий, когда товарный знак регистрируют на основании решения Палаты по патентным спорам (Роспатента), правообладатель не может обжаловать это решение Роспатента сразу в СИП. Последний прекратит производство по такому заявлению из-за того, что правообладатель раннего знака, подававший обращение во время рассмотрения заявки, а затем подавший обращение в Палату по патентным спорам, не соблюдает досудебный порядок оспаривания права на товарный знак, так как не подал возражение в Палату по патентным спорам против действия зарегистрированного товарного знака.
Данный подход был применен в следующих определениях СИП: от 16 января 2015 г. по делу № СИП-660/2014; 3 сентября 2015 г. по делу № СИП-277/2015; 23 октября 2015 г. по делу № СИП-300/2015; 26 ноября 2015 г. по делу № СИП-539/2015; 15 апреля 2016 г. по делу № СИП-692/2015; 17 мая 2016 г. по делу № СИП-164/2016; 18 мая 2016 г. по делу № СИП-112/2016; 20 сентября 2016 г. по делу № СИП-405/2016; 12 февраля 2020 г. по делу № СИП-853/2019.
Если направление обращения в заявку со сходным знаком означало бы передачу рассмотрения такого обращения в Палату по патентным спорам с уплатой соответствующей пошлины, то это значительно сократило бы сроки разрешения спора о том, является ли поданное на регистрацию обозначение охраноспособным. И такой спор сразу происходил бы с участием спорящих сторон.
Таким образом, для оптимизации процесса оспаривания и рассмотрения споров о правомерности регистрации товарных знаков, необходимо изменить процедуру рассмотрения обращений, направляемых в отношении заявки на товарный знак.
Процедура рассмотрения обращений в отношении заявки, предлагаемая автором настоящей статьи, сегодня существует и активно применяется в другой системе рассмотрения заявок – в системе оппозиции, а не экспертизы.
Экспертиза заявки по существу vs система оппозиции
Около пяти лет назад Роспатент проводил опрос патентных поверенных и организаций, задействованных в сфере защиты товарных знаков, о возможности введения системы оппозиции вместо существующей экспертизы завяленных на регистрацию в качестве товарного знака обозначений. Опрос проводился под эгидой ускорения сроков рассмотрения заявок на регистрацию товарных знаков.
Система оппозиции не была введена, дальше опроса и сбора мнений специалистов вопрос не продвинулся. При этом за прошедшие несколько лет Роспатент сумел довольно значительно снизить сроки рассмотрения заявок на товарные знаки. Была введена система ускорения экспертизы, и сейчас получение решения о регистрации товарного знака за 1 месяц никого не удивляет. Можно ли считать, что заявители удовлетворены такой быстрой экспертизой заявок?
Уверен, что мнения разделяются, есть как довольные, так и недовольные столь скорой экспертизой. Выше были представлены аргументы в пользу внесения изменений в процедуру рассмотрения обращений, направляемых в заявки на товарные знаки. Такие изменения можно осуществлять и в нынешней системе рассмотрения заявок на товарные знаки – системе экспертизы заявок. Однако обсуждая введение процедуры рассмотрения обращений, можно также изучить возможность перехода на систему оппозиции. Предложение рассматривать обращения, направляемые в заявки на товарные знаки, по процедуре, аналогичной рассмотрению возражений в Палате по патентным спорам, взято, собственно, из системы оппозиции.
Главным преимуществом проведения экспертизы при регистрации товарного знака практически все специалисты называют то, что автоматически не будут зарегистрированы товарные знаки, сходные с ранними товарными знаками третьих лиц, и самому бизнесу не нужно следить за подаваемыми на регистрацию товарными знаками.
Но и в существующей сегодня системе Роспатент регулярно регистрирует сходные знаки. И неважно почему сходные знаки зарегистрированы: эксперт посчитал знаки несходными, не увидел ранние знаки или просто ошибся... Оспаривание сходных знаков в большинстве случаев начинается тогда, когда происходит реальное столкновение конкурентов.
Является ли это главное «преимущество» системы экспертизы реальным преимуществом? В случае, когда зарегистрированный товарный знак дает «право нарушать», конечно, бизнесу очень важно, чтобы кто-то препятствовал регистрации сходных товарных знаков и следил за этим. Но будет ли экспертиза заявки преимуществом в случае, если наличие более позднего товарного знака не позволит его правообладателю нарушать права раннего знака?
При условии внесения изменений в законодательство (или изменения судебной практики?), разрешающее судам выносить решения о запрете нарушения права на товарный знак вне зависимости от того, является ли ответчик/нарушитель правообладателем товарного знака с поздним приоритетом, такое преимущество системы экспертизы фактически сводится к нулю, так как владельцу раннего товарного знака будет уже неважно, есть ли у нарушителя права на поздний знак или нет, правообладателю раннего знака не нужно следить за подаваемыми на регистрацию заявками на товарные знаки и оспаривать сходный знак, имеющий более поздний приоритет, только лишь для того, чтобы у потенциального нарушителя не возникло «право нарушать».
Совсем недавно, в сентябре 2020 года, были введены новые правила рассмотрения споров в Палате по патентным спорам, которые во многом повторяют правила 2003 года. Главное нововведение – это возможность изменить, дополнить основания по оспариванию. Но новые правила не предусмотрели возможность рассмотрения обращений, подаваемых в заявки, в Палате по патентным спорам и привлечения в качестве третьего лица заявителя, направившего обращение. Такое рассмотрение обращения на стадии заявки значительно сократило бы сроки оспаривания сходных знаков.
Реальность системы оппозиции
Может возникнуть закономерный вопрос: если вдруг предложенные выше изменения будут внесены, то нужна ли процедура оппозиции? Давайте разберем, как в современном мире работает система оппозиции в ведомствах, применяющих такую систему.
Практически все, кто не подавал заявки в ведомство, где предусмотрена система оппозиции, полагают что правообладателю и/или заявителю сходных знаков нужно платить отдельно какой-то коммерческой компании за отслеживание подачи сходных знаков, а затем подавать оппозицию. Оба действия стоят денег, поэтому считается, что такой дополнительный расход становится чрезмерным
The Department of the Tax and Customs Policy of the Ministry of Finance of the Russian Federation has provided an explanation regarding a controversial situation, the essence of which is as follows: a foreign entity with a permanent location in the UK has received damages for the illegal use of a trademark following a number of the legal proceedings. Such payments are considered as income of the foreign legal entity on the territory of the Russian Federation. At the same time, the company had not paid a profit tax in Russia, what became a reason for the appeals filed to the Department. Having analyzed the existing legal norms, the Department of the Tax and Customs Policy of the Ministry of Finance of the Russian Federation published an information letter, where it explained the sequence of actions in such case.
According to Subparagraph 4 of Paragraph1 of Article 309 of the Tax Code of the Russian Federation, the following shall be attributed to the foreign company income not related to its business activities: “The income from the use in the Russian Federation of the rights to the intellectual property subject matters.” “Other similar income” is also mentioned in the above norm. The representatives of the Department note that: “Thus, the foreign entity income being paid by the Russian entities according to the court decision regarding the indicated statements of claim shall be subject to be taxed proceeding from their kind classification in accordance with the provisions of Paragraph 1 of Article 309 of the Code…” 
However, provided there is an international treaty, in the case of a contentious situation, the norms of the international treaty have a priority importance over the provisions of the state law (in this case, the Tax Code). The modern economic relations have lost their territorial character and they are increasingly emerging on the territory of several states. This is usually a reason of the difficulties, while determining the amounts and place of the tax payments. To simplify the system of calculating the amount and procedure for the payments between Russia and other countries, including the UK, the bilateral treaties on avoidance of double taxation are concluded.
Thus, in accordance with the Convention between the Government of the Russian Federation and the Government of the United Kingdom of Great Britain and Northern Ireland of February 15, 1994 “On the Avoiding Double Taxation and Preventing Tax Evasion with Respect to the Taxes on Income and Property Value Increase,” a special procedure for determining tax payments is used for the residents of the participating countries. In accordance with the above treaty, if the firm has an actual right to income from the intellectual property subject matters on the territory of one participating state, but the permanent location of the company is on the territory of another participating country, the tax shall be paid only on the territory of the state, where the entity is located.
Summing up, the following algorithm of actions can be derived: according to the general rule, while recovering damages in favor of a foreign company for the illegal use of a trademark, this amount is considered as the income from the use of intellectual property and it is taxed according to the legislation of the Russian Federation. However, if the treaty on avoiding double taxation is concluded between Russia and the country, where the foreign company is permanently located, its norms have a priority importance. And then, the amount and procedure for the tax payments should be determined on the basis of the content of the treaty concluded.
Despite the fact that the Letter of the Department is of an informational nature, it is should be assumed that now the tax authorities will be vigilant in monitoring the payments that the foreign companies must transfer to the Treasury of the Russian Federation after receiving the damages amounts adjudged by the courts.
According to the data represented in the analytical reports of Rospatent, in 2018 the number of the patents granted for industrial designs increased by 18.1% compared with their number in the previous year, and amounted to 6305 patents. The modern state policy is aimed at developing the field of intellectual property in Russia, drawing the public attention to the results of intellectual activity and inventiveness, and increasing the volume of patenting. The general indicators for the registration of industrial designs increase annually, however, compared with inventions or utility models, the number of the claimed and registered subject matters is much less.
The recent changes in the field of industrial designs can be divided into two groups: the ones related to the development of the legal norms and optimization of the check process of the claimed results of intellectual activity, and the ones directly related to the requirements to the subject matter of patenting.
The development of the legislation and the process of carrying out an examination of the claimed industrial designs
The Federal Law on amendments to Part 4 of the Civil Code of the Russian Federation was signed in December 2018, and it will enter into force in June 2019. The adopted normative provisions provide for the introduction of the temporary legal protection for the industrial designs that have passed the stage of an examination as to form with a positive result. The temporary legal protection will be provided from the moment of publication of the information on the claimed subject matter at the request of the applicant. In fact, the said legislation developments will lead to the fact that, after obtaining a patent, the right holder will get a possibility to recover compensation for the use of the industrial design from the moment of publication of the information on the application in the official bulletin.
Regarding the procedure for checking the applications for industrial designs, the examiners of the Patent Office note a positive trend in reducing the terms for considering the applications: in 2018, the process lasted at an average of 5.5 months, which is less by a month compared to the indicators of the last year. Rospatent also supports actively the policy of promoting filing electronic applications. According to statistics, 2,545 electronic applications for industrial designs were filed in the past year.
The trends in the field of creation and registration of the industrial designs
There is a tightening of the requirements to the unity of the claimed result of intellectual activity. The lawyers of the company “Zuykov and Partners” encountered a number of difficulties, when filing an application for the registration of an industrial design. A subject matter “A Bottle with a Cork and the Stickers (7 options)” was presented in the application. During carrying out an examination, the employees of the Office came to a conclusion that the bottle with the cork and the stickers belonged to different classes of the ICID (“a bottle with a cork” refers to class 09-01, “stickers” – to class 19-08 of the ICID). And therefore, according to the employees of Rospatent, the claimed industrial design did not meet the requirement of the unity, stipulated by Paragraph 1 of Article 1317 of the Civil Code of the Russian Federation. Due to the above reason, the applicant was sent a notification of non-compliance with the patentability criteria, which stated that it was only possible to file separate independent applications. The representatives of the company “Zuykov and Partners” adhered to a different position and addressed with a request to continue paperwork with respect to the application in accordance with the current legislation. To justify the request, the following reasons were indicated:
- In accordance with the norms of Paragraph 1 of Article 1377 of the Civil Code of the Russian Federation, an application for the grant of a patent for an industrial design may refer both to one industrial design, and to their group, if they are interconnected so much that they form a unified creative concept (the requirement of the unity of an industrial design).
- What had been claimed for the registration was a unified article consisting of a bottle with a cork and the stickers. The article described was a unified creative concept. The fact that each of those unified articles belongs to several classes does not constitute a basis for asserting a violation of the requirement for the unity of an industrial design.
- In the practice of Rospatent there are the cases of the registration of such articles, which are “the bottles with the stickers and a label,” “the bottles with the stickers” with the options. Therefore, such subject matters are capable of complying with the requirement of the unity of an industrial design.
Having examined the submitted arguments, the specialists of Rospatent made a decision to resume the process of considering and carrying out further examination.
There is also one interesting case in the practice of the lawyers of the company “Zuykov and Partners” related to the registration of an industrial design and its options. According to the Requirements to the Documents of an Application for Granting a Patent for an Industrial Design, it is possible to register two or more industrial designs, which are the options of a solution of the article appearance, belong to the same class of the ICID and differ by non-essential features and (or) the features, which determine the combination of colors. A subject matter “A Gun for Distributing Construction Foam” was claimed for the registration. The application had been filed based on the convention application, originally filed in China, and it contained two options of the article, which were different by the presence of a button at the bottom of the handle. Having considered the application, the employees of the Patent Office indicated that such difference should be considered to be an essential feature of the design, and two independent applications should be filed for each of the indicated subject matters. To continue the registration procedure, the applicant had to exclude one option of the article. As the analysis of the described case and other similar situations shows, usually, only one subject matter in different color solutions is registered as an industrial design option. In the rest cases the specialists of Rospatent indicate that the claimed options have distinctive essential features and notify the applicants on the need for separating the applications.
Thus, speaking about the new trends in the field of the industrial designs, it is worth highlighting the emergence of the institution of the temporary legal protection, toughening the requirements to the unity of the claimed subject matter and the registration of the industrial design options. Regarding the examination procedure and the grant of patents, there is a reduction in the terms for considering the applications and an increase in the number of electronic applications, what is due to the possibility of filing the documents via the Internet day and night, as well as to a reduced amount of the state fee.
One of the conditions for the successful promotion of the products is distinguishing them with the help of a memorable packaging or a label. At the same time, it is important for the manufacturer to secure the right to the use of the original subject matter, what will allow preventing the unlawful actions of the unscrupulous competitors, as well as defending the violated rights.
If to consider the state registration of the actual appearance of the article, its shape or packaging, then there are several ways of the legal protection of the subject matter. Namely: to register a trademark or an industrial design. So, Article 1482 of the Civil Code of the Russian Federation states that word, figurative and combined, as well as three-dimensional or other designations shall be protected as trademarks. Among other things, according to the explanatory provisions of the Guide for the State Registration of Trademarks, it is allowed to register the product appearance (for example, an original bottle, a product design, etc.). As to the industrial designs, in accordance with Paragraph 1 of Article 1352 of the Civil Code of the Russian Federation, these are the solutions of an article appearance or an artisan industry manufacture. On the basis of this legal norm, it becomes obvious that, provided the compliance with the patentability criteria, the protection of the package or the product appearance as an industrial design is permissible.
Thus, the following question arises before the owner of the result of intellectual activity: “In what form is it better to register the created packaging or design?” In the cases, when the alternative or simultaneous registration of the subject matter is possible in several fields of intellectual rights, a term “crossing of defense” is used. It means that subject to the appropriate registration of the rights of the holder, the comprehensive (crossing) legal protection is being in force, which guarantees the enhanced defense of the subject matter used, for example, in accordance with the norms regarding industrial property and trademarks. It is important to note that, for the legal action “crossing of defense,” the right holder most often must commit a number of actions. For example, the registration of the subject matter of intellectual property and obtaining subsequently the protection documents issued by the competent public authority.
The “crossing of defense” in the subject matters of the rights to trademarks and industrial designs can be visualized as follows.
The image clearly shows that the “crossing of defense” is possible only with respect to a specific group of the subject matters, the protection of which is possible both as trademarks and as industrial designs. At the same time, the right holder may register the result of intellectual activity in the same field, but then the “crossing of defense” will not be in force, and there is a possibility of a collision with the rights of another legal subject.
Subject to the compliance with the necessary requirements, before deciding in what form to register the result of intellectual activity, it is worth considering the advantages of each option.
The main advantages for the trademark registration come down to the following:
- It is allowed to extend the term of the legal protection an unlimited number of times. The trademark certificate is in force within ten years from the date of filing an application for registration of the designation, at that the further extension every ten years is possible.
- A variety of the registrable subject matters. The combined designations are registered as trademarks, including those ones that include three-dimensional, holographic, video or sound elements.
- The simplified requirements to the novelty of the subject matter compared to the novelty of industrial designs. During the examination of the trademark, the examiners take into account the information about the subject matters within the country, while the requirement of the world-wide novelty is imposed upon the industrial designs.
The registration of the subject matter as an industrial design has a number of advantages:
- The patent holder can be a physical person, while only a legal entity or an individual entrepreneur can become the owner of a trademark certificate.
- There is no obligation to use the registered industrial design. After obtaining the patent, the right holder may, at his own discretion, dispose of the subject matter (including, he may not use it) during the period of protection being in force. As to the trademarks, the early termination of the certificate due to the non-use of the designation is possible at the request of the third parties.
The advantages of the comprehensive registration of the subject matter are as follows:
- Having registered the subject matter in several fields at once, the right holder excludes the possibility of the collision of the rights with another legal subject.
- If one of the kinds of the protection is terminated early, the registration in another field will continue being in force. For example, if the trademark certificate is cancelled as a result of challenging the registration granted this will in no way affect the validity of the patent for the industrial design.
A striking example of the adverse consequences of the registration of the subject matter in the same field of intellectual property was the opposition of the companies “Masan Rus Trading” and “Virosko-N.” On August 27, 2003, “Torgovyi Dom “Virosko,” whose successor the organization “Virosko-N” became, filed an application for the registration of a three-dimensional trademark in the form of a plastic bottle of an original form, for the use in the 29th and 30th classes of the ICGS (tomato paste, mustard, condiments, including sauces, ketchup, and vinegar). Subsequently, Rospatent granted protection certificate No. 264741.
Trademark No. 264741
On August 28, 2003, the company “Masan Rus Trading” filed an application for the registration of a utility model in the form of the shutter for a vessel, and then, on September 1, sent an application for granting protection to the industrial design, which was a plastic bottle of an original form. As a result, two patents were obtained: No. 34505 and No. 56267.
