Assessing the wide popularity of a trademark the Russian Federation

Originally published in Trademark Lawyer Magazine

According to the Articles 1477 & 1484 of the Russian Civil Code, a trademark (service mark) is understood as a designation that serves to individualize goods, works or services in respect of which the trademark is registered. The exclusive right to a trademark, including the right to place it on goods (labels, product packaging), as well as on signs, in advertising, etc. belongs to the copyright holder. Thus, a trademark allows you to distinguish goods of a certain manufacturer from the total mass and from the goods of other manufacturers of homogeneous goods.

Without the permission of the copyright holder, the law prohibits the use of designations similar to his trademark in relation to goods for the individualization of which it is registered, or homogeneous goods, if as a result of such use there is a likelihood of confusion (Clause 3 of Article 1484 of the Civil Code of the Russian Federation). As experts note [1], the condition of homogeneity of goods is natural, since the appearance on the market of goods of the same name from a competing manufacturer deprives the copyright holder of some consumers and reduces its profits. At the same time, the appearance on the market of goods of the same name, but fundamentally different in essence, does not affect the business of copyright holders.

To protect exclusive rights to a trademark, the copyright holder needs to prove that a third party, without his consent, uses a trademark (a confusingly similar designation) specifically in relation to the goods (works, services) for which it is registered or similar to them.

At the same time, when regulating well-known trademarks, the legislator takes a different approach, which provides the copyright holder of such a mark with certain advantages. However, registering a trademark as well-known is quite a difficult task. In the register of well-known trademarks in the Russian Federation, only 262 designations are registered. Let's consider what criteria are used when assessing the wide popularity of a trademark in Russia in order to provide it with legal protection.

Which trademark is considered well-known in the Russian Federation?

A well-known mark is a special type of mark that gives its owner a special status and protection regulated by the Civil Code of the Russian Federation. The conditions for registration and protection of well-known trademarks are specified in the Articles 1508-1509 of the Civil Code. Thus, both a registered trademark and a designation used as a trademark can be recognized as well-known. A trademark or designation may be recognized as well-known if, as a result of intensive use, it has become widely known in Russia among relevant consumers in relation to the goods (works, services) of the applicant.

For example, the trademarks marking the applicant’s products, which are sold in all federal districts of Russia, including administrative centers of the constituent entities of the Russian Federation, large cities and urban districts:

Figure 1: Well-known trademarks N N 237, 253, 210 (25th class of the ICGS “Clothing”). Copyright holder JSC Melon Fashion Group

However, the geographical criterion in itself is not a decisive factor.

In order for a designation to be recognized as a well-known trademark, it is not necessary that it be used in all or most regions of Russia. Moreover, it may be considered generally known, even if it is used only in the territory of one region or other administrative unit. An example is the verbal designation “VDNKh” (Moscow), which was recognized as a well-known trademark in relation to the services of the 35th class of the ICGS “organization of exhibitions” and the services of the 41st class of the ICGS “organization of exhibitions for cultural and educational purposes; organization of leisure" (No. 153, Copyright holder OJSC "VDNKh").

Thus, the main criteria are the familiarity (recognizability) of the designation in the Russian Federation by a wide circle of consumers and its association with the source of origin of goods (works, services) on the date specified in the application for registration of the mark as well-known.

According to the explanations of the Intellectual Property Rights Court [2], the wide popularity of a trademark can result not only from its intensive use in any particular period of time, but also from other circumstances, for example, from a long, widely known history of the designation. However, continuous use of the trademark is not a prerequisite.

Also, to recognize a mark as generally known, it is not necessary to establish whether the applicant is known to consumers; it is sufficient to establish whether the consumer believes that the goods come from the same source [3].

What are the advantages of owning a well-known trademark?

Like the owner of a regular trademark, the copyright holder of a well-known trademark receives the exclusive right to it and all related powers: use of the trademark by any legal means, disposal of the right to it, as well as the right to protect the trademark from illegal use by third parties, including the requirement to pay compensation.

However, unlike the copyright holders of an ordinary mark, a well-known trademark gives the copyright holder the following advantages:

• Perpetual legal protection - the validity period of legal protection of well-known trademarks is unlimited in time and does not require extension (clause 2 of Article 1508 of the Civil Code of the Russian Federation);
• Expanded protection of rights - legal protection extends to goods that are not similar to those for which the trademark is recognized as well-known, and also increases the possibility of suppressing violations of a well-known trademark;
• Confirmation of the owner’s status is a public confirmation of the widest popularity of the brand in the Russian Federation and its unambiguous association with the copyright holder company.

In addition to these advantages, a well-known trademark is one of the tools to combat the so-called “blurring” of trademarks.

This possibility of extended protection is due to the fact that a well-known trademark is perceived by consumers as something more than just a means of individualizing specific goods. It is associated with the business reputation of the owner of the mark, and often with prestige.

Therefore, the peculiarities of regulating legal relations related to a well-known trademark are aimed at protecting consumers from misconceptions regarding the source of origin of goods, their belonging to a specific manufacturer, as well as preventing image and reputational losses of the copyright holder in the event of poor quality of other people's goods marked with the corresponding trademark.

How to recognize a trademark as well known

To recognize a trademark as well-known in Russia, you need to submit a corresponding application to the Rospatent. The application must indicate the trademark or designation used as a trademark that the applicant wants to recognize as well-known, as well as a list of goods (works, services) and the date from which the applicant considers his mark to be well-known.

The application must be accompanied by materials confirming that the trademark has become widely known in the Russian Federation during the time period preceding the date from which the applicant considers his mark to be well-known.

An approximate list of materials on the basis of which the well-known nature of a trademark is established is indicated in the Administrative Regulations of Rospatent. This, in particular, may be materials that contain information:

• on the intensive use of a trademark or designation, including information on the date of commencement of use of the trademark, places and volumes of sales of goods, the average annual number of consumers of the product, the position of the manufacturer on the market in the relevant sector of the economy, and similar information;
• on the costs of advertising a trademark or designation and on its cost (value) according to the annual financial reports;
• on the results of a survey of consumers of goods on the issue of well-known trademark or designation, conducted by a specialized independent organization. At the same time, Rospatent has developed appropriate recommendations for processing data from sociological surveys.

As practice shows, proving the fact that a trademark is well known is a rather difficult task. For example, when developing a strategy to prove the widespread popularity of marks, the number of materials that our experts used to confirm this fact amounted to several dozen for each mark.

At the same time, competently building a strategy helps to immediately achieve the desired result at the stage of interaction with Rospatent, without resorting to lengthy legal disputes. In addition, all difficulties are outweighed by the economic and other advantages that the owner of a well-known trademark ultimately receives. The Zuykov and partners company has extensive experience in registering well-known trademarks. Thus, we have already recognized 14 trademarks as well-known, including those mentioned in this article (VDNKh, Befree, Zarina, Sela), as well as such marks as Belaz, Vitek and many others.

Sources:

1. Kozlova N.V., Vorozhevich A.S. Well-known trademarks: concept and features of legal protection // Law. 2015. N 12. P. 179 - 190
2. “Review of the practice of the Intellectual Property Rights Court on issues of legal protection of well-known trademarks”, approved. by resolution of the Presidium of the SIP dated August 26, 2022 N SP-21/18
3. Decision of the Intellectual Rights Court dated December 6, 2023 in case No. SIP-647/2023