Infringement of trademark rights occurs all too often. Therefore, before presenting claims to the infringer, the rightsholder must be assured of the "strength" of the current protection. If counterfeit products with your trademark appear on the market, Zuykov and partners will help to deal with this controversial issue.
Reliability of the trademark registration
A trademark registration may be or may become vulnerable due to errors in the filing an application, during the examination or registration procedure. It is important to take the necessary steps to avoid the registration to be vulnerable to cancellation or invalidation.
In Russia, a registered trademark must be used during the last three years counting from the date of registration. A third party may challenge the validity of the registration if this use requirement is not fulfilled. Thus, it is important to make sure to keep evidence of use during the last three years so that rightsholder is able to prove use if a competitor attacks the registration. Zuykov and partners will guide you in what type of evidence will constitute proof of use.
A registration may become vulnerable to non-use attacks in the following cases:
- The object is not used.
- The trademark is applied to a part of the goods and / or services different from those indicated in the certificate.
- The mark is being used by a different legal entity than the owner of the registration.
- The trademark has been changed over time and is being used in a different way than the registered mark.
If the rightsholder believes that the registration took place in accordance with the law and the trademark is being used appropriately, then the owner has nothing to worry about. Zuykov and partners will help you double-check.
Protection of rights
In order to defend the legitimate interests of the owner of a registered trademark, when counterfeit products appear on the market, it is required to collect evidence.
Before initiating a suit before the authorized bodies, the rightsholder sends a complaint letter to the infringer which contains the requirements to stop the illegal use of the rights in question. In some cases, this is enough to start negotiations to resolve the dispute.
If the offender ignores the complaint, then the trademark owner has the right to go to court with a claim to put an end to the infringing actions and request compensation. The Civil Code of the Russian Federation provides for penalties in the amount of: from 10 thousand to 5 million rubles, or twice the value of the counterfeit products or the cost of the right to use the trademarks.
Drafting a statement of claim and consideration by the court of the plaintiff's requests
- The time for preparing a claim and collecting evidence is 2–3 weeks.
- The time in court is 3–6 months.
Additional protection methods
The legislation sets out other methods of protecting intellectual property rights.
- Reporting to the police. Law enforcement agencies are empowered to initiate an administrative or criminal case against a supplier or seller of counterfeit goods, as well as destroy or seize goods with an illegally used designation.
- Submission of an application to the Federal Antimonopoly Authority. The rightsholder requests that the illegal actions are recognized as an act of unfair competition.
Depending on the circumstances, the described types of protection of legitimate interests have different advantages. In certain cases, it is more profitable for the rightsholder to contact one institution, and in other cases, all instances. The lawyers of Zuykov and partners will help you choose the appropriate and most effective way to defend your rights and take the required measures to protect your interests as a trademark owner.
When a person owns a registered trademark or a patented technical solution and uses a protected object, then, if a violation is detected, such a right holder has the opportunity to use the methods of protecting exclusive rights specified in the legislation. Depending on the nature of the offence, a person applies for the suppression of illegal actions and the restoration of violated rights to the patent office, court, or the Federal Antimonopoly Service. In addition, the right holder can demand compensation for damages and expenses incurred through the court. To protect the interests of the holder of intellectual property, the person will need to prove the legality of the claim and confirm the legitimacy of the declared powers and rights.