Utility model No. 34505 “The Shutter for a Vessel”
Industrial design No. 56267
Thus, the companies officially obtained the rights to the use of the visually identical subject matters, while it is worth adding that both organizations manufactured and packaged a homogeneous product (sauce) in them. “Virosko-N” appealed to the court with a claim to stop the violation of the rights to the trademark and to prohibit all actions related to the use of the disputed subject matter. The first-instance court satisfied the claim. However, the Court of Appeal cancelled the decision and justified the position as follows: both companies owned the registered subject matters of intellectual property. The purpose of these subject matters did not coincide, as the trademark was used to distinguish the products, and the industrial design was a new technical and artistic and design solution of the product, which in that case was used to pack the product. The parties to the conflict used the disputed subject matter for the various purposes; therefore there was no violation of the plaintiff’s rights. The court of cassation supported those conclusions and clarified that “Masan Rus Trading” used lawfully the registered results of intellectual activity belonging to it. “Therefore, in the case if the use of an invention, an industrial design or a utility model can not be carried out without violating the exclusive rights of another owner, the latter may apply to the Federal Executive Authority on Intellectual Property with a statement on an early termination of the patent for the invention, the utility model or the industrial design.” The described position of the representatives of the court allows concluding that in the event of the “crossing of protection” with the owner of another subject matter; first of all it is necessary to contact Rospatent with a statement on challenging the legal protection granted.
The current legislation contains the norms that do not allow the simultaneous registration of the subject matters with the “crossing of protection” with respect to different applicants. Thus, according to Subparagraph 3 of Paragraph 9 of Article 1483 of the Civil Code of the Russian Federation, “The designations shall not be registered as the trademarks, if they are identical to: ... the industrial design, the correspondence mark, the rights to which have arisen earlier than the priority date of the trademark being registered.” Regarding the industrial designs, the legislator also indicates that the registration of the subject matters that are identical to the ones that have already been registered shall not be granted (Paragraph 5 of Article 1352 of the Civil Code of the Russian Federation). However, even taking into account the existing provisions, the collision of the rights is not excluded; due to this fact, obtaining the comprehensive legal protection in relation to the subject matter being used seems justified.
The civil law ways of defending the rights to a trademark and an industrial design
Speaking about the differences and advantages of defending the subject matters as the trademarks and the industrial designs, it is worth noting that in the legal terminology such concepts as the “protection of rights” and the “defense of rights” are distinguished. The first concept is broader in the meaning and it covers all relationships from the moment the particular right has arisen and till to the moment of its termination, while the definition the “defense of rights” is used, when the rights and legitimate interests of the legal subject are violated.
According to the general provisions of Part 4 of the Civil Code of the Russian Federation the right holder of any subject matter of intellectual property is entitled to the defense of the exclusive rights by asserting the claims:
- on the recognition of the right;
- on the suppression of the illegal actions;
- on the reimbursement for the losses;
- on the seizure and the destruction of the tangible media with the illegally used subject matters of intellectual property;
- on the publication of the court decision on the violation committed with the indication of the actual right holder;
- on invalidating the grant of the legal protection to the subject matter of intellectual property;
- on the seizure and the destruction of the equipment, etc., used for committing the offence.
The legislator identifies the additional ways to defend the rights to a trademark. According to Article 1515 of the Civil Code of the Russian Federation, in the case of the illegal use, the right holder may appeal to the court and claim:
- To seize from the circulation and to destruct the subject matters on which the trademark or identical designation is placed illegally;
- In accordance with Paragraph 4 of Article 1515 of the Civil Code of the Russian Federation: “... instead the reimbursement of the losses – the payment of compensation:
- in the amount from ten thousand roubles to five million roubles determined at the discretion of the court on the basis of the nature of the violation;
- or in double the amount of the value of the products on which the trademark is placed illegally,
- or in double the amount of the value of the right of the use of the trademark determined on the basis of the price, which in the comparable circumstances is usually charged for the lawful use of the trademark.”
The norms of Article 1406.1 of the Civil Code of the Russian Federation contain a list of alternative sanctions for the illegal use of industrial designs. The patent holder is entitled to claim: “... instead of the reimbursement of the losses – the payment of compensation:
- in the amount from ten thousand roubles to five million roubles determined at the discretion of the court on the basis of the nature of the violation;
- or in double the amount of the value of the right of the industrial design determined on the basis of the price, which in the comparable circumstances is usually charged for the lawful use of the existing subject matter.”
What is better to register: an industrial design or a trademark?
Subject to the compliance with the requirements for the registration, the right holder chooses independently in what form to register the result of intellectual activity. To make a final decision, it is worth taking into account the cost of the procedure, maintaining the protection document in force and the expediency of one or another kind of protecting depending on the intended way of the use. The analysis of the norms in the field of the trademarks and the industrial designs shows that the main differences come down to the terms and the procedure for the validity of the certificate or the patent and the level of the requirements to the registration subject matter. The stipulated civil law ways of the defense are almost identical. At the same time, it is not prohibited by the law to register the same intellectual property subject matter in several fields with respect to the same right holder. It seems logical and correct to obtain the comprehensive legal protection in the form of the registration of the subject matter as a trademark and an industrial design.
The use of geographical names in means of individualization
According to the Great Soviet Encyclopedia, geographical names shall mean: “... the proper names of mainlands, oceans, seas, rivers, lakes, islands, mountains, countries, cities, settlements and all other geographical objects on the surface of the Earth.” It is advisable to use geographical names in the designations that individualize a product, thus forming in the consumer’s mind an associative connection between the product and the peculiarities of a particular geographical object.
The means of individualization containing geographical names can be divided into two groups:
1. The objects in which the geographical name is one of the elements.
2. The designations consisting of a geographical name.
Considering the possibility of the existence of several manufacturers or distributors of similar products on the territory of one geographical object, the specialists of Rospatent, in order to protect the interests of ordinary consumers, pay special attention to the examination of such designations.
The peculiarities of the registration of the designations comprising geographical names
A trademark is the most frequently registered means of individualization. As a general rule, according to Subparagraph 3 of Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation: “No state registration as a trademark shall be granted to the designations, which do not have distinctiveness or which consist only of the elements that: characterize the products, including the ones that indicate to their kind, quality, quantity, property, purpose, value as well as to the time, place and method of their manufacture or sale....” However, it is allowed to include in the trademark the above elements as unprotected, provided that they do not occupy a dominant position in the designation. Consolidating the restrictions of such kind is not incidental: the right holder of the trademark has the exclusive right to the registered object. If Rospatent provides legal protection to the trademark consisting solely of a geographical name, it will be impossible to use such element in other designations.
The variety of trademarks comprising geographical names.
1. Considering the position that the geographical name occupies, the following shall be distinguished:
― The designations partly consisting of geographical names. In this case, the means of individualization shall be granted protection, and the geographical name shall be included as an unprotected element.
― The trademarks totally consisting of a geographical name. The registration of such designations is made very rarely. As the specialists of Rospatent point out, the protection of such trademarks is permissible only in the case when the geographical name used is not well known.
2. Depending on the purpose for which use the geographical name is used.
― The element is included to indicate to the place of the manufacture, sales or location of the manufacturer. The position of the specialists of Rospatent is that granting protection to such designations is unadvisable. According to Paragraph 2.4 of the Rospatent Recommendations on Certain issues of the Examination of the Claimed Designations: “... The approach is explained by the fact that the geographical name indicating to the geographical origin of the product must be free for use by different manufacturers who manufacture the products, which quality, reputation and other characteristics are associated with the peculiarities of the place of manufacture of the product, with the natural conditions of the latter.” The registration of the designation is possible with the indication of a geographical name as an unprotected element.
― The geographical names used in the designations as a fantasy element and not perceived as an indication to the place of manufacture or sale of the product. According to Rospatent, the trademarks with such elements constitute the least representative group of designations.
The designations with a geographical name as a dominant element
The name of the place of origin of the product as a means of individualization indicating to a particular geographical object
According to the provisions of Article 1516 of the Civil Code of the Russian Federation, the NPOP is a designation that consists of or includes a geographical name (or its derivatives), which has become famous as a result of its use in relation to the product, which special properties are mainly determined by the natural conditions being characteristic of this geographical object and/or the human factors. Thus, the product in relation to which the NPOP is used is necessarily associated with the geographical object and it guarantees the presence of special qualities of the product. The legislator limits a number of the objects that are allowed for the registration – the designation must be known for the reason of the use in relation to the declared product. The applications for the registration of the names of the places of origin of the products are required to include the descriptions of specific properties of the product and an indication of the place of origin of the product, the natural conditions and (or) the human factors that determine the specific properties of the product. According to Paragraph 5 of Article 1522 of the Civil Code of the Russian Federation, if the geographical object is located on the territory of the Russian Federation, it is necessary to enclose a conclusion of the authorized executive authority on the fact that within this geographical object the applicant manufactures the product that meets the requirements of Paragraph 1 of Article 1516 of the Civil Code of the Russian Federation. Both the compliance of the designation with the requirements and also the justification of the indication of the product’s origin are checked during the examination.
This year, the Bill containing the proposals for amending certain provisions of Part 4 of the Civil Code of the Russian Federation was submitted to the State Duma. The following condition is proposed to add to the requirements for the use and registration of the NPOP: “All stages of the product manufacture that influence on the formation of its special properties should be carried out on the territory of the given geographical object.” Adding the requirement to describe the specific properties of the product in the application for the NPOP is also considered.
A geographical indication is a new means of individualization for promoting the regional brands
In the middle of 2018, in the first reading, the State Duma adopted Bill No. 509994-7, according to which it is proposed to add a new object of legal protection – a geographical indication. Currently, the document is being finalized for the second reading. The text of the Bill is available for reviewing. According to the provisions of the act under consideration, a geographical indication is defined as: “... a designation that allows identifying a product as originating from the territory of a geographical object, while the product’s certain quality, reputation or its other characteristics are largely determined by its geographical origin.”
A number of specific requirements will be brought forward for the registration of such designations. Firstly, at least one of the stages of the product manufacturing that influence on the formation of the quality, reputation or other characteristics should be carried out on the territory of the indicated geographical object. Secondly, the applicant is obliged to submit the data on the place of origin of the product, on the association of the product’s certain quality, reputation or other characteristics with the place of origin. The product’s specific features, the conditions of storage, transportation and the procedure for monitoring the compliance with the conditions of the manufacture and the characteristics of the product should be described in the application.
Advantages and disadvantages of using the means of individualization containing geographical objects
The obvious advantage of such designations is drawing the consumer’s attention to the product by indicating to the product’s unique characteristics associated with the peculiarities of the geographical object. However, when using the means of individualization with geographical names, it is highly probable that the consumer will be confused in relation to the properties of the product or to its manufacturer. Thus, thinking whether it is advisable to use a geographical name in the designation, it should be taken into account that the inclusion of such specific element can both strengthen the position of the right holder at a competitive market and weaken it reducing the consumer’s demand in the result of mixing the similar products.
law, the court must determine independently the measures necessary for the use, which may not havebeen specified in the norms, being guided by the principle of proportionality.Among the interim measures used in the copyright disputes there are those that are due to the specifics ofthe field. These include the measures to prohibit the transportation, storage or ownership of thecounterfeit copies, as well as the actions to arrest the materials and the equipment used to manufacture thecounterfeit copies. In respect of the specified measures, there are various discussions in respect of thefault and intent in the defendant’s actions at the transportation, storage or, for example, the use of theequipment. After all, the owners of the property (the vehicles or the apparatuses for the manufacture)could have been unaware of the illegality of the actions being performed. To minimize the cases ofdamage to innocent persons, Paragraph 1 of Article 1302 of the Civil Code of the Russian Federationstates that in order to prohibit the actions the judicial authority must have sufficient ground to assume thatthe actions of the person are illegal.Why we need the measures to secure the claims in the copyrightAssessing the need to file a petition for the interim measures, the person whose rights are violated shouldtake into account the following:― According to Paragraph 1 of Article 50 of the TRIPS Agreement, the use of the interim measures isaimed at:“a) preventing the occurrence of a violation of any intellectual property right;b) preserving the relevant evidence relating to the alleged violations.” 1― The actions performed timely in order to secure the claim will allow reducing the time costs and theywill serve as a guarantee of the execution of the court decision in the case.
1 URL: http://www.wipo.int/classifications/nice/en/faq.html
The expediency and effectiveness of using the universal classification is obvious. Firstly, the correct useof the ICGS allows the applicant to check the uniqueness of the designation in comparison with thealready registered means of individualization with respect to the selected products or services, and also tounderstand how likely obtaining a certificate is. Secondly, the availability of the unified classificationsimplifies the check of the designation at an examination stage, and, therefore, this allows reducing theperiod during which a decision on protectability of the trademark or service mark is made. The ICGSincludes an extensive list of the products and services, regularly added by the new subject mattersappearing at the conditions of a developing economy, which are distinguished with the trademarks. Theuse of the unified list of the products and services facilitates the work of the experts greatly.Why we need checking the list of the products and services, when the application is filedBefore filing an application for the registration of a trademark or a service mark, the holder of thedesignation should examine the ICGS in order to clarify the list of the classes and products with respect towhich the designation is planned to be registered. As the analysis of the Classification shows, someproducts of the same type are in different classes, for example, “Electric Juicers” are assigned to class 7of the ICGS, and “Household Non-Electric Juicers” are included into class 21 of the ICGS. It isappropriate to include in the list even the products that the manufacturer plans to produce if themanufacturing is expanded, since adding new classes after registering the trademark is impossible.Then it is recommended to check for the presence of the confusingly similar or identical designations,among those already registered with respect to the selected classes and products. According to theprovisions of the current legislation, the identical trademarks shall not be registered to distinguish thehomogeneous products. This is due to the possibility of confusing the consumer as a result of using suchdesignations. At the same time, according to the Rospatent's Methodological Recommendations: “Theadopted International Classification of Goods and Services for the Purposes of the Registration of Marksdoes not affect the assessment of the homogeneity of the products and services.” 2 It is necessary toassume that such position of the Office is due to the presence of the homogeneous products in differentclasses.Assessing the justification and necessity of carrying out the check of the list of the products and services,it is possible to make an unambiguous conclusion that this procedure will allow the applicant to reducesignificantly the time and money costs for the registration of a trademark or a service mark.
The benefits of the registration of trademarks using the Madrid SystemUsing the Madrid System to file an international application, the holder of the trademark gets a number ofadvantages. Firstly, a single application is filed in one of three languages: English, Spanish or French.Secondly, a total fee shall be paid to the International Bureau. Thirdly, the period of examination of theapplication is reduced compared with the period of consideration directly within each Office. And alsothe procedures for changing the data about the right holder and for extending the period of protection ofthe registered designation are simplified.The Madrid System for the registration of trademarks as an instrument of globalizationIn a rapidly developing market relations the use of a trademark is the best way to increase demand and toimprove the company's competitiveness. The distinctive feature of the modern world economy is theabsence of obstacles to the movement of products around the world. Previously, it has been difficult tosell and buy on the territory of different states; also it has been extremely costly. Today, trading on theInternet and the numerous delivery methods make it possible to order and receive the product anywhere.In the circumstances, the simultaneous registration of the trademark in several countries is justified, and itwill allow protecting the designation and products against the illegal actions of the law violators.The Madrid System suggests that the right holders should take advantage of the Union of 102 membersrepresenting the interests of 118 countries. According to the WIPO data: “These members account formore than 80% of the world trade, and it can grow as the number of the Union members increases.” 1About 1.3 million trademarks have been registered by filing an international application.The person registering the trademark under the Madrid System gets a resource to ensure protection of thedesignation in several jurisdictions at once. As the Nestlé representative notes: “It is economicallyadvantageous, it requires minimal bureaucratic costs and it has a minimum of administrative barriers; itdoes not require powers of attorney and agents.” 2 Thanks to the use of the System, the procedure forextending the period of protection of trademarks is simplified. If desired, the right holder is entitled torefuse from the prolongation of the registration in a number of countries or, conversely, to expand the listof the states, in which the designation is registered.In conclusion, it is worth noting that in the process of the global economic integration, the Madrid Systemfor the registration of trademarks is a modern tool that allows the right holder, who has entered the worldmarket, to ensure timely and effective protection of his own means of individualization.
still distinguished separately. This is due to the fact that this way of a free use can both lead to theemergence of a new work (with additions, the indication to the author's opinion, etc.), and it can be usedfor a simple reproduction of various excerpts of newspaper or magazine articles.The peculiarities of the use of the legal provisions of Subparagraphs 1 and 2 of Paragraph 1 ofArticle 1274 of the Civil Code of the Russian FederationThe above Article contains a number of terms and concepts that require clarification and specificity.Enumerating the cases of a free use of works without the right holder’s consent, the legislator indicates toa possibility of using for scientific and educational purposes. At a superficial review, these terms seem tobe synonymous. Therefore, it seems necessary to consider them in more detail. The scientific purposesshall be understood as the study and analysis of existing works (textbooks, monographs, scientificarticles, etc.) for the subsequent development of new knowledge about the subject matter or the researchsubject. The educational purposes shall be meant the study of subject matters of the copyright foreducational purposes. Thus, the qualitative difference of the use of works for scientific purposes from theuse for educational purposes is to obtain the new information, conclusions or knowledge about the subjectmatter of the research, which are not contained in the quoted sources.The determination of the volume, in which the work or its excerpt can be used freely, causes difficulty.Article 1274 of the Civil Code of the Russian Federation states that the volume should be justified by thepurpose of quoting. Due to the absence of a more detailed description of this concept, in the event ofdisputable situations, the determination of the permissible size of the quoted subject matter falls withinthe jurisdiction of the judicial authorities. When considering the cases related to the legality of a free useof works without the author’s consent, the court shall take into account the following circumstances:whether the quotations are used for the purposes specified in the Articles of the Civil Code of the RussianFederation; whether the author of the borrowed excerpt or work is indicated; what the volume of theindicated element is, in comparison with the work, in which it is used; as well as the practice of a free useof the quoted subject matter of the copyright.
1 https://rupto.ru/content/uploadfiles/docs/otchet_2017_ru.pdf2 http://new.fips.ru/documents/npa-rf/prikazy-minekonomrazvitiya-rf/prikaz-ministerstva-ekonomicheskogo-razvitiya-rf-ot-20-iyulya-2015-g-482.php#P32
Combined trademarksThe combined means of individualization are defined as the designations consisting of a combination ofword, figurative, three-dimensional and other elements. This kind of designations seems to be the mostsuccessful for the registration as a trademark. The combined subject matter, consisting of a complex ofelements, influences the consumer through various “channels” of perception: visual and audio, and,possibly, kinesthetic. Such trademark is universal and multifunctional.Three-dimensional trademarksIn Paragraph 32 of the Rules, such designations include: “three-dimensional subject matters, figures andcombinations of lines and figures in a spatial arrangement, which may be a form of the product or its part,a form of the packaging of the product, a form not related to the product.” In case, when the three-dimensional means of individualization is filed for the registration, the holder of the trademark shallrepresent a general view of this subject matter in the application.Other designationsOther designations include: sound, light, changeable, holographic, tactile, positional, olfactory and tastedesignations. Despite the increase in the number of applications filed for the registration of suchdesignations, the number of the registered trademarks from this group is rather modest compared to word,figurative or combined means of individualization.Sound trademarks are used for radio or television advertising. The applicant of the sound designationshall submit for examination a soundtrack on a digital media.The changeable trademarks consist of a combination of figurative, word, light, sound designations, andthey are used in b-rolls of television companies and film companies.The tactile trademarks are most often intended for the perception of the product by visually impairedconsumers and they are made in a special relief and dot font.The taste and olfactory trademarks usually refer to the characteristics of food products and beverages. Inorder to become protectable, such designations must acquire distinctiveness as a result of the use withrespect to the claimed products. As it has been noted in the Guide for the State Registration of aTrademark, Service Mark, Collective Mark: “the smell should not be a natural property of a product (forexample, the smell of leather for shoes, the smell of fruit for fruit juice).” 3 If the olfactory or tastedesignation is filed for the registration, the applicant should describe clearly and intelligibly in a wordform the characteristics of the smell or taste.In what form one should register a trademarkWhen creating a designation, a potential right holder of a trademark should take into account thefollowing circumstances. According to the materials of the Rospatent reports, word, figurative andcombined trademarks are registered in the majority of cases. Consequently, there are especially manysuch subject matters, what means there is a high risk of establishing identity or similarity to the degree ofconfusion with the already registered means of individualization. Due to this reason additional difficultiesin developing a new and original trademark may appear. Perhaps one should pay attention to more raredesignations, for example, sound, light, olfactory ones, or include them as elements in the combinedmeans of individualization. It is also important to take into account the class of the consumers withrespect to whom the sale of the product is intended, the peculiarities of the types of designations and the
3 The Guide for the implementation of administrative procedures and actions within the framework of providing the stateservice for the state registration of a utility model and for the grant of a patent for a utility model, its duplicate – URL:https://rupto.ru/ru/documents/ruc-tz/download
specificity of the products being manufactured. When creating and registering the designation, it is worthremembering that the buyer does not spend a lot of time studying the trademark, therefore the trademarkmust be memorable and unique.
1 The Federal Law of December 30, 2008 No. 316-FZ “On Patent Attorneys”2 The Rospatent report on the number of the patent attorneys in the regions of the Russian Federation for 2017 – URL:https://rupto.ru/ru/activities/pat_pov/sved-pat-pov3 Horoshkeev V. A. Who about what, but the patent attorneys about their law // Patent Attorney – 2018 – No. 3 – URL:http://www.patentinfo.ru/issue/3p_18.html
considers granting legal protection to another subject matter to be illegal. In such cases, the use of apatent attorney as a representative in the Chamber for Patent Disputes will be the most correct decision.The patent attorney, being the person who constantly interacts with the Federal Executive Authority andensures the correct and timely filing the documents required for the registration, will be able to composecorrectly an objection, as well as to assess correctly the expediency of addressing to the Chamber forPatent Disputes.The participation in the court proceedingsThe patent attorney can act as an examiner or he can be a representative in the court in the cases involvingthe intellectual rights.The examination shall be appointed by the court in the cases, where it is necessary to establish the factsrequiring the special knowledge. The patent attorney, depending on his qualification, has the right to holda patent and technical examination, to study the issue of similarity of the designations in the event of adispute with respect to the trademarks or to analyze the products with respect to which the means ofindividualization have been registered as to their homogeneity. The examiner’s conclusion shall berecognized as evidence, along with and on an equal basis with other evidence. But because of the specificknowledge of the person, who has conducted the examination, the court, when making a decision, pays anincreased attention to such conclusions.The right of the patent attorney to participate as a representative on the client's behalf during the courtproceedings shall be certified by the power of attorney that does not require notarization. The advantagesof such representation consist in understanding the essence and the specifics of the dispute arising fromthe peculiarities of the field of the intellectual property. At the same time, it should be noted that thestatus of a patent attorney does not exclude the possibility of a person to have simultaneously a lawyerstatus. 4 For this reason, some subjects are patent attorneys and simultaneously they have a lawyer status.Other activities on the protection of the rights of the holder of the intellectual property subjectmatterUnder the norms of the Federal Law “On Patent Attorneys” the range of actions of the patent attorney inthis case shall be limited to the actions that do not contradict to the legislation. Such activities include, forexample, writing and sending the letters of claim to the person who is offending the rights of the person,who is represented by the patent attorneys.The mission and the place of a patent attorney in the intellectual property protectionThe clear arguments can be given to justify the use of the services of a patent attorney for the protectionof the intellectual property rights. The patent attorney is a professional intermediary between the rightholder of the intellectual property subject matter and the state authorities (the Federal ExecutiveAuthority, the judicial instances, etc.). The status of a patent attorney confirms the existence of therelevant exprience and the qualification knowledge. The legislation reflects the obligation of the patentattorney to represent the interests of the customer in a proper manner and in accordance with theprofessional ethics. In the event of damage, the sanctions can be applied to the patent attorney.Describing the role and the mission of the patent attorneys in protecting the legitimate interests of theright holders of the intellectual property and the means of individualization, it can be said with confidencethat their essence is in a professional representation and qualified assistance to the client in ensuring andrestoring the rights owned by him.
Republic of Korea and the United States of America. The published statistics shows a significant increasein the volume of the applications filed in new member-states. This allows supposing that due to theaccession to the Hague System the applicant's activity will increase in Russia as well.The first results of the accession of Russia to the Hague System of the International Registration ofIndustrial DesignsThe Geneva Act of the Hague Agreement has entered in force on the territory of our state relativelyrecently, but there are already the first positive results in the field of patenting industrial designs:• Firstly, it is important to note that the convergence of the legislation of the Russian Federation with theworld practice and with the legislation of the European Union has occurred.• The changes have been made in the legal norms, which are aimed at reducing the requirements for anapplication for registration of an industrial design; the priority position has been allocated to the image ofthe registered subject matter, what is logical, taken into account the nature and purpose of industrialdesigns.• To stimulate the growth of the number of international applications filed under the Hague System,various reference materials and the information Internet resources have been created. For the purposes ofclarification, the WIPO website has published the Recommendations for filling in an internationalapplication (URL: www.wipo.int/hague/en/how_to/file). On the Rospatent website there is aninternational application form, as well as its translation into Russian, to simplify filling in an applicationby the Russian applicants (the form should be filed in English) (URL:www.rupto.ru/ru/activities/inter/coop/wipo / hague_system / forms_hague). There is also a fee table and acalculator for the automatic calculation of fees (www.wipo.int/hague/ru/fees) in order to facilitate thecalculation of fees.• According to the Annual Report of Rospatent, in 2017, the average duration of consideration of anapplication for granting a patent for an industrial design at the stage of a substantive examination was6.05 months. As the examiners of Rospatent state: “Such period for consideration creates a large marginof safety in case of a sharp increase in the receipt of applications for industrial designs in 2018, includingin accordance with the Geneva Act of the Hague Agreement Concerning the International Registration ofIndustrial Designs.” 2Speaking about the results of the accession to the Hague System, we can make a conclusion aboutpositive dynamics. The improvement and harmonization of the norms of the Russian legislation, thesimplification of the procedure for filing international applications for domestic applicants, the possibilityof filing applications to the Russian Federation by foreign applicants through the Hague System – hereare just some obvious advantages. It should be assumed that the above circumstances, as the examiners ofRospatent suppose, will lead to an increase in the number of applicants and an increase in the number ofregistered industrial designs.
1 Yshimi Zuike // Regional brand: What is a regional brand? – URL:https://sites.google.com/site/yshimizuike/home/regionalbrand01/regionalbrand02
The possibility of obtaining a certificate for the use of the designation by the enterprises that areindependent from each other is one of the advantages of the NPOP as a regional brand. So, if on theterritory of the region there are several manufactures of the similar products, each of them has the right toregister the NPOP.Another advantage is that, using the NPOP, the manufacturer indicates to the name of the geographicalobject, within the limits of which the product is manufactured, thus drawing the consumer's attention tothe place of manufacture of the product.Another positive peculiarity is the permissibility of a permanent change in the scope of the right holdersof the NPOP. Due to this circumstance, the manufacturer can expect obtaining a certificate for thedesignation from the date of the release of the production with the appropriate properties, and obtainingall necessary documents. Thus, the NPOP can be constantly used by various enterprises, what contributesto the recognition of the designation and the popularization of the region.The perspective of the development of the NPOP as a regional brandTo forecast the perspectives of the development of the NPOP as a regional brand, it is worth analyzing theinformation on the number of the applications for the registration and the certificates issued according tothe results of their consideration by Rospatent; on the products in respect of which the certificates for theNPOP are being registered; on the state policy for the development of the institution of the regionalbrands.Speaking about the development of the NPOP institution as a regional brand, it is worth paying attentionto the statistics of Rospatent on the dynamics of filing the applications and issuing the certificates for theNPOP. According to the report for 2017, the share of the applications during the period from 2013 to2017 increased from 39 to 56. During the same period, the volume of the certificates issued increasedfrom 9 to 30. 2 The number of the applications and certificates is increasing, so it is possible to assume thatthe manufacturers are beginning to aware the expediency of the registration of the NPOP. It is also worthnoting that, among 56 applications for 2017, 18 applications were filed for the designations, which havenot been previously registered as the NPOP. This reveals the fact that the manufacturers have begun toshow an interest to the individualization of the products not only through the use of fantasy elements andverbal symbols (as in the case of trademarks), but also by establishing a link between the production andthe certain conditions of its manufacture.A majority of the NPOP in respect of which the legal protection has been sought, are aimed at theindividualization of the food products. Starting since 2013, according to the reports of Rospatent, theapplications for the issuance of the certificates for the NPOP with regard to mineral water have held aleading position. 3 Taking into account the fact that the food products are the main articles ofconsumption, there is a high probability of a further use of the NPOP, which have already been registered.The current state policy is aimed at promoting the development of the regions. During the XXIInternational Conference of Rospatent, Deputy Head of Rospatent, Lyubov Kiriy, has called the name ofthe place of origin of the product as “... the most important means of individualization, which underliesthe formation of a successful regional brand, since it allows establishing a link between the products andthe territory on which they are manufactured.” 4 The regional brands, including the NPOP, in particular,are a kind of tools to improve the demographic and financial status of the subjects of the RussianFederation. In this connection, the arrangements are being carried out to draw the public attention to theNPOP institution. In 2018, the Rospatent’s representatives held a thematic meeting dedicated to the2 https://rupto.ru/content/uploadfiles/docs/otchet_2017_ru.pdf3 http://old.rupto.ru/about/reports/2013_14 https://rupto.ru/ru/news/16-10-2017-itogi-xxi-mezhdunarodnoy-konferencii-rospatenta-na-pervoy-sekcii-obsudili-razvitie-regionalnyh-ekonomik-s-ispolzovaniem-sredstv-individualizacii
topical issues of the legal protection of the NPOP, in which the representatives from 27 regionsparticipated. 5 The comprehensive arrangements on informing the manufactures with respect to theadvantages of the registration of the NPOP are being implemented, as well the work of the state bodieslocated on the territory of the regions, which is aimed at the increase of a number of the applications filedfor the registration of the NPOP is being stimulated.All the above said circumstances reveal the fact that the interest of the manufacturers to such means ofindividualization as the name of the place of origin of products increases every year, and the developmentof the NPOP as a regional brand is one of the significant tasks in the strategic policy of Russia.
It should be noted that simultaneously with the beginning of the collection of the payments the attempts tostrike down the operation of the acts, which provide such a possibility, have also appeared. The lastinitiative found its expression in the draft law submitted for consideration by the State Duma Council onMarch 26, 2018. The Member of the State Duma Committee upon the State Construction and theLegislation Sergei Ivanov came up with a proposal to strike down the compensatory payments for the freereproduction for the private purposes, arguing that the users paid the remuneration to the right holders ofthe audiovisual works, when they acquired them, and there was no need to pay again. Thus, there is apossibility of striking down the payments of the remuneration for the free reproduction for the privatepurposes. 3
1 See the details: Kovtun E.V., Kovalenko E.V. The system for collecting and paying the remuneration to right holders for thefree reproduction of phonograms and audiovisual works for the private purposes: problems and prospects
2 The RUSH Report for 2016
3 “Tax on Blanks” can be struck down // the Parliamentary Newspaper of 26.03.2018
be filled in separately, what certainly creates unnecessary difficulties in the work and has an indirectnegative impact on the quality of the services.The necessity for obtaining an enhanced electronic digital signature (EDS) doesn’t seem to besomewhat a frightening thing against the background of the above said and, for example, the offset by theprogramme of the paid, but not confirmed state fee is absolutely comical.Summing up, it should be noted that it is rather difficult to classify the above said advantages anddisadvantages in terms of their relevance and a degree of the advantageousness or inconvenience withrespect to the registering body, customers or patent bureaus exclusively. Since the registration of atrademark is a multi-component process with a complex structure of the participants and a need for theirclear interaction, both advantages and disadvantages are common and interrelated.In general, currently it is possible to see a tendency to the improvement of the quality of the electronicinteraction with Rospatent, which, we are sure, will only gather speed.
Any cartoon character is a subject-matter of copyright, like any other work of art. Each character has its own author and right holder, and therefore it can be used only, if there is permission. And this permission should be issued not by the person who has invented the character, but by the person who is the rights holder to it.
In order to obtain the appropriate permission, it is necessary to apply to the company-right holder or its regional office. The document confirming your rights to use the image will be a license or sublicense agreement, in which it will be clearly specified where, how, in what volumes and in what manner the right holder allows you to use the image of a particular cartoon character. Entering the contract is the only legal way to use the famous characters in one’s work.
Misunderstandings often arise in the event that the company- right holder registers the image of the cartoon character as its trademark. In this case, the character is represented in a certain pose and certain clothing. In addition, the trademark shall be registered only for a certain class of the ICGS. Many people believe that by changing the pose or clothing of the character, and also using the aforesaid designation for the goods of another class, they will no longer infringe the rights of the company- right holder, but this is not true. The fact is that the issues relating to the use of trademarks and the issues regulating the use of the subject-matters of copyright are regulated by two completely different fields of law. And if it is really possible to avoid the infringement of the rights of the company that has registered the trademark by changing something in the image of the character and using the aforesaid designation for the goods of other categories, then the copyright infringement will be in any case. In this case, the issue of the character's recognizability will play a key role. That is, if the image of the character is reprocessed, but the character himself will remain recognizable, this character can not be used without permission. If you can prove that you have drawn your own character and this will be confirmed by an independent artistic examination – there will be no copyright infringement.
Thus, the protection of the character of the work of art by the copyright assumes that only the author or other right holder has the exclusive right to use the character in any way, including for advertising purposes, and any third party who wishes to use the aforesaid character also needs entering a license agreement with the right holder. Otherwise, there will be an infringement of the exclusive right of the right holder of the character.
Judicial practice precedent to this information letter on claim seeking the prohibition of illegal use of a trademark came down to the fact that in many cases the courts appointed an examination proceeding on the similarity of the trademark of the plaintiff with the designation of the respondent, this appointment dragged out trials for a year or more, thus the judicial restraint of illegal use of a trademark became an extremely ineffective method of exclusive rights protection.
Realizing the complexity and duration of the legal proceeding, until 2008 the rights holders together with the filing of a complaint, also applied regularly to the police to create more problems for the offender.
With the approval of the Information letter, the number of such applications has decreased; the number of proceeding has increased.
Six years have passed since the approval of the Information letter and a certain judicial practice has been formed, in this article the result of this practice will be discussed.Analysing court adjudication on claim seeking the prohibition of illegal use of a trademark and comparing such decisions with court adjudications on contestation of the decisions of Rospatent that considered objections to granting legal protection to a similar trademark, the following conclusion can be made:
- on claim seeking the prohibition of illegal use of a trademark courts do not recognize as confusingly similar to trademarks the designations that Rospatent would not have registered as a trademark due to the presence of prior similar trademarks.
When approving information letter No. 122 "Review of the court practice of consideration by arbitrazh court of cases, relating to the application of the legislation on intellectual property", the Supreme Arbitration Court of RF stated in clause 13 that "Examination is appointed only for the resolution of the issues arising during the investigation when special knowledge is required. The question of confusing similarity of the two verbal designations used on the goods of the plaintiff and the respondent can be resolved by court from the point of view of an ordinary consumer and does not require special knowledge".
Does this position mean that when comparing trademarks, it is not necessary to be guided by any normative acts establishing the criteria for similarity of compared designations, for example, the Rules for the preparation, application and examination of an application for the registration of a trademark and a service mark (approved by Rospatent Order No. 32 dd. 05.03.2003)?2 - No, it doesn't.
In the same clause 13 of information letter the Supreme Arbitration Court of RF states that according to the sixth sub-paragraph of clause 14.4.2 of the Rules for the preparation, application and examination of an application for the registration of a trademark and a service mark (approved by Rospatent Order No. 32 dd. 05.03.2003) (hereinafter referred to as the Rules), a designation shall be interpreted as confusingly similar to another designation , if it becomes associated with it in general despite their individual differences.
Thus, after analysing position of the Supreme Arbitration Court of RF stated in clause 13 of information letter No. 122, it's apparent that the Supreme Arbitration Court of RF pointed at the fact that establishment of the similarity of a trademark with a disputable designation does not require special knowledge; i.e. examination procedure; at the same time, when establishing the similarity, it is necessary to apply the Rules.
These Rules are applied by Rospatent in the process of registration of trademarks and of consideration of objections against granting protection to a trademark.
These Rules should be applied by courts in the process of comparing a trademark with the designation used by the respondent.
However, the analysis of court adjudications shows that the courts, guided by clause 13 of information letter of the Supreme Arbitration Court of RF No. 122, come to a conclusion about the similarity/dissimilarity of the compared designations "from the point of view of an ordinary consumer", i.e. they express in their court adjudication their own subjective point of view as if the point of view of the consumer. Practically in all analyzed judicial acts, reference is made to the comparison of designations in accordance with the three criteria of similarity established by the Rules; however, in all court adjudications and decisions, the above analysis of the similarity of the compared designations is not fully completed, there are no comparisons for one or two criteria of similarity: phonetic, semantic or graphic.
In subclauses (a) - (c) of clause 22.214.171.124 of the Rules, the signs of similarity of the compared designations are indicated: sound, graphic and semantic.
In subclause (d) of clause 126.96.36.199 of the Rules it is stated that: The characteristics listed in subclauses (a) - (c) of this subclause may be taken into account, either individually or in various combinations.
This means that the similarity of the compared designations can be on any of the signs of similarity. The absence of a comparison on any of the marks in a judicial act indicates an incomplete judicial act.
Very often for the past 2-3 years court adjudications and decisions where there is no comparison of designations for any of the similarity criteria, or for two of similarity criteria are published.
I would like to explain this opinion by example of decree of Ninth Arbitration Appeal Court on case А40-187101/20133 concerning the suit of Aleksandrovy Pogreba LLC to EL-GRAND LLC, ELITTORG LLC, LeoLit LLC, FudProm LLC and Top-Servis LLC.
In this case the plaintiff addressed the respondents with a claim seeking the prohibition of illegal use of a trademark Challenge No. 3806114 and recovery of compensation.
Trademark of the Russian Federation №380611 Cigar GURKHA Royal Challenge 5
Moscow City Court of Arbitration decision dated Moscow City Court of Arbitration, which was upheld by decree of Ninth Arbitration Appeal Court dated 25.06.2014 and Intellectual Property Court decision dated 26.09.2014 dismissed the claim.
Below the text of the decree of Ninth Arbitration Appeal Court is provided, also comments are given, the text of the judicial act is italicized:
Based on these provisions of the Rules, resolving the issue of confusing similarity of the verbal designation GURKHA or GURKHA Royal Challenge with the trademark CHALLENGE according to Certificate No. 380611 the Court of Appeal comes to the conclusion that there is no confusing similarity of the indicated designations and the trademark of the plaintiff according to all the criteria.
Such conclusion on "absence or presence of similarity in all criteria" is given in almost all decrees establishing the similarity or dissimilarity of the comparative designations. There is no analysis by all similarity criteria.
As can be seen from the case materials the design of cigars GURKHA is a combined designation, the combined designation of cigars GURKHA includes verbal elements "GURKHA" and "royal challenge". The Court of Appeal believes, that compared designations GURKHA or GURKHA Royal Challenge do not match in all elements and that is why they shall not be interpreted as identical.
An analysis of the similarity of the compared designations by the three criteria established by the Rules is not given in the decree.
Herewith the verbal element GURKHA Occupies a dominant position with respect to the verbal element of the "royal challenge", since it is located in the centre and is made with a larger font.
There may be several trademarks / designations on a product. Pursuant to clause 188.8.131.52 of the Rules "Verbal designations are compared with combined designations whose compositions include verbal elements".
The Rules do not provide for similarity absence due to the dominance of one of the elements, which should not even be taken into account when comparing the verbal designations "Royal Challenge" and "Challenge". The court should compare and analyse the similarity of designations "Royal Challenge" and "Challenge". Why should it? Because this would be done by Rospatent in case the combined designation "GURKHA Royal Challenge" would be applied for registration as a trademark. Because courts verify the correctness of Rospatent's decisions, when challenging Rospatent's decisions in which such arguments are given.
This approach correctness is reflcted in the decree of the Supreme Arbitration Court of RF on case А40-2569/20116 (Lina LLC to MacDonald’s LLC) "Meanwhile, the courts unreasonably assessed the font size of a designation, a place of its location on a package, the presence on a package of designations and trademarks of other right holders, since the above mentioned has no legal significance in establishing the opposable designations' identity and does not affect the conclusion on law infringement availability in the respondent's actions through using someone else's trademark, but rather is subject to investigation in case of the designations similarity to determine whether they can be confused".
So, namely the verbal element of GURKHA performs the primary function of goods individualization (cigars) of a legal entity.What does it have to do with similarity of designations Royal Challenge and Challenge?
Verbal element royal challenge is a descriptive characteristic of the goods both as to a position in a combined designation and as to semantic meaning, consequently by virtue of subclause 3 of clause 1 of article 1483 of the Civil Code of the Russian Federation it does not possess of a distinctive ability.
Is a court entitled to make conclusions on a distinctive ability absence of a trademark in a suit on prohibition to use such a trademark? The same decree of the Supreme Arbitration Court of RF with regard to case А40-2569/2011 (Lina LLC to MacDonald’s LLC) states:
"The courts have unlawfully rejected a suit on the grounds of a distinctive ability absence of a trademark "S PYLU S ZHARU", as well as due to the fact that a designation is composed of the elements characterizing quality and properties of the goods, since a legal protection granting to a trademark is not disputed in accordance with the procedure established by the law. Clause 62 of decree dd. 26.03.2009 No. 5/297 also states that a person in whose name a trademark is registered may not be rejected his/her protection (even if proofs of unlawfulness of a trademark registration are provided to court) prior to declare invalid a legal protection granting to such a trademark in accordance with the procedure established by article 1512 of the Code or legal protections cancellation of a trademark in accordance with the procedure established by article 1514 of the Code".
So, a court can't make a conclusion on a distinctive ability absence of a trademark at a suit on unlawful use prohibition of such a trademark.
The Court of Appeal also believes it is necessary to specify that thee is a threat of confusion if one trademark is perceived as the other one or if a consumer understands that it is referred not to the same trademark, but believes that both trademarks belong to the same enterprise. Such a threat depends on several circumstances: firstly, on a distinctive ability of a trademark with an earlier priority; secondly, on similarity of opposable trademarks; thirdly, on homogeneity evaluation of goods and services designated by a trademark.
Such a position complies with the legal position of the Supreme Arbitration Court of the Russian Federation outlined in Decree of the Presidium dd. 18.07.2006 No. 2979/06 with regard to case No. А40-63533/04-67-642, order dd. 30.05.2011 No. ВАС-5661/11 with regard to case No. А40-39536/10-12-240.
However, a plaintiff has not provided an evidence that as a result of use by the respondents of disputable designation Challenge, the consumers believed or could have believed that a disputable designation personalized the plaintiff's activities as a right holder of a trademark CHALLENGE under evidence No. 380611.
Materials in the case don't contain a proof providing evidence that the products – cigarillos of CHALLENGE trademark mentioned in a statement of claim, are in actual turnover.
Prrof absence of trademark CHALLENGE use by the plaintiff under evidence No. 380611 is estimated by the Court of Appeal as a circumstance preconditioning an actual impossibility of the plaintiff's trademark confusion CHALLENGE" under evidence No. 380611 in the consumer's eyes with the disputable designation "Challenge used by the respondents".
In recent time the courts reject a suit very often due to lack of evidence of a trademark confusion with a designation used by a respondent. But, on basis of what rule of law do courts reject a suit due to lack of evidence of use? Article 1515 of the Civil Code of RF sets forth two criteria for establishing the exclusive right breach for a registered trademark and prohibition on a similar designation use:
- confusing similarity;
- homogeneity of goods and/or services.
When registering trademarks Rospatent rejects a a requested designation registration even having established probability of confusion on basis of similarity of the compared designations. Courts, when considering suits on unlawful use prohibition and claims of proving a fact of confusion, seem to proceed from the requirements of article 65 of the Arbitration Procedure Code of the Russian Federation on a party's duty to prove those circumstances that are referred to by a party, fall beyond the scope of the requirements of article 1515 of the Civil Code of RF. Proving namely of the actual confusion is not required by article 1515 of the Civil Code of RF.
Moreover, the exclusive right for a trademark arises out of a trademark state registration, a right holder doesn't have a duty to use its trademark for at least 3 years as from a date of its registration. If a lawsuit is filed by a right holder who has not started using its trademark and who can't provide an evidence of use and, accordingly, of the actual confusion, a court will reject a suit due to lack of evidence of an actual confusion? Or whether a right holder files a lawsuit on prohibition of a trademark use after registration of which 3 years have passed, will court reject a suit due to evidence absence of the actual confusion, having actually taken a decision on premature termination of a trademark due to non-use?
On the basis of the foregoing, the courts when considering suits on unlawful use of a designation that is similar to trademark shall carry out an analysis of comparison of a trademark and designation according to the criteria of the Rules. Such disputes are considered at all Arbitration Courts by specialized constitutions of the court and judges possess of special knowledge to carry out such analysis.
If a court considering such case does not possess of knowledge for independent carrying out of analysis of the comparable designations according to the Rules, or a statement of claim and/or recalls don't contain a similar analysis carried out by the parties, that can be assessed by a court and taken as basis for a judicial act, - a court shall commission a legal expertise to evaluate similarity because it itself does not have any respective special knowledge. The current judicial practice leads to the fact that courts reject a suit on unlawful use prohibition of a trademark, recognizing the designations that could never have been registered as a trademark, as not similar.
Having looked through the court adjudications for the last half year one can provide the following examples -
- Case А40-55565/20138, a trademark "USPEKH", No. 386090 and designation "Vash uspekh - salon krasoty";
- Case А41-65696/20139, a trademark "TREL-DETAL", No. 458996 and designation "TREL";
- Case А41-57871/201310, a trademark "GURMAN", No. 213841 and designation "Rublevskiy gurman";
- Case А40-135039/201311, a trademark "SAMSON", No. 260887 and designation SAMSONAS;
- Case А40-77233/201312, a trademark "Avtoexpert", No. No. 326231, 341719 and designations experttyres.ru and "EXPERT SHIN".
For all that one should pay a special attention to the fact that in a series of cases the right holders, when dealing with such statements of motivation of court adjudications, dispute court adjudications neither to the Court of Appeal nor to Court of Cassation. Despite the fact that a complaint filing against an adjudication – is a party's right, the parties - right holders don't see an opportunity to change the existing practice, don't want to bear attorney's fees, even despite the fact that they can collect legal costs in case of winning a case. Such statement of motivation of court adjudications compromises respect of right holders to the judicial system.
Adoption of such decisions results in the fact that the persons using similar designations don't register the designations used by them as trademarks but just use them. Having received a suit on unlawful use prohibition, the breakers convince the court in proofs absence of the confusion fact and, having gained a suit at law continue using a similar designation without a trademark registration.
In this connection it is worth discussing separately one more consequence of application by courts of clause 13 of information letter No. 122 of the Presidium of the Supreme Arbitration Court of RF, according to which an issue on similarity to a degree of the designations confusion is an issue of fact and as a general rule can be permitted by court without an examination commissioning.
Analysis of the current judicial practice at the suits on unlawful use prohibition of a trademark shows that courts when prohibiting unlawful use of a trademark or when rejecting such a suit, segregate a trademark similarity with a disputable designation from unfair practices and/or unfair competition on part of a respondent.
However, premised on the system analysis of the provisions of the Civil Code of RF as to the trademarks as well as the rich judicial practice, it is clear that the goal of a designation use being similar to a confusion degree is use of somebody else's reputation, a reputation that is created by a right holder, obtaining of unjustified advantages for account of a right holder.
Use of somebody else's reputation for promotion of one's goods is an element of unfair competition.
Courts probably believing that unfair competition – is a separate breach of article 14 of the Law of RF "Concerning the Protection of Competition" do not examine the confusing similarity from the point of view of unfair practices.
Such approach results in the fact that a respondent (breaker) can not infringe the rights for a trademark but will breach the anti-monopoly legislation, when the Federal Anti-Monopoly Service of RF recognizes the respondent's acts to be unfair competition.
When summarizing, the following can be said
It is more than likely that somebody having read this article, will think that the proposed approach on necessity of availability, in judicial acts at the suits on unlawful use prohibition, of trademarks of an analysis of the comparable designations according to the criteria of the Rules, is needless and not well-reasoned.
In this case, the goal of this article is a necessity of a similar approach use both at the suits on unlawful use prohibition of a trademark and when registering designations as trademarks.
If confusing similarity is an issue of fact that should be evaluated by court from the perspective of an ordinary consumer and does not need a full analysis according to the Rules, - then in registering of designations that are requested for registration, the same approach should be applied: Rospatent's experts shall compare a designation requested for registration from the point of view of an ordinary consumer. And the court, when considering applications on Rospatent's decisions contestation regarding the trademarks' similarity, shall not claim a full analysis of the similarity criteria regulated by the Rules. The article is published in internet journal of the Court for the intellectual rights.
- See information letter No. 122 approved by the Presidium of the of the Supreme Arbitration Court of the Russian Federation dd. 13 December 2007 "Survey of practice of cases consideration by arbitration courts relating to the legislation use on the intellectual property" // LEGAL REFERENCE SYSTEM GARANT.
- See order of Rospatent dd. 5 March 2003 No. 32 "On the rules of preparation, filing and consideration of an application for a trademark and service mark registration" // LEGAL REFERENCE SYSTEM GARANT.
- See Decree 9 of the Arbitration Court of Appeal with regard to case А40-187101/2013 // LEGAL REFERENCE SYSTEM GARANT.
- See: Register of Rospatent's trademarks, a trademark Challenge No. 380611 [Electronic resource] // The internet site of FSBI - Federal Institute of Industrial Property // http://www1.fips.ru (an accessed date – 19 December 2014).
- Resource of a cigar picture of GURKHA Royal Challenge – the Internet site "http://www.cigarinspector.com".
- See Decree of the FEDERAL ANTI-MONOPOLY SERVICE OF RF with regard to case А40-2569/2011 (Lina LLC to MacDonald’s LLC) // LEGAL REFERENCE SYSTEM GARANT.
- See joint decree of the plenary assemblies of the Supreme Court of RF and the SUPREME ARBITRATION COURT OF RF dd. 26 March 2009 No. 5/29 // LEGAL REFERENCE SYSTEM GARANT.
- Case А40-55565/2013 // LEGAL REFERENCE SYSTEM GARANT.
- Case А41-65696/2013 // LEGAL REFERENCE SYSTEM GARANT.
- Case А41-57871/2013 // LEGAL REFERENCE SYSTEM GARANT.
- Case А40-135039/2013 // LEGAL REFERENCE SYSTEM GARANT.
- Case А40-77233/2013 // LEGAL REFERENCE SYSTEM GARANT.
But the 4th part of the Civil Code of RF contains a specification of a necessity of an interest presence in a person who files not only an application on early loss of effect of a trademark due to the fact it is not used, but also those persons who address to the Federal Service for Intellectual Property (Rospatent) with objections on all the criteria of the trademarks protectability stipulated by article 1483 of the Civil Code of RF.
A thought to write this article appeared after attending a judicial sitting devoted to an application considering on the Rospatent's resolution contestation (Case SIP-161/2013), under an objection of METRO Cash and Carry LLC that had cancelled the effect of trademark "BERGLAND" No. 321953 (an applicant specified that a trademark had indicated a place of the goods production). During the sitting a representative of METRO Cash and Carry specified told: "An interest of my appointer appeared after a right holder had filed a statement of claim to my appointer on the unlawful use termination of a trademark". Rospatent recognized such interest, and the other party of the proceedings (a right holder) contested the interest neither at Rospatent nor at court.
But is there an interest in a trademark contestation in a person who unlawfully uses it? And whether such person can have an interest in a trademark contestation arising only out of unlawful use of a similar designation?
Here one shall distinguish at once between an interest in early loss of a trademark effect in connection with its being unused and an interest in a trademark invalidation on other grounds, for example contestation of a mark as not complying with the criteria of article 1483 of the Civil Code of RF.
The early termination principle proceeds from the basis that the government obliges a right holder to use a registered right and protects only that exclusive right against unlawful use or against similar marks registration, that is used. And it is quite evident that a person who is filed a suit against, on prohibition of any trademark/designation use, raises legally a question with a right holder: whether he/she uses his/her trademark? If he/she does then it can be protected and court shall prohibit other persons to use it unlawfully. But to what extent is it right to distribute automatically such interest when contesting rights on the grounds of article 1483 of the Civil Code of RF?
After participation, for the last 5 years, in the hundreds of cases it has become quite evident that when contesting the rights for the trademarks on many grounds of a trademark protectability that are stated in article 1483 of the Civil Code of RF, such principle of an interest is not applicable and not acceptable. Moreover, when filing objections on trademarks invalidation an interest is different on each protectability criterion, for which reason each of the interest criteria needs a separate discussion. Clause 1 of article 1483 of the Civil Code of RF
1. State registration as trademarks of designations that don't have a distinctive ability or are composed only of elements, is not allowed:
1) that have entered into common use for designation of a certain kind of goods;
2) that are generally accepted symbols and terms;
3) that characterize the goods including those indicating their kind, quality, quantity, property, appropriation, value, as well as time, place and way of their production or sales;
4) that represent a form of goods that is determined exceptionally or mainly by a property or by appropriation of goods.
These elements can be included into a trademark as non-protectable elements if they don't take a dominant position in it.
The provisions of this clause are not applied in relation to the designations that have acquired a distinctive ability as a result of their use.
This clause needs to be divided into two parts:
●absolute grounds not incidental to stating of a place of the goods production or location of a manufacturer, and
● absolute grounds incidental to stating of a place of the goods production or location of a manufacturer. When contesting a trademark and having filed an objection to Rospatent, an applicant shall prove on almost all the grounds stated in this clause that a designation registered as a trademark did not have a distinctive ability as at a priority date and maybe could not obtain an additional distinctive ability. And to confirm an interest in contestation of rights, a person who has filed an objection shall provide evidence of the actual infringement of rights for a registered mark, having substantiated a necessity of its use in the economic turnover. Of course one can provide an evidence of an intention (preparation) of goods introduction havin a disputable designation, but solely an intention to use a disputable designation will be obviously not enough to prove a distinctive ability absence, that's why one will have to substantiate a distinctive ability absence by proofs of a disputable notation use by other persons before a disputable mark priority, including by an applicant according to a principle "others use and I want to use".
In the German legislation concerning the trademarks, the criteria of distinctive ability absence stated in clause 1 article 1483 of the Civil Code of RF are generalized by the following provision: a designation requested for registration can't be registered as a trademark since an unlimited set of persons needs to use such designation in the similar economic activities. Maybe some day we will come to such understanding of the absolute grounds for registration rejection and even article 1483 of the Civil Code of RF will be probably supplemented by such provision.
For the time being, without having such a ground, Rospatent for example registers a trademark "S pylu, s zharu" and the court has to protect it, to prohibit the use (Case А40-2569/2011). And when contesting this mark Rospatent establishes that the trademark "S pylu, s zharu" is not descriptive and is not indicative of the direct properties of the goods, without second-guessing , that's why the office considered that this mark registration was legally valid (Decision of Rospatent dd. 24.10.2012 No. 2009714885/50). But is there indeed anybody at Rospatent who believes that "S pylu, s zharu" – is not just cooked (maybe warmed up) bakery product? It turned out there are such people.
But let us return to discussion of clause 1 article 1483 of the Civil Code of RF. The text of the document contains the criteria that stand absolutely alone from the rest ones. These are the "designations that are indicative of… a place… of their production or sales".
Is confirmation of infringing merchandise sale sufficient for a mark contestation on this criterion? I believe that solely sale of infringing merchandise with a similar designation is insufficient to recognize a breaker of the rights as a person who is interested in loss of effect of such trademark.
If we assume that a mark protection lapses at an application of a person "concerned", then any person will be able to use a disputable designation. Does such approach takw into account justice? I believe it does not. Particularly for this reason (or it is one of the reasons) the so called "Soviet" brands are not cancelled. The principle is simple: it is better that a "Soviet" brand should be owned by at least anybody than nobody. Furthermore after such trademark cancellation an applicant of an objection or any other persons will in bad faith make use of that publicity and reputation that was created by a disputable mark over a period of its existence.
Having cancelled a trademark allegedly indicative of a place of goods manufacture, upon a person's application who sells infringing merchandise, Rospatent or court affords an opportunity to use a disputable mark to any person, in doing so it actually encourages infringing merchandise. That's why when cancelling a mark that is indicative of a place of production or location of a producer, Rospatent or court shall establish an "interest" of a person filing an objection premised on a real necessity to use a disputable designation in the economic turnover.
Our company has filed several times the objections against the trademarks' effect on the grounds that a disputable trademark:
●denotes a place of goods manufacture if a right holder is located in a region (city) which name coincides with a trademark;
●a consumer is misled by such designation because he/she believes that the goods are manufactured in the same region but the goods are manufactured in another place.
We substantiated these several times an interest in a trademark contestation by location of our appointer (applicant) in a region that reproduced a trademark.
For example, by order of company Redmond Home Appliances LLC located in city of Redmond, USA, we filed objections against the trademarks effect Redmond No. 349142, 395632. We substantiated an interest with a necessity of an applicant to denote its location – city of Redmond. Rospatent recognized an interest of an applicant but dismissed the objection (Decisions of Rospatent dd. 15.07.2010 No. 2006730177/50, 2007740523/50). Our appointer did not start disputing the decisions of Rospatent and did not enter the Russian market with the goods sale manufactured in city of Redmond.
But what might have been if company Redmond Home Appliances LLC located in city of Redmond, USA, would start selling the goods for which a trademark is registered, denoting on the goods a designation Redmond as its address? Would the Russian court prohibit this company to use the designation Redmond as an address?
I believe that court was not to have prohibited such use of a similar designation in case when a manufacturer stated it as its address, for which reason two goods that use the similar designations may appear on the market: the first, on which a registered trademark will be used, the second – on which some company will write the same designation as its address only.
If we imagine such situation, a question arises whether one needs to preserve such a marks if an objection is filed by a person who has a real necessity to use an identical mark? Are arguments in this case so much important that afford an opportunity to preserve the effect of such registrations: the fact that a self-named city is small, there are several cities in different countries with such name, the Russian consumer is unaware of these cities, such word is a common name in some country etc.? It is evident that a totality of these arguments on a real necessity to use a disputable mark by another person shall be confirmed by his/her interest.
One of the main criteria of interest can and shall be an opportunity of subsequent registration of a disputable designation as a trademark as a protected element or at least unprotected.
Clause 2 of article 1483 of the Civil Code of RF.
2. According to the international treaty of the Russian Federation, no state registration of the designations as trademarks is allowed that are composed only of the elements representing:
1) state emblems, flags and other symbol of states and signs;
2) abbreviated or full names of international and intergovernmental organizations, their emblems, flags, other symbols and signs;
3) official control, seals of guarantee or plate marks, seals, honors and other honorable distinctions;
4) designations confusingly similar to the elements specified in subclauses 1 - 3 of this clause.
Such elements can be included into a trademark as non-protectable elements if there is a consent of a respective competent authority thereto.
Before introduction of the 4th part of the Civil Code of RF, Rospatent registered the trademarks quite frequently which comprised parts of a flag of different countries (Russia, USA, the Great Britain, West Germany and others) and other altered symbols of a state, because formally there was not a prohibition on the similar designations registration.
But afterwards such registered trademark having obtained some publicity became the goal for its imitation, copying and unlawful use. Frequently as soon as a right holder starts struggling with infringing merchandise, an objection is filed against such trademark in which there is a specification of unlawful use of a state flag, emblem etc. Sometimes a permit of a competent authority for a flag/emblem registration as a trademark in the name of an applicant can be attached to such objection. Inter alia, an applicant substantiates an interest by such consent.
But in respect of this criterion as was specified earlier, a mark cancellation will result in origination of imitation, copy, false representation on the market. Will the rights of a person who owns the rights, restore? But such a person represents governments, governmental authorities and institutions. Such persons did not file objections and did not consider their rights as infringed. Even having given a consent for a similar designation registration of any organization, the state did not issue orders to protect an infringed right, filed no objections on its own. And if a person, rights holder for the different state symbols, i.e. a state - allows using its symbols of state, what for does is it need to cancel marks containing a partial reproduction of such symbols, at a person's application who has nothing to do with the state?
Rights cancellation brings infringing merchandise to the market, and namely those persons want to extinguish the rights who already either manufacture infringing merchandise or are going to manufacture it in the near future.
About 10 years ago a struggle between the former partners started for the rights for a series of trademarks Golden Eagle. In the course of mutual statements, objections and suits, an opportunity of the combined marks cancellation of Golden Eagle was considered. For example, a trademark Golden Eagle No. 216818 includes a picture of a part of the USA flag and body that is an official symbol of the USA. We have managed to convince our customer not to file an objection because we won't be able to substantiate an interest in a mark cancellation on the grounds mentioned.
Clause 3 of article 1483 of the Civil Code of RF. No state registration of designations as trademarks is allowed, representing or containing the elements:
1) that are false or capable of misleading a consumer in relation to the goods or its manufacturer;
2) that are detrimental to the public interests, principles of humanity and morals.
This clause for an interest determination is also divided into two parts.
Under subclause 1, everything is simple enough concerning an interest, because this ground is usually added to the grounds of clause 1 of article 1483 according to the principle: a trademark is descriptive for a part of the goods/services, for the rest part it misleads the consumer.
For example, the word "drops" or a picture of drops for a part of the 5th class goods of MKTU (International Classification of Goods and Services), that includes substantially pharmaceutical preparations and other preparations for medical goals that are directly drops (ear drops, ophthalmic drops or other ones) characterizes the goods, and for the rest part it misleads the consumer because the goods are not drops. That's why everything what is told about an interest under clause 1 of article 1483 of the Civil Code of RF, is also naturally applicable to this subclause.
Persons concerned on the ground "passing-off " are the persons who started selling the goods with the disputable mark before a date of a disputable mark priority.
But the situation with use and understanding of an interest criterion under subclause 2 of this article is much worse.
Premised on the word-for-word understanding of this subclause wording, the members of the public whose rights are infringed by a disputable mark can be persons concerned on this ground. For the benefit of the public, the representatives of the public authorities who have such powers, for example, the public prosecution service, can address to the office.
Can a trademark, that in opinion of an objection applicant conflicts with the public interests, principles of humanity and morals, infringe the interests of a legal entity? Can a legal entity be interested in a mark cancellation on this ground? If this person – is a non-commercial or public entity protecting the rights of the natural persons or consumers then it is evident that such organization can be a person concerned. But we have not managed to find a single objection considered by Rospatent on this ground against a trademark operation, that had been filed by a commercial entity.
On the other hand, Rospatent has considered too many objections to the expert's decisions rejecting the requested designations registration on the ground "contradiction to public interests". It turns out that Rospatent itself has become a person concerned? Or it protects the public interests…
The most interesting among the Rospatent's rejections to register designations as a trademark was an application for mark registration "Volodya i Medvedi".
From a court adjudication with regard to case No. А40-65503/2011:
Designations detrimental to the public interests, principles of humanity and morals, are also called "scandalous marks".
By virtue of the fact that from 2000 to 2008 the president of RF was Vladimir Vladimirovich Putin who is for the time being the current Prime Minister and the chairman of the political party "United Russia", and since 2008 the president of RF is Medvedev Dmitry Anatolievich, there exits a possibility of this designation perception by the Russian consumer as outplaying of the name and surname of the first persons of the government or name of the current Prime Minister and political party "United Russia" (in the associative reference to its symbol – in the shape of a bear).
So, use of a derivative of a name, surname of the persons who personify a country by themselves, and construal of a political party symbol on products of the 32nd, 33rd classes of MKTU (International Classification of Goods and Services) by the the collegium of the Chamber for Patent Disputes was assessed as dismissive attitude to the authorities. Therewith a requested designation causes damage to the image and interests of a government and, as consequence, contradicts to the public interests.
The courts didn't agree with Rospatent and obliged to register a trademark.
It is seen from a statement of motivation of a court adjudication that the persons interested in this mark cancellation could have been natural persons V.V. Putin and D.A. Medvedev or the state governed by them.
For all that I believe that none of the vodka producers for which this trademark was registered won't be interested in this mark cancellation on the ground "contradiction to public interests…".
But Rospatent in its belief that registration of "Volodya i Medvedi" designation contradicts to the public interests, registers for example the word "Yo Moyo" No. 505721 as a trademark.
From Rospatent's decision dd. 13.11.2013. No. 2012702519
So, an analysis of these data suggests that the verbal element "YO-MOYE" is irrelevant to abusive, foul language. Besides that, a requested designation contains a bright pictorial element that reminds of some cartoon character holding the verbal element "YO-MOYE".
It should be noted that this designation produces a positive impression and is associated well with such goods as ice-cream consumed both by children and grown-ups.
To contest such trademark on the criterion "contradiction to public interests" absolutely any person consuming ice-cream can be a person concerned.
But when registering the mark "Yo-moyo", Rospatent rejects a designation registration "Shire Khari" on basis of a contradiction to the public interests.
From Rospatent's decision dd. 21.09.2012. No. 2010729485/50
So, in its contents the word combination "SHIRE KHARI" relates on the whole to the category of the designations that have indecent (abusive) contents insulting the human dignity. In connection therewith the word combination under examination, should it be used as a trademark, can be perceived as abusive or humiliating the human dignity and, consequently, it contradicts to the public interests and principles of morals.
So, any practice of use is absent on this criterion, it will be interesting to keep track of its development.
Clause 4 of article 1483 of the Civil Code of RF. No state registration is allowed of designations as trademarks that are identical or confusingly similar to the official names and pictures of most valuable cultural heritage sites of the Russian Federation nations or the world cultural or natural heritage sites as well as to the pictures of the cultural valuables kept in collections, collected writings and funds, if a registration is sought in the name of the persons who are not their owners, without consent of the owners or persons authorized by the owners for such designations registration as trademarks.
On this subclause the criteria of interest are very similar to the criteria described in clause 2 of article 1483 of the Civil Code of RF. There can be distinguished the bodies issuing permits instead of governmental organizations – public ones. On the whole the criteria are identical.
Let me provide an example from the practice.
Mongolian entrepreneur Bat-Ulzii Tsendkhuu registered trademark Ogedei Khaan No. 379409 comprising the picture of a famous Mongolian khan.
Russian company Profit-S LLC that desired to use a similar designation and to register it in its name, addressed to the National museum of the imperial palace Gugun (China) where the single picture of Ogedei Khaan is kept. A trademark copies completely the picture kept at the museum and being an object of the mondial cultural heritage, what is witnessed by the respective publications.
Profit-S got the museum's consent for registration of Ogedei Khaan's picture as a trademark in the RF territory and filed an objection against opertion of trademark Ogedei Khaan No. 379409. Rospatent dismissed the objection having suggested the Russian company Profit-S LLC as the person not concerned even despite an availability of a consent for registration.
From Rospatent's decision dd. 19.07.2013. No. 2008705135/50
It should be also noted that a person who filed an objection had not provided, according to clause 2 of article 1513 of the Code, any rationales of his/her interest in contestation of legal protection granting to this trademark on a ground stipulated by clause 4 of article 1483 of the Code. So, for example, a person who has filed an objection is not an authorized person of the National museum of the imperial palace Gugun in China. In connection therewith PROFIT-S LLC has not proved that it is that person whose rights can be touched upon by the legal protection granting to a disputable mark under evidence No. 379409 on the grounds of clause 4 of article 1483 of the Code.
Clause 5 of article 1483 of the Civil Code of RF. According to the international treaty of the Russian Federation, no state registration is allowed of designations as trademarks that represent or contain the elements that are protected in one of the governments – participants of this international treaty, as the designations making it possible to identify wines or alcoholic beverages as those originating from its territory (produced within the boundaries of a geographic area of this government) and having a special quality, reputation or other characteristics that are determined mainly by their origin, if a trademark is meant for designation of wines or alcoholic beverages that don't originate from the territory of this geographic area.
Persons interested in the rights termination for a trademark on this criterion can be the persons who produce or sell wines and/or alcoholic beverages in the territory of a geographic area, which name is concordant to a disputable trademark. The criteria of interest on this ground are partially similar to the criteria of interest on clause 1 of article 1483 as to stating of a place of goods manufacture or location of a manufacturer. But unlike clause 1 of article 1483, in this case the known designations, for example Cognac, Champagne and others will have the grounds for contestation.
Clause 6 of article 1483 of the Civil Code of RF. Designations that are identical or confusingly similar to the following, can not be registered as trademarks:
1) trademarks of other persons requested for registration (article 1492) in relation to the homogeneous goods and having an earlier priority unless an application for state registration of a trademark is withdrawn or recognized withdrawn;
2) trademarks of other persons protected in the Russian Federation, including according to the international treaty of the Russian Federation in relation to homogeneous goods and having an earlier priority;
3) trademarks of other persons recognized as generally known trademarks in the Russian Federation in the manner established by this Code, in relation to homogeneous goods.
Registration of a designation as a trademark in relation to homogeneous goods that is confusingly similar to any of the trademarks stated in this clause, is allowed only with consent of a right holder.
The criteria on this clause are probably the simplest ones for assessment. Persons who are interested in the rights termination for a trademark on this criterion are either right holders of the prior trademarks or the persons who filed an application for a trademark registration.
Clause 7 of article 1483 of the Civil Code of RF. Designations that are identical or confusingly similar to a name of place of the goods' origin protected according to this Code can not be registered as trademarks in relation to any goods, except for a case when such designation is included as a non-protectable element into a trademark registered in the name of a person having the exclusive right for such name, if a trademark registration is implemented in relation to the same goods, for which individualization a protected designation of origin is registered.
The criteria of interest on this ground are partially similar to the criteria of interest on subclauses 1 and 5 of article 1483 of the Civil Code of RF as to stating of a place of goods manufacture or place of a manufacturer location.
This article is similar to clause 5 article 1483 of the Civil Code of RF, but unlike foreign geographical denominations, this article states the Russian name of a place of the goods' origin. Persons who are interested in the rights termination for a trademark on this criterion can be the persons who possess of a right to use.
From Rospatent's decision dd. 03.09.2011 No. 2007721696/50 "A person who has filed an objection substantiates this conclusion by a confusing similarity of a disputable trademark ("Dagestan gold" No. 418054) with the name of the goods' place of origin "DAGESTAN" under evidence No. 106, which right to use belongs to a person who has filed an objection".
Clause 8 of article 1483 of the Civil Code of RF. "In relation to homogeneous goods those designations can't be registered as trademarks that are identical or confusingly similar to a commercial name or commercial designation (separate elements of such name or designation) protected in the Russian Federation or to a name of a selection invention registered in the State register of the protected selection inventions, the rights to which in the Russian Federation arose earlier in other persons than on a priority date of a registrable trademark".
Criteria on this clause, the same as in case with clause 6 are the simplest ones for assessment. Persons who are interested in the rights termination for a trademark on this criterion, shall be holders of commercial names, commercial designations, selection inventions.
Clause 9 of article 1483 of the Civil Code of RF. "The following designations that are identical to the following, can't be registered as trademarks:
1) name of a work of science, literature or piece of art, a character or quotation from such a work, piece of art or its fragment that is known in the Russian Federation as at an application filing date for state registration of a trademark (article 1492), without a right holder's consent, if the rights for a respective work arose earlier than on a priority date of a registrable trademark;
2) name (article 19), pseudonym ( clause 1 of article 1265) or a designation derivative of them, portrait or facsimile that is well-known in the Russian Federation as at an application filing date of a person, without consent of this person or his/her successor;
3) industrial sample, conformity mark, the rights to which arose earlier than on a priority date of a registrable trademark".
To discuss and determine the criteria of interest, it is necessary to divide this clause into two parts. With subclause 1 and 3 everything is again simple enough: an applicant shall be a right holder of the rights for a work specified in this clause (a part of work), character, promo-sample. Ownership of the right of the author's proprietary rights is regulated by several articles of the Civil Code of RF. And even if within the framework of an objection consideration there arises a dispute on a right for a disputable designation, it does not reject an applicant's interest who has filed an objection on this criterion, but rather it confirms it.
But an interest assessment on subclause 2 of this norm (as well as use of this norm) has turned out to be rather complex for the Russian practice.
Complexities occur due to availability in this norm of the words "… or its successor" and "certain" contradiction (and/or inconsistency) of this norm with the provisions of article 150, 1112, 1228 of the Civil Code of RF.
In accordance with article 150 of the Civil Code of RF "a citizen's name, authorship, other intangible benefits owned by a citizen since birth or by virtue of the law are inalienable and non-assignable otherwise.
In cases and in the manner that are stipulated by the law, intangible benefits that belonged to the deceased, can be protected by other persons.
In accordance with article 1112 of the Civil Code of RF, the inheritance composition comprises things, other property, including the proprietary rights and duties that belonged to a testator as at a day of inheritance opening.
Rights and duties inextricably connected with a testator's personality, in particular … rights and duties which transfer under procedure of inheritance are not allowed by this Code or by other laws are not included into the inheritance composition.
Personal non-proprietary rights and other intangible benefits don't form a part of inheritance.
In accordance with article 1228 of the Civil Code of RF, the right of authorship, the right for a name and other personal non-proprietary rights of an author are inalienable and non-assignable.
Despite these norms of the legislation, both RF Law "Concerning trademarks" and the 4th part of the Civil Code of RF contained and contain this provision to the effect that disposal by the "personal non-proprietary right" is implemented by such person's successors. Maybe either a law-maker will amend this norm of subclause 2 of clause 9 of article 1483 of the Civil Code of RF or anybody will dispute this provision at the Constitutional Court.
Meanwhile the practice exists in such a way that it is enough to be a relative of a famous person for an interest of a trademark contestation under subclause 2 of clause 9 of article 1483. However "to be a relative" – does not warranty a disputable mark cancellation.
Also, beside a problem of establishment of a successor status under the law that was in force as at a date of inheritance creation, there also exists a problem of a quantity of successors whose consent is needed. If there are, for example, 5 successors, is a consent for a trademark registration required from all five successors or a consent from any one successor is enough? There are not so many disputes on this clause, so each case can be resolved individually.
Clause 10 of article 1483 of the Civil Code of RF. "On the grounds stipulated in this article, no legal protection is granted either to the designations recognized as the trademarks according to the international treaties of the Russian Federation".
This criterion gives a reference to the international treaties, in particular to the Madrid system, addressing the owners of any international rights to the Russian rights, by virtue whereof everything that has been said above on the previous 9 clauses, extends automatically to the RF obligations for the international treaties.
On the whole, an assessment of an applicant's interest in a trademark contestation is rather strongly associated with a result of a trademark contestation. When confirming his/her interest, an applicant simplifies significantly a result adoption needed by him/her in a number of instances.
In connection with the requirements of the laws on a necessity of an applicant's interest, the administration of the law will develop and, maybe will observe the above mentioned provisions, and maybe in some cases it will be changed.
Original article was published in "Journal of the Intellectual Property Rights Court", No. 5, September of 2014, page 42-50
To understand the essence of a problem let us remind of the issue history. Several years ago the applications for marks cancellation due to being unused were considered by the Chamber for Patent Disputes that regarded any persons who paid a state fee for an application consideration, to be persons concerned. Company Zuykov & partners was one of many legal firms that when filing applications for the sake of their appointers' interests, drawn them up from their behalf. For all that we have become the first organization that was rejected the filed applications consideration in a year after coming into force of the 4th part of the Civil Code of RF, because Zuykov & partners is not a person concerned.
In 2009 (a year later after the 4th part of the Civil Code of RF came into force) Rospatent came to a conclusion that to file an application for a mark cancellation due to its being unused, a company-applicant was necessary first and foremost to prove its interest. In accordance with an information letter released by the office, henceforth only those companies were recognized to be the persons concerned who either filed an international application for the similar or identical designations registration, or who were manufacturers of the goods with similar marks. In essence, Rospatent determined that to prove one's interest in an unused designation cancellation, a company was to provide an evidence that it had manufactured infringing merchandise with a similar mark.
Thus, after the case consideration of trademark "Strizament" the decision of the Office was contested and the Supreme Arbitration Court ruled that the criterion of interest would be the fact of the homogeneous goods manufacture by a company and an application filing for a similar trademark registration. Thus, today it can be said with confidence that a court decree of the Supreme Arbitration Court on a concrete case determines insufficiently precisely the notion of interest and courts have started construing it in a different way. Many courts have decided for themselves that in accordance with the ruling of the Supreme Arbitration Court, only the companies that are manufacturers of the goods may file applications for loss of effect of unused trademarks. For all that our country's (and many other countries') realia are such that many firms – owners of the trademarks don't have productive capacities and are not manufacturers in the true sense of this word. So, for example, cases are not rare when a mark owner is one company and it is used by another organization. Relations of these two legal entities are regulated by a contract as a rule. Besides that, many companies order goods in China or in other countries, and courts reject their application consideration on loss of effect of the trademarks due to their being unused, motivating its decision by the fact that a plaintiff is not a manufacturer and therefore is not a person concerned, and in this case the persons concerned are the Chinese manufacturers.
Premised on such approach, to draw up an application that took just 1 sheet earlier, now it is needed to gather a huge number of the documents and proofs, for all that not many companies are ready to provide them.
But why actually the judge's attention was paid to a criterion on interest? The matter is the marks cancellation due to non-use became in due time a certain means of racketeering – "greenmail" and it was necessary to stop this activity. In essence, any company had an opportunity to file an application for contestation registration of unused designations and the burden of proof, according to our law, is imposed on a respondent. It means that an owner of the marks had to deflect attention away from the work and expend energy and time to prove the fact of a designation use owned by it. In due time the applications for cancellation of a group of marks were filed against the operation of trademark Lavazza. An applicant contested the legal protection of several tens trademarks, and a right holder, in his/her turn, having proved the use of five marks, abandoned the struggle for the rest ones, because that work took too much time. For all that, a company that filed an application had had nothing to do with production of tea or coffee, but the problems were created for the Italian brand. Precisely because of such cases they started paying attention to the criterion of interest.
Today the administrative- judicial system, in essence, has stepped over from one extreme aspect to the other one. If earlier anyone could contest a mark registration, then now it can't be done even by those companies that are truly interested in exemption from an unused designation. So, having made the criteria of interest to be more rigorous, the judicial authorities put applicants into an embarrassing situation, when nobody knows who is a person concerned? The same judges take conflicting decisions in respect of absolutely the same circumstances, as a result the judicial system ceases to be focused on the legitimate interests protection of the business and laws observance. The antimonopoly principle, declared by the government, of mandatory use of a trademark as a criterion of its protection ceases to function.
But a legislator who wrote the 4th part of the Civil Code who had wanted to state in the law that only a manufacturer of the goods or services could address with an application on loss of effect of a trademark due to being unused, what for was it needed to specify some person "concerned"? In all appearances, a broader sense was put into this notion, that today is "narrowed" intentionally by courts. The first dismal results of such approach are already notable: the quantity of considerations of applications on the trademarks non-use has decreased (from 2500 to 700 per year). Those people who are truly interested in cancellation of unused marks can't defend their interests because they are not regarded to be persons concerned according to the criteria adopted by the courts. For example, a founder of a company -manufacturer is not a person concerned, courts reject a suit, advising that the very manufacturer rather than a founder shall file a legal action.
The main goal of the criterion of interest change was countermeasure to the trademark piracy. But I'm sure that the very criterion shall be maximally simple – a company shall prove that its goal – is not abuse of its rights and raising difficulties to business conducting of a right holder of a disputable mark, but upholding of its legitimate interests and a wish to use a not used designation in the economic activity.
For me it is evident that a person concerned is a person who will provide n evidence to court that, for example:
- he/she is ready to organize deliveries of homogeneous goods to the Russian market and has filed an application for a similar designation;
- right holder has submitted claims or filed a suit to an applicant on prohibition of an unused mark use;
- right holder of an unused mark has filed an objection on loss of effect of an applicant's trademark etc.
Courts need to soften requirements to an interest, only in this case this criterion will meet the interests of the entrepreneurs and the norms of the Civil Code, that means the antimonopoly instrument for monopoly divestiture for an unused trademark will function. And the most important thing is that the Supreme Arbitration Court of RF or at least the Intellectual Property Rights Court shall adopt the information letter that will determine: who is a person concerned?
Manufacturers of the goods and services permanently struggle for a right to increase their customer base. And often a brand plays a pivotal role in a struggle for the consumer.
As it is known such notion as "brand" is absent in the Russian legislation. It is substituted by a "trademark" or "service mark" - a designation making it possible for the consumers to distinguish between the goods and services of some legal entities or natural persons from homogeneous goods and services of the other legal entities or natural persons. But "a trademark" in our country - is exceptionally legal notice and rather "dry" one. In essence, its role consists in unambiguous identification of the goods. Usually they put a broader sense into the notion "brand", meaning a trademark possessing of its individuality and having already got a certain publicity and loyalty among the consumers. A brand does not only comprise the information on a company and its goods making it possible to differentiate product but also provides a manufacturer with an opportunity to distinguish, personify its goods and services among the similar products of competitors, to put into circulation in a simpler way a new product line under a brand that is already known. This is precisely why a brand can come under attack on part of different "intellectual diversionists" - competitors, so called "trolls" and other persons.
As a rule, each of these groups has its interests: "trolls" want to earn profit, competitors - want to lower the company sales and publicity of its products among the consumers, to push a company out of the market. The third persons represented most often by former business partners or former spouses of business owners, are driven by a personal grievance and a wish to revenge, having caused trouble. To achieve the goals each of these three groups of the intellectual diversionists can register similar trademarks or those that are not yet drawn up by the companies, patents for utility models or design inventions and can file lawsuits on prohibition of the real trademarks and patents use of a right holder, as well as can attempt to contest their protection. To impose an arrest for the goods it is possible to initiate criminal or administrative cases, to address with applications to the anti-monopoly authorities. Thus the schemes of actions of each of the above mentioned groups of intellectual diversionists, differ as a rule.
"Trolls" (or "patent trolls") are called small companies and private persons who by some means or other get the ownership (buy up as a rule) of a plenty of patents and trademarks. The goal consists not in subsequent independent use of these items of intellectual property for production of goods and services, but in their sale to companies concerned at essentially excessive price or in getting a compensation from these companies for a similar designation use. The trolls' attacks are aimed as a rule at small and medium business, although sometimes larger companies become their victims.
Scheme of the actions that are typical of trolls. Trolls wait until a would-be victim starts developing and releasing the products to the market containing the registered elements (an invention covered by a patent, or trademark, service mark). Then threatening with a suit or applying to court immediately, trolls claim losses compensation for unauthorized use of their intellectual property and severance payments. As a rule, they become active not on an initial stage of the products release that contain registered elements, but when this release gathers pace and winding-down of a project is fraught with enormous losses. Trolls try to play exactly on the fact that in the eyes of a manufacturer on this stage a needed sum payment to them may seem to be the best way out than the risk of necessity to withdraw all the goods and change a trademark.
An example from the practice. The best known case that occurred in Russia at the beginning of the 2000-s with mark STARBUCKS. A Russian company cancelled the marks of STARBUCKS registered in the name of an American company due to being unused, and then registered it in its name, registrations No.No. 274659. This trademark restrained the entrance of an American company to the Russian market for about 3 years. These cases (А40-11022/06, А40-70379/06) were the subject matter of the Russian and American negotiations on Russia accession to the WTO. As a result, a mark of the Russian company was cancelled but the American company registered the marks again and opened coffee houses in Russia.
The main goal of the companies-competitors when filing applications to the anti-monopoly authorities and police as well as suits to court – is to bring down a company brand. They try to push a company out of the market, having given it no opportunity to sell at least temporarily the manufacturable goods or services.
Unlike patent trolls that don't know well enough a real market and don't understand what is more important for a manufacturer and exactly what kind of goods are best sold, a competitor possesses of the necessary information and does not always limit by just efforts to deprive a company of a trademark, when applying to a court, police and the Federal Anti-Monopoly Service.
When competitors take up a struggle, they acquire or register a similar or identical designation by means thereof they initiate subsequently proceedings against a company.
The example – is a struggle for a trademark "GZHELKA" that was owned at one time by Moscow plant "Kristall". Primarily a graphical trademark which used the design elements from popular craftwork items, was registered with a company consent – a manufacturer popular craftwork items of GZHELKA LLC. Thus later on this company was bought by the competitors (JSC Liviz) that filed the objections against the trademarks' operation, having withdrawn a consent issued earlier. As a result, all the trademarks which had used the design elements were cancelled on 22 January 2005 by a decision of the commission for patent disputes of the Federal Service for Intellectual Property. In the course of the long-term judicial proceedings only verbal trademarks "ГЖЕЛКА" and "GZHELKA" continued to be in full force and effect.
Whereby as to mark "GZHELKA" No.230001, the mark was restored by a decree of the Moscow District Federal Arbitration Court dd. 12.04.2006 with regard to case No. А40-26356/05-27-93. The decision of the the Chamber for Patent Disputes of Rospatent under application No. 2002727266 is declared invalid, the trademark registration under evidence No. 239001 is fully restored.
And as to mark "ГЖЕЛКА" No. 239000, the mark effect was restored only by decree of the Presidium of the Supreme Arbitration Court of RF dd. 09 October 2007 No. 15006/06, that declared invalid the decision of the Chamber for Patent Disputes dd. 25 January 2005 on invalidation of registration No. 239000 of a trademark "Гжелка", the legal protection of a trademark "Гжелка" under evidence No. 239000 is restored.
As a result of the war, vodka "ГЖЕЛКА" that took the 1st place on the sales volume in the segment of cheap vodka, ceased to be even a top ten of the best-selling sorts of vodka of the cheap segment. Each of the parties spent over 5 mln. dollars for the war.
Currently it is evident that the actions of JSC Liviz for acquisition of Gzhelka LLC and subsequent contestation of the trademarks' effect were not protection of own rights. The company intentionally pushed the competitor out of the market. Nevertheless, a right holder of trademark "ГЖЕЛКА" did not claim to recognize the actions of Liviz as an act of unfair competition.
Competitors initiating patent confects can be driven by absolutely different motives. Most often, such struggle occurs between the former partners, employees, husbands or wives who have withdrawn from the same business. It makes sense that this category or people having withdrawn from a company, start selling things at what they are good best of all and with which they worked during a long time. War, for all that, can take place both for a well-known brand, for example coffee drink Golden Eagle, and for not well-known, for example jeans Lafei Nier.
Much more rare the patent wars' instigators are driven by a personal grievance. But there are such examples: in 2008, the company Russian standard filed a lawsuit to a tower builder Imperia Tower at the complex Moskva-City, trying to prohibit the latter to use a trademark Imperia, which owner was Russian standard for the services in the field of immovable property. The builder registered a trademark Imperia Tower, but on 09.06.2008 Rospatent by the Rospatent's decision No. 2007731256/50 cancelled this mark suggesting its similarity to a confusion degree to trademark No. 120617 "IMPERIA" that had been owned by Russian standard. Later on the Moscow City Arbitration Court with regard to case А40-52071/08-93-186 declared invalid the decision of Rospatent on the legal protection termination of a trademark. The 9th Arbitration Court of Appeal and the Moscow District Federal Arbitration Court supported the decision of the first instance court.
The reason for the war beginning was that the fact that Russian standard failed to agree upon a discount for a penthouse purchase on the 60th floor in Moskva-City.
What actions can be undertaken by trolls or competitors?
As has been already said above, the trolls and competitors are driven by different goals in principle, thus all the actions undertaken by them can be noted down item-by-item:
- Registration or purchase of the similar designations. To file a claim, a troll or competitor needs to be an owner of a designation that is confusingly similar to that one which is used by a company against which their actions are aimed. Otherwise, it will be difficult for them to prove their interest and achieve obtaining a compensation or legal protection termination of a used trademark. One can become an owner of a similar designation either having registered it or – having acquired a trademark registered earlier. Moreover, the second variant is more advantageous for the competitors, especially in those cases when one deals with a trademark purchase that takes a priority on a registration date over a designation used by a company.
- Application filing to Rospatent. Companies address to Rospatent with the applications for designations registration that are similar to competitor's designations, trademarks in relation to the goods that are homogeneous with the company goods in the hope that such applications will be registered or the companies will buy them back from an applicant. At the beginning of this year legal company "Intellectual property — BesProblem" filed applications to Rospatent at the first business day of 2013. In particular, it requests to fix its rights for such brands as Valio, President, "Vesyoliy molochnik", "Domik v derevne", "Savushkin product" and others on the 29th class of the International Classification of Goods and Services (MKTU) in the categories "sweet condensed milk", "sour cream" and "boiled fermented milk". The company explains such filing by the fact that MKTU (International Classification of Goods and Services) of the previous revised editions did not comprise such goods, that's why the company hopes it will be able to register marks and will sell them to everybody who has such a desire.
- Claim dispatch to the company address. A claim will demand from a company to stop unlawful using of a trademark. Notably, even in those cases when a company is sure in its own rightness, prejudicial claims should not be disregarded – they will provide the competitors with an opportunity to tell before the court about evil intention of actions and intended use of their mark. A response to such claims in different cases is always different, but the first thing that one should started doing – is to file an objection against a "pirate" mark, trying to cancel it. Hereinafter it is important to understand whether a retail shop will be ready to continue sales in case of a claim receipt. It is exactly relied on the fact that shops will more than likely discontinue selling the goods in order to decrease would-be losses. A possibility to persuade a shop to continue selling the goods is always individual. Patent trolls generally use this method very extensively because their objective – is prejudicial settlement of a situation, profit gaining with the least costs.
- Application filing to court. Competitors and trolls can ask the court to render a prohibition for a trademark use and to collect a compensation in the amount from RUB 10,000 to RUB 5,000,000. Courts grant interlocutory injunctions on the goods sale suspension in very rare cases, generally the courts' position is such: interlocutory injunctions shall not coincide with the claims under a lawsuit. It is rather difficult to convince the court to grant interlocutory injunctions in form of assignment prohibition of anything, for example domains or trademarks, such measures are taken in 50% of cases.
- Addressing to the Federal Anti-Monopoly Service. As a rule competitors address to the Federal Anti-Monopoly Service because trolls don't manufacture goods and services, which means this issue is not about the competition protection. If the anti-monopoly service's employees see that a breach takes place, they can call for evidence from a breaker, having relieved, in doing so, a plaintiff from a necessity to gather documents proving the infringing merchandise turnover. If the anti-monopoly service recognizes the actions of a guilty person to be an act of unfair competition, a penalty can be recovered from a company in the amount from 1 to 10% from the turnover of the entire goods of one group being sold by a company. But a penalty enters the government budget. But after a decision of the Federal Anti-Monopoly Service, one can file a statement of claim to court and collect a double amount of the infringing merchandise cost in favor of a right holder, namely for this purpose the documents will be needed that have been provided by breaker to the Federal Anti-Monopoly Service.
- Appeal to police. The competitors' exclusive right - is that the law enforcement officers can initiate a criminal case or administrative case, seize the goods marked with a disputable designation or destroy them, having done a considerable financial harm to a manufacturer. The Criminal Code of RF and Administrative Offences Code contain the articles on the criminal liability (article 180 Unlawful use of a trademark, article 147 Unlawful use of a patent) and administrative liability (article 14.10 Unlawful use of a trademark, article 7.12. Infringement of the copyright and associated rights, invention and patent rights). Police, within the framework of clause 4 of article 111 of the Criminal Procedure Code of RF, can apply a measure of procedural compulsion – seizure of the property. Thus, police works as a rule in full force and effect only when it comes to a well-known brand, and if one deals with a small company and a relatively unknown mark, the law enforcement officers don't make due efforts to protect the right holder's interests.
- Claim dispatch to the address of shops. Such claims are dispatched as a rule by competitors. Notably, in this case a company-competitor does not just dispatch claims to shops that sell competing goods, but also addresses to police and court. In this case, shops will more than likely take a decision to take the goods away from the shelves until a situation is resolved. What is it fraught with for a manufacturer? Its' products won't be supplied within a long period of time, in this period a company will incur considerable financial losses.
Depending on the ultimate goals and a concrete case, trolls or competitors can address to one of the mentioned authorities or to several of them simultaneously. A difference between their actions consists in the fact that if the actions and addresses are initiated by a troll, then his/her threats can have no severe impact upon retail networks, and are always aimed at receiving a compensation, meanwhile the competitors' actions always do an economic harm to a company, preventing its work. Any claims entered in the company address should be treated very attentively, indeed even if a company is sure that its rights for a trademark are pure and the competitor's claims will be unsuccessful, a competitor can do harm to a company by means of interlocutory injunctions. So, a manufacturer will legally win a case, but will be removed from the market for a certain time and nevertheless will suffer losses.
Situations that are potentially hazardous for business
Naturally those situations can be regarded as potentially hazardous for a company brand when one of the partners abandons business and starts the similar business on his-/her own, when a certain conflict arises with a competitor. However, more frequently a company becomes a victim of patent wars when it starts expanding new markets. As an example, we can consider a case with company Stadler Form Aktiengesellschaft.
Stadler Form – is a Swiss company that has existed in the market for over 14 years already. Its founder – is designer and entrepreneur Martin Stadler. After the Swiss company entered the Russian market, it turned out to be within the field of view of BORK company. The machines of these two marks are in the frontier price segment and are represented in the same chain stores (MediaMarkt, Tekhnosila, Stockmann etc.). In 2010 company Tekhnomag allied with firm BORK (one of its owners is the security department head of a company-manufacturer of electronics), filed an application to Rospatent for the designation registration "STADLER FORM", that is used by self-named Swiss manufacturer. In March another company - Cypriot offshore company Vacasim Properties Limited – filed an application for a mark registration "STADLER". In two months, in May of 2011, the trademark "STAHLER" was bought for offshore company Vacasim Properties, whereafter Vacasim filed objections to Rospatent against validity of mark "STADLER FORM". Rospatent rejected the registration cancellation of the designation, but a plaintiff filed a lawsuit to court on prohibition to use the "STADLER FORM" mark, as well as filed an application to the Agency for financial crimes enforcement on a criminal case initiation and sent the suits to the retail networks claiming to stop selling machines under the brand "STADLER FORM".
The Swiss company, in its turn, filed an application on early loss of effect of a trademark "STAHLER", but Rospatent rejected it by virtue of the formal grounds. This decision was appealed against at court. In all the processes the company STADLER FORM referred to the right abuse on part of Vacasim Properties, but the courts didn't apply article 10 of the Civil Code of RF, making it clear that STADLER FORM had not addressed with a respective application to the Federal Anti-Monopoly Service. Just after the cassation appeal that confirmed the cancellation of "STADLER FORM" mark, an application was filed on the actions recognition of Vacasim Properties for the rights acquisition for a trademark "STAHLER" to be an of unfair competition and administrative case No. А40-37701/12-5-343 was initiated. Now, only as soon as the commission of the Federal Anti-Monopoly Service will recognize the actions of Vacasim Properties to be an act of unfair competition, the courts will have an opportunity to apply article 10 of the Civil Code of RF and reject protection to company Vacasim as a person that has abused its rights.
On 19 March, the 9th Arbitration Court of Appeal settled the claim of the Swiss company Stadler Form Aktiengesellschaft on the prohibition abolition for the trademark "STADLER FORM" use in the RF territory and revoked the resolution of the Moscow City Arbitration Court and issued decree No. 09АП-1760/2013-ГК.
Through the example of STADLER FORM case it is seen what is necessary to do to withstand the competitors' actions.
The first thing that is to be done – is to address to the Chamber for Patent Disputes with an objection on legality of a trademark registration. For this goal it is also necessary to prove one's interest and raise arguments confirming that a mark registration is unlawful and the consumer, for example, is misled by such registration. These provisions are reflected in article 1486 of the Civil Code of RF.
The next step – is to address to the Moscow City Arbitration Court with an application on early loss of effect of a trademark due to its being unused, thus this rule functions just in relation to the marks registered three and more years ago, because according to article 1486 of the Civil Code of RF the legal protection of a trademark can be terminated early in relation to all the goods or a part of the goods, for which individualization a trademark is registered, as a result of continuous non-use of a trademark within any three years after its state registration.
When assessing the situation on the whole it may turn out to be expedient to try to terminate early the effect of a part of your opponent's marks. Having terminated the effect of a prior mark that was used long ago in another form or for other goods, one can supply a reason, to justify the use of a mark, that you have started using a designation earlier than an opponent's later trademark.
It will become clear through the following example: Geksa - Non-woven materials LLC filed a lawsuit to JSC Plastic on prohibition of trademark "AGROTEKS" use, No. 170696, registered for the goods of the 17th class and No. 399161, registered for the goods of the 24th class. Case No. А68-9125/2010.
The third person, a manufacturer of the material AGROTEKS, company Sibur – Geotextile, the third person with regard to the case, filed an application to Rospatent on early termination of trademark No. 170696 due to its being unused. Decision of Rospatent dd. 07.06.2011 granted the application, the effect of a trademark AGROTEKS was terminated early due to the fact that the goods for which the trademark had been used, referred to the 24th class rather than to the 17th class for which this mark was registered.
As a result, the respondent submitted an evidence to the court that it started using the designation AGROTEKS earlier than the priority of trademark "AGROTEKS" No. 399161, a suit was rejected.
An application on the competitor's actions recognition as an act of unfair competition for the rights acquisition for a similar trademark or its registration, should be filed to the Federal Anti-Monopoly Service. In case with patent trolls this measure is not effective because trolls, as a rule, manufacture nothing and it is difficult for the Federal Anti-Monopoly Service to establish the competitive relations.
Utility model patents
"Patent trolling" is developed in our country much less than in Europe or the USA. When a patent raider files a lawsuit in court as a right holder, it has to prove that it has a registered patent to what is used by its victim. And even in case when a company gets a suit from a raider in connection with a patented technology use, it can avoid an attack through the rights establishment for a design invention. And in a series of cases one can do without it because a patent raider will have to find many rationales for his/her suit.
The Western "trolls" work primarily at the telecommunications market, at which by virtue of its specific nature, tens of the registered patents of different persons can be used for a certain technology or device. Here it is relatively easy to find a breach, if desired. But patenting in Russia in this field was less intense than abroad, and that's why the main patent wars (for example, between Apple and Samsung) pass our country by. Besides that, RF does not have its technological giants such as IBM and Apple (namely these companies become especially often the objects of patents suits), that's why our trolls act primarily in the field of consumer goods, patenting on the whole the known solutions and blackmailing good faith manufacturers or sellers.
The major weapon of the patent trolls – is lack of information or insufficient judicial competence of entrepreneurs. Besides that, today they have an opportunity to get patents for utility models without a substantive examination (that is, actually under a declaration of the very applicant on compliance of a utility model with the conditions of patentability). This is precisely why in the recent years the growth tempos of patents for utility models have by that surpassed considerably the invention patents growth. Most often the patent trolls' victims in Russia become the manufacturers and suppliers of toys, fast moving consumer goods and electronics. Thus the trolls' attacks are easily defeated if a correct approach is used.
This is one of the examples: a suit of the Russian inventors Vitaly Pilkin and Vladimir Miroshnichenko to Sony Electronics. By the way, these two young men are the patent holders for a plenty of inventions in the field of electronics, many of which don't meet such a criterion as industrial applicability. Citizens of the Russian Federation claimed from the court to prohibit the respondent sales of game console Playstation Vita in the territory of Russia, because they hold the invention patent as early as since 2009, that turned out to be identical to the console of Playstation Vita, under comparison. On the eighth of September 2012, the collegium of the Chamber for Patent Disputes made a decision under application No. 2009136784/08 and declared fully invalid invention patent No. 2427879 of the Russian Federation.
Here there is one more example of the judicial proceedings in respect of the patents: in 2000 six inventors were granted a patent for utility model No. 31946 "Radiographic scanning device". Subsequently, in 2008 the patent was reassigned to Enterprise MEDTEKH LLC.
MEDTEKH lodged claims at once to its former partners, companies CJSC Rentgenprom and CJSC AMIKO, to which it had supplied at one time the products under a patent.
In 2008 CJSC Rentgenprom and CJSC AMIKO filed an objection to Rospatent against the mentioned patent issue. Their main argument was the fact that the device had not been new because before a priority date of the utility model under patent No. 31946 CJSC AMIKO had manufactured and sold the radiographic scanning device, to which all essential features specified in a formula of a disputable utility model are inherent. Rospatent delivered the decision to declare invalid utility model patent No. 31946 "Radiographic scanning device".
In a year company MEDTEKH declared this decision invalid in a judicial procedure, but CJSC Rentgenprom and CJSC AMIKO filed an appeal petition. On 30 July 2010 the ninth Arbitration Court of Appeal delivered the decision with regard to case No. А40-30551/09-5-358 and revoked the resolution of the Moscow City Arbitration Court, having retained in force the decision of Rospatent. Company MEDTEKH filed a cassation appeal, but in November 2010 the Moscow District Federal Arbitration Court issued decree No. КА-А40/14028-10 having retained in force the decision of the Court of Appeal.
Currently our country makes the first steps on the way toward protection strengthening of the intellectual property. So, for example, with the introduction in Russia of the utility models examination, trolling will almost die out in essence , and if the patent court starts functioning in Russia – the arbitration court that will be engaged only in intellectual law, then the disputes resolution in this area will become simpler. The patent court will address all cases under the disputes relating to protection of the infringed or disputable intellectual rights, as the court of the first instance and the court of cassation. Cases will be divided into two categories: on establishment of right holders and on the right infringement.
When it comes to pieces of work created as early as before restructuring, it is important to understand that at that time the distribution system was effective in our country and all benefits that were provided to the citizens were given them by the government. Accordingly when people shot films, wrote scenarios and played roles, all the author's rights for their activity result and for the pieces of work created by them belonged to USSR.
If, speaking of composers or painters of that time it can be assumed that they all nevertheless were entitled for the result of their intellectual activity, then speaking of the actors it is worth saying that when acting in films they created so called works for hire, the rights to which belong to the employer by virtue of the law – that is to a studio that shoots a film. This is precisely why today our actors don't get any allocations and actually don't have any legal rights for films in which they acted. But the question as to whether it is lawful and if they actually have no rights, remains open. To provide an unambiguous answer to it, one shall raise and study those contracts that were entered into with the executors in the Soviet times.
The modern legislation presupposes that the author's rights arise automatically as a piece of work is created and are transferred only in that volume in which it is defined in a contract. That is, if a right to broadcast a film on TV was transferred to a studio, this is not to say that it also possesses of a right to distribute a film on DVD discs or screen it at the movies. Certainly here there is a subject-matter of a dispute and an actor can stand up for his/her rights at court claiming to pay out to him/her a percent from streaming or sales of film copies – particularly the Western stars' heirs become rich namely due to these allocations. But for all that it is necessary to understand that it is always difficult and expensive to go into litigation with Mosfilm, Lenfilm or other large companies. In our country the work of the film studios and television companies with actors, film directors and scriptwriters is most often constructed according to a principle: "we work under those conditions which we are offered or don't work at all". And now the same way as in the Soviet times, many Russian film studios unlike foreign companies, record to themselves all the rights for the created pieces of work. Meanwhile, in the Western countries the practice of royalties receipt by the actors (that is allocations from distribution) is lawful and generally accepted.
Naturally, the budgets of the Russian films are much less than the budgets of foreign films as well as the distribution receipts. But when it comes to a principle, then it is real for a Russian actor to stand up for his/her right for a percent receipt, indeed a clause of any contract depriving a person of his/her lawful right, can be declared invalid in a judicial procedure. But our actors just have a fear to take legal steps because judicial proceedings with the producer centers first and foremost mean that a dispute instigator will more than likely just cease to be invited to act in the films. That's why it is difficult for me to imagine that somebody among the actors, for example Dzhigarkhanyan, will be in litigation with a studio. Besides that, currently our country does not have the practice for such cases consideration, which means there are no precedents, they are needed to be constituted. And it means that one will have to deal with several authorities hoping that a court will deliver a decision in favor of an executor with the assumption whether it takes place or not, is not wholly clear.
Partial cession of rights for items of intellectual property.
The problem of the intellectual property divisibility and an opportunity of its partial cession is rather interesting. In the modern business environment a necessity of a right acquisition for duplication of a piece of work arises often, that is a copyrighted item or its reproduction. Many companies are interested in the patents and trademarks acquisition, thus a right holder is not always ready to concede a right to the full extent for an item owned by it. The law presupposes possibility in principle of a partial cession of rights for items of intellectual property, but this opportunity is implemented in a different way in different cases.A trademark
As a rule, all trademarks registered for one group of the goods and that are similar or identical, are owned by one holder. Notably, this requirement is reflected in the law – according to the Civil Code of RF, the rights for similar or identical designations registered for the homogeneous goods, can't belong to different legal entities. That is, a right holder can transfer the rights only for the entire series of the trademarks.
The situation changes if a company has designations registered for different groups of goods. In this case the right can be transferred both for all goods and for the goods of a certain class, what will make it possible for the companies to own the rights for the designations in relation to different goods and services. Among other things, a right holder can concede a mark to his/her partner to be used in marking of a certain group of the goods or for a full class of MKTU (International Classification of Goods and Services).
A right holder can transfer such a right having entered into an assignment contract of a trademark or license contract with a legal successor. The first kind of a contract regulates the exclusive right transfer for a designation fully or partially, the second – a right granting for its uses in highly restricted fames. These kinds of the documents have been already discussed by us with more details in article "How to transfer or sell a trademark in a correct way? Nuances of a license contract and an assignment contract". Everything that has been stated earlier can be supplemented only by the fact that in case when a right holder transfers the rights for a partial use of a designation owned by him/her, a contract shall contain obligatorily the information as to in relation of what goods and services a trademark transfer is made and on what terms and conditions.
As to a partial cession of rights, a patent is the clumsiest item of the intellectual property. Patents can be transferred partially only in case when there are independent clauses in them, in all the rest cases it is almost impossible. Thus, please note that a patent can belong not only to one author – this document can have several authors or right holders, and the law provides for an opportunity of collective ownership of a patent with allotment or without allotment of stakes.
Actually it is impossible to transfer a certain part of a patent to a certain person but a quantity of right holders can be expanded – that is full or partial sale of one's stake in a patent, having made a buyer, in doing so, to be one's joint holder.
A new holder will gain all the rights for a patent use, including a right for the goods manufacture or services rendering and protection of one's interests at court. Such relations are regulated by a contract on joint possession of patent rights. For all that there arises a phenomenon reminding to a certain extent of a "common property" (chapter 16 of the Civil Code of RF), in which the joint holders of patent rights have an opportunity to exercise their rights jointly, under the conditions determined by their agreement, and in case it is not available – by the law.
Author's rights, are no doubt the most interesting object for a partial cession of rights. Article 1270 of the Civil Code of the Russian Federation reflects a huge quantity of the rights that are held by an author of a piece of work and all these rights or any of them can be sold or transferred to some organization or to an individual. What is meant here is an opportunity of reproduction of a piece of work, its distribution through sale, public show, distribution or import of an original and many other things. For all that, relations between an author and acquirer of the rights are regulated by a standard contract that even does not need a state registration. According to the law, the author's rights are transferred only in that volume in which it is stated in a contract. That is, if an author transfers the right of duplication of his/her piece of work on discs, it does not mean that a right acquirer may also distribute a piece of work on cassettes.
Rights for a trademark and patent can be transferred, are owned exceptionally in the territory of the entire Russia whilst the author's rights can be transferred in any territory: in the territory of RF, in the territory of Moscow, region, up to an appropriation of a concrete street or house.
Let us specify that despite this, there exists a good deal of nuances in the issue of a partial cession of rights for items of intellectual property that can raise questions in a unprepared person, which can be answered by a specialist having a big work experience in the field of the author's right. For all that, wrong drawing up of a contract or its incompetent registration can cause much trouble to a right holder and to a legal successor and even result in the fact that the rights transfer will be declared invalid! This is precisely why, should a necessity arise to draw up such documents, the best thing is to consult professionals in the field of work with the items of the intellectual property.
The original article was published in journal "Na stol rukovoditelu" in 2012, issue No. 45 (http://www.nastol.ru/Go/ViewArticle?id=4239)
Counterfeit products can be different: sometimes infringing merchandise doesn't resemble absolutely, on the outside, the goods of a right holder and are made improperly, but there is also such infringing merchandise that is difficult to distinguish from an original at first sight. Nevertheless, all infringing merchandises have common feature – poor quality. Indeed the main objective of the underworld manufactures - is to derive the maximum benefit saving on materials and technologies. And of course there is no question of infringing merchandise to comply with any GOSTs or demands placed on this group of the goods. Quality of the infringing merchandise does much bigger harm to a company-right holder of a trademark it is marked with, than the material losses: an enterprise's prestige drops and therewith confidence level to it on part of the buyers reduces.
If you have come across with the fact that infringing merchandise of your products have emerged in the market – start gathering an evidence and try to find a guilty person. As a rule, the main problem of any infringing merchandise case consists in a necessity of proving that namely that company which you have claims against, infringes your rights and uses unlawfully a trademark owned by you. Samples of counterfeit products, any papers confirming the fact of sale, a notarized protocol of a website inspection (in case if the infringing merchandise is sold via Internet) can be an evidence of a respondent's fault.
It is not less important to assess competently the opportunities of one's company, in particular, to verify how registration of a mark was carried out, that is used as applied to infringing merchandise. Whether any mistakes were made or legislation was broken? Whether a registration is valid? Only in case you are sure that your rights are valid, one can go on, otherwise prior to start a struggle with infringing merchandise it is necessary to eliminate all inaccuracies and ensure 100% protection to one's trademark.
The modern legislation proposes to a right holder several variants of own trademark protection, but in any case one should initiate proceedings with a prejudicial claim dispatch to a respondent. It is often enough to at least start negotiations with a breaker of your rights in case a situation is not settled. In a claim you should demand from a company-respondent to stop using a mark owned by you, having stated that its' actions are unlawful, and you should attach documents to a paper that confirms your rights. If a breaker neglects your address and continues using a trademark, it provides an evidence of malicious intent of its' actions and intended use of an image owned by you. Naturally, a right holder in this case does not have to rely upon an amicable resolution of a situation.
The second variant of own rights protection – is appeal to police with a respective application under which the law enforcement authorities will have to initiate a case on an administrative or criminal offence. In the first case a breaker can be penalized even one deals with a large breach (over RUB 1,5 mln), the sanctions will be also more serious. The police is entitled to seize or destroy the infringing merchandise, but it is unfortunately not entitled just to prohibit a breaker to use it. Only court may pronounce such a judgment.
One can appeal to a court both after carrying out an investigation by the law enforcement authorities and in parallel to a police investigation. In the first case, if the fact of breaches is confirmed by police, a right holder won't even need to prove anything to court: it will be enough to file an application on prohibition rendering to use a trademark and on a compensation collection in the amount up to RUB 5 mln or a double cost of the counterfeit products. In the second case it is necessary to submit to court every proof of a respondent's fault.
There is one more variant – an application filing to the Federal Anti-Monopoly Service (FAMS) with a claim to recognize the breaker's actions to be an act of unfair competition. One can address both to the federal department of the service and to its regional offices. The main advantage of addressing to the employees of the anti-monopoly service over addressing to court consists in the fact that the FAMS representatives can themselves claim documents from a respondent, confirming the fact of a breach while when addressing to court an evidentiary burden is fully borne by a right holder.
If the Federal Anti-Monopoly Service recognizes that a company-breaker is guilty of unfair competition, it can be collected a penalty from which amount ranges from 1 to 10% of the turnover of the entire goods of one group being sold by the company. For example, if counterfeit product is alcohol and, in particular, vodka, and a company-breaker sells 15 different marks of it, then a penalty sum will be calculated from the turnover of all the goods of this group.
The fact where to address primarily and how to plan one's actions so that to stand up for one's own rights quickly and with minimal losses, depends on a concrete case. In certain situations it can be advantageous to address just to one of the above mentioned authorities, in other situations – to file applications to several authorities at once. An expert will advise how to act best of all in your concrete case.
According to Article 19 of this treaty, Russia agrees that the lack of registration of a license:
does not affect the validity of registration of the mark, which is the subject of the license or protection of this mark.
can not be the reason to require the participation of the licensee in a court proceeding initiated by the right holder in connection with the infringement of the rights to the mark or to receive through such procedures the compensation for losses incurred as a result of the infringement of the rights to the mark that is the subject of this license.
can not be the reason to require the registration of a license as a condition to consider the licensee’s use of a mark as the use on behalf of the right holder in the course of the procedures related to the acquisition, maintenance and protection of marks.
The enumerated provisions should be considered as an indication to the circumstances, when the registration of a license agreement becomes not mandatory.
Such circumstances may include:
the use of marks by a group of companies, when the right holder is one person and the user is a different person; the agreement between them shall be concluded in a simple written form;
the use of the mark under the control of the right holder with a license agreement, concluded in a simple written form, what provides an opportunity to confirm the use of the mark in case of attacking it,
It should be noted that the law does not allow an extensive interpretation of the rules of the law, which include the provisions of the Singapore Treaty on the Law of Trademarks. In this connection, the registration of license agreements with the purpose of extracting income for granting the right to use the mark should be recognized as compulsory.
Talking of the fact that the world manufacturers of the goods and right holders suffer from grey schemes of the products import to Russia, take place for many years. But the main victim of the Russian politics in relation to the foreign goods are the consumers. When acquiring the goods from an official dealer in RF they have to pay for them several times more or support the grey import (import of the goods through unofficial channels what is unauthorized by the right holders). One can reverse the situation only having changed the struggle principle with the grey import, enshrined in the 4th part of the Civil Code of RF.
In Russia the extensive struggle with the grey import started in the 00s through amending the law "Concerning trademarks". This document was effective from 1992 and contained article 23 on exhaustion of the rights of a right holder, based on a trademark registration. Up to December 2002 this article did not contain the principle of the territorial use limitation of a mark. The document text stated: "Registration of a trademark does not entitle its holder to prohibit this trademark use to other persons in relation to the goods that were introduced into the economic turnover directly by a trademark holder or with its consent". But in December of 2002, the article was supplemented by just several words – "in the territory of the Russian Federation", – and the document essence changed. Actually Russia changed the principle from the international to territorial one.
It is difficult to answer what goal it was done with. More than likely that the RF authorities, in doing so, wanted to support the Western manufacturers who kept criticizing and continue criticizing Russia that their intellectual rights are not observed in the country…
According to the territorial principle it is assumed that any person, whether it is a legal entity or natural person, when entering the RF territory, shall have a document about oneself confirming that a right holder permitted it/he/she to import these goods to Russia. But the extensive struggle of the right holders supported by the government, with the grey import, concerned for an unknown reason only the legal entities that declared and imported the goods for sale to the territory of the country. It was evident that individually taken tourists just can't get permits for purchases import on a one-off basis. Thus such selectability called into doubt a thesis stating that we have the law that is equal for everybody...
In 2009, the Supreme Arbitration Court considered a very interesting case. A certain legal firm imported a Porshe car to the RF territory, and there had been attempts to stop and destroy this car as grey import. But the court adjudged that since the company had imported the car for its needs, therefore there were no grounds to stop and destroy the car. Subsequently the courts governed by the created precedent, rejected the rights protection to the right holders for some time.
Some time ago certain entrepreneurs from Kaliningrad tried to take an appeal at the Constitutional Court from a norm that had entitled a right holder to prohibit the unlawful use of a trademark. But the legal monopoly principle for a trademark as such was taken an appeal from (clause 2 article 4 of the law "Concerning trademarks"), for which reason the court took a decision to let everything be as it is. For the time being the court in Russia acts as the grey import regulator: despite the norm absence in the law that differentiates the rights of the legal entities and natural persons, exhaustion of an entitlement is applied in a different way.
Today the Federal Anti-Monopoly Service also states that it is necessary for Russia to transfer to the international principle and WTO – is an optimal cause to do it. After Russia's accession to the organization, the new principle will start having effect as from the time it is adopted. Moreover, there is an opportunity to contest at court the rules that have been effective since 2002, and in theoretical terms the cost of all the goods that were destroyed will have to be compensated to their carriers and a compensation collected from them - shall be returned to the "breakers"..
In the meanwhile many goods in our country cost by 2–3 times more expensive than in other countries, because the government in RF permits a right holder to establish such prices, in terms of struggling with grey import. Only when a principle of struggle with grey import becomes international, the prices will be normal. In the meanwhile certain branded things are simpler to buy abroad — at the same money which will be spent in Russia, one can not only purchase goods but also pay flight and accommodation at a place of purchase.
Sergey Anatolievich Zuykov — the president of Guild of patent attorneys and patent officials.See more details: http://www.ng.ru/economics/2012-07-12/3_kartblansh.html
There is a good deal of ways of foreign patenting, but the creators of these or those utility models and technical solutions, try, as a rule, to get an international patent. For all that the main mistake consists in wrong construal of this notion. No common international patent that would be effective in the territory of all the world countries exists merely as of today as such, – any documents obtained by the right holders are effective just in the territory of those countries where they are obtained, except for the Eurasian and European patent. Nevertheless, there exists the way making it possible to be the first person in patenting one' invention or solution in many countries at once.
What is meant here is an international application for a patent. Such application is filed according to a Patent Cooperation Treaty (PCT). Is is not a patent as many peple think but a document certifying an authorship, providing a right holder with a priority for patents getting in different countries.
Two ways of an international application filing are possible: first of all either a Russian application for a patent granting in RF is filed that subsequently is transferred to the international registration or an international application is filed that subsequently is transferred in a mandatory manner to patenting in RF. In theoretical terms everything seems to be rather simple, but in practice an applicant comes across difficulties as early as before an application filing for a patent. So, according to clause 1 of article 1395 of the Civil Code of RF, applications for inventions and utility models created in Russia can be filed to a foreign patent office only after verification for data availability that represent a state secret. And only as soon as an applicant makes sure that his/her invention or utility model does not contain data representing a state secret, he/she may file an international application to the World Intellectual Property Organization (WIPO) through the Russian patent office (Rospatent). Also worth noting is that an applicant will need to pay a state fee for an international application filing. A sum depends on the fact who is an applicant (a natural person or a legal entity) of a quantity of features in a formula and text of description, ranges from 300 to 2,500 EUR. Then, within 30 months starting from a priority of an initial application it is necessary to file national applications to each of the countries as chosen by you. In the majority of the countries it is made through a local patent attorney. The costs amount to from 1,000 EUR and higher. A good deal of money is spent to your application translation to foreign languages. In each of the governments a filed application will be considered in accordance with the current legislation, that's why it is worth noting that in different cases different criteria can be applied to solve an issue whether a requested invention is worthy of being patented or not. It is naturally beyond an applicant's power to study the national legislations and to take into account all the nuances – this is precisely why in this case it will be more reasonable to address to an expert organization cooperating with the patent offices of other countries. The specialists can render assistance in a document obtaining what will save time and funds of a right holder. Nevertheless, even if you make up your mind to get a patent on your own, it is necessary to pay attention to the fact what exceptions from the legal protection are stipulated by the law of a country you are interested in. So, in many regions one can't get a patent for articles of food, therapeutic pharmaceutical agents and methods of treatment, fissile materials and so on, also worth noting is that the PCT procedure is effective only in relation to inventions.
Such an item as a utility model is patented only directly through the national offices, because the utility models are registered in a very limited number of countries.
We have already been concerned earlier with the contents of these notions, but it won't be excessive to repeat it one more time. An invention – is some new technical solution that raises the existing level of machines. The legislation lodges several requirements to patentable inventions: a technical solution shall be new; not known from the machines' level and shall be industrially applicable.
Utility model – is a technical solution relating to any device that is also applicable in life. The main requirement to a utility model is its world-wide novelty. That is, by analogy with a definition of an invention, one can note that a utility model meets this criterion in case if as at the time of an application filing it was not known from the level of the machines.
If an applicant wants to patent a design invention, it is necessary for him/her to file separate applications to each country as chosen by him/her.
There are other ways to obtain a foreign patent. For example, it is possible to obtain a European patent that is effective in the countries of the European Union, through the European patent office. One can also obtain an Eurasian patent (that is effective the CIS countries except for Ukraine).
In each individually taken case the different variants of the international patenting are possible, and one should choose an optimal one, catering to a list of countries and tasks a right holder sets itself. Today there are companies in the market that are ready to assist to applicants in an international patent obtaining. When addressing to a patent office of our country, right holders often make mistakes due to which they subsequently have to stand upon their rights at court. A situation with the international patents is much worse – anyone can become complicated and omit taking into account any nuance. A piece of advice of a specialist who has been for years engaged in the international applications filing, will help you to save time and money.
The original article was published in journal "Na stol rukovoditelu" in 2012, release No.17 (http://www.nastol.ru/Go/ViewArticle?id=4110)
Prior to proceed with a trademark registration, one needs to create it. And as far as possible, already on this stage one should aspire to cause a trademark be complying with all the requirements of the legislation - subsequently it will simplify considerably the designation registration process for an enterprise.
The law states that a mark can be composed of one or several words, letters, figures, pictures, emblems or signatures, it can have several colors or their combinations. For all that, there exist restrictions that are to be taken into account when creating a trademark. So, a mark shall not be composed only of the word elements alone or images, that
- have come to common use and designate the goods of a certain kind (for example, you can't register a trademark that is composed of the only word "fizzy water", if your company actually manufactures fizzy drinks);
- are generally accepted symbols and terms (a bowl embraced by a snake for medicine; a wrench for mechanics etc.);
- characterize the goods on location, time and way of manufacture (for example, if you own a poultry farm located in the Moscow region, it will be difficult to obtain the exclusive right for the mark "Moscow area hens");
- denote a kind, quality of products (one may not use the words "the best", "super" etc.), composition or raw stuff material;
- represent a form of the goods that is determined exceptionally by their appropriation (for example, one may not register a trademark in form of a kinescope of a TV set if a firm releases kinescopes because their form is preconditioned by the technical characteristics).
All these restrictions are described in more detail in part IV of the Civil Code of RF. It follows from this document that a trademark won't be registered if it:
- misleads a consumer in relation to the quality of goods (for example, word "candies" is used in a name but the goods requested for registration - are biscuit);
- coincides fully or to the largest extent with an already registered mark;
- includes the elements exceptionally of the state emblems, flags, emblems, full or condensed names of the state and international organizations;
- bears a close resemblance with especially valuable historical or cultural sites of Russia;
- is composed of the same name as a widely known work of science, literature or art has.
Article 1483 of the above mentioned part IV of the Civil Code of RF and the "Rules of making, filing and considering of an application for registration of a trademark and service mark" contains the full list of the grounds for a registration rejection of a trademark. One can obtain from the Civil Code the additional information on the trademarks and mechanisms of their registration.
So, a trademark is ready– what comes next?
The first thing to do within the framework of a mark registration - is to carry out a so called search on the similar trademarks and to determine whether somebody tried to register a similar designation. For this goal one can make use of the Rospatent's base on the registered marks that is publically available, but here please take into account that only the designations that are already registered are included into this base – it shows no filed applications! To obtain more reliable information one can involve to the work the organizations that have an access to the applications base. In theoretical terms this search can be ordered at the very Rospatent, but here it either costs too much or takes too much time. It takes the Rospatent's specialists more than one month to carry out a search for reasonable money, while should they have a desire they can carry it out for 3-4 days, but such service will cost for an entrepreneur several times more expensive.
Prior to proceed with a search it is necessary to determine for what goods or services a trademark will be used – it is better to carry out a search on the categories of concrete goods.
If you have established that there are no obstacles for a mark registration, one may file an application to Rospatent. One can do it on his-/her own because all the letterheads are available on the registrar's website. Approximately in one and half - two months after an application has been filed you will get a certificate of acceptance confirming the fact that you have filed documents for a trademark registration. Afterwards approximately in a year of expectations, an applicant will be sent either a notification on the verification results of this designation or a decision on registration. For this time Rospatent carries out one more examination in respect of the similar marks and absolute grounds, i.e. it clarifies whether a word, that is filed for an application as absolute in description of these goods or services, is abusive or not, etc.
A certificate itself only states the fact that your application has been accepted for registration and establishes priority but for all that it grants you no rights. Although many manufacturers use it to confirm registration to contractors for them to start releasing earlier the goods with a new brand. But it is important to understand that when your mark is registered, the legal protection arises as from a date of a priority receipt – that is, from the time when a mark is filed for registration. From the time of a trademark registration it belongs to a right holder for 10 years, starting with a date of an application filing. After this term the legal protection of an image can be extended upon the application of a right holder for the next 10 years.
What mistakes are most often made by entrepreneurs in case they register a mark on their own?
The biggest problem - is similar marks. The Rospatent's website that is publically available, shows the designations' similarity in percentage ratio, but in practice this ration is often divorced from reality. One can get a result that the marks are at 80% identical, with the assumption that in real life they have nothing common for the specialists, and verification results can be such that the marks have nothing common but in fact they are almost identical.
There is one more problem – non-compliance with the requirements imposed on the trademarks. When filing an application for registration the manufacturers often think that this fact already entitles them to use this designation, while in fact it turns out that the marks were never registered and even moreover – they just can't be registered. So, a misestimation of a mark registration opportunity – is the second main mistake.
A big number of the problems arises with a mark description, with making of the goods list. Somebody declares too many categories, the others on the contrary – too few, somebody declares the goods that are absent in the MKTU categories in principle.
Besides that, one should not forget that sometimes it is not enough to file merely an application. Sometimes it is necessary to file for registration both verbal mark and an image and a combined mark…
And people don't always understand it, that's why in case it has become necessary for you to register a trademark, the simplest and efficient recommendation is – don't be afraid of being consulted by a specialist! It is very difficult to assume beforehand how your competitors will infringe your rights, and competent registration will make it possible to make oneself safe to the maximum and to protect one's interests.
The original article was published in journal "Na stol rukovoditelu" in 2012, release No. 8 (http://www.nastol.ru/Go/ViewArticle?id=4056)
Rights assignment contract for an item of intellectual property (or "Alienation contract") transfers the exclusive right for this item to another person, and a license contract permits some person to use temporarily an item of the intellectual property on certain conditions and for a certain term. Both these documents are subject to compulsory registration at the Patent Office of the Russian Federation, otherwise they become null and void.
The requirements to contents and drawing up an assignment contract are contained in articles 1232 and 1488 of the Civil Code of RF. Nevertheless, when drawing up such documents, certain issues may arise. These issues don't represent any difficulty for an experienced lawyer who specializes in the intellectual property issues, thus they can entirely baffle an unprepared person. For example, an alienation contract won't be registered at Rospatent in case if a right holder has several similar trademarks, and the exclusive right, for all that, is transferred only for some of them. According to the Civil Code of RF, the rights for the similar and identical trademarks registered for homogeneous goods may not belong to different legal entities.
There are two ways out of this situation: to transfer to a new right holder the rights for the entire series of the trademarks for all the goods or to transfer the rights for the entire series of the trademarks but only for a certain class of the goods - so, two companies will own the rights for the trademarks but in relation to different goods.
Also the questions may arise in case when a company name of a trademark holder coincides with a registered designation of a trademark. In this case Rospatent will demand from you to specify the grounds by virtue thereof the cession of rights for a trademark won't mislead the consumer in relation to a person manufacturing goods or rendering services. Such grounds are determined individually in each concrete case.
A non-gratuitous assignment contract shall have a price specification that has been paid by a new right holder. Naturally, a gratuitous contract can be also registered, but it is worth noting that the Russian legislation does not stipulate a donation agreement between legal entities, and it means that a transaction can be contested subsequently.
The conditions that are necessary for entering into a license contract or a franchise agreement are outlined in article 1235, 1236,1237,1238, 1489 of the Civil Code of RF. In this case the difficulties arise most often when preparing and registering license contracts and concern the issues of exclusivity and non-exclusivity of a license. And similarity and identity of the trademarks that are included into a license contract don't matter unlike an alienation contract.
Validity term of a license contract can be any, but it is logically that it shall not exceed a validity term of a trademark registration. When an holder extends a validity term of a trademark, a contract term is also extended.
Determination of a cost and periodicity of license payments contribution is mandatory in non-gratuitous license contract, for all that, unlike an assignment contract, when entering into a gratuitous license contract there will be no problems. Moreover in case of entering into a gratuitous license contract and an agreement on a trademark used under the control of a right holder, no agreement is required to be registered. It is a substantial advantage for many trademark holders because they try for different reasons to avoid a contract registration and difficulties and costs associated therewith. Nevertheless, it is worth noting that a registered contract is more reliable from the point of view of a trademark subsequent use, an interaction with the tax authorities and possible judicial disputes in relation to the rights to use an item of intellectual property.
Let us also note that the registration is needed for any changes to license contracts. Changes of the contract clauses are drawn up as additional agreements. If a name or address of a trademark holder changes, then the data on changes, in their turn, are to be submitted to the materials of a certificate for a trademark. And if a name or address of a user changes, the changes are to be submitted to the materials of a contract. In exactly the same way an additional agreement is drawn up, which has a specification that for example, the parties have agreed to regard the following address "N" to be a new address of a user. Documents confirming the changes are attached to an agreement and this agreement is also filed to registration. Contract termination as agreed by the parties is also subject to registration.
When drawing up assignment contracts or license contracts there exists a plenty of nuances to gain an insight into which is easier for a person who already possesses of sufficient experience in the work with the items of intellectual property. For all that, mistakes in a contract or its wrong registration can cause subsequently far more trouble to the parties and demand from them more considerable costs than a specialist's consultation payment on the stage of the documents drawing up.