The approaches of “first to file” and “first to use” protection and defense of trademarks

There are the opposite concepts regarding the determination of the moment, since which the legal protection of a trademark emerges – “first to use” and “first to file.”

In the Russian Federation and other countries of the Romano-German legal family, the more common “continental” approach of “first to file” prevails, according to which the grounds for the emergence of the legal protection is registration, and its validity starts since the date of filing the corresponding application.

In accordance with Article 1494 of the Civil Code of the Russian Federation, the priority of the trademark shall be established according to the date of filing the application for the trademark to the Federal Executive Authority on Intellectual Property. The priority of the trademark according to a divisional application (Paragraph The priority of the trademark according to a divisional application (Paragraph 2 of Article 1502 of the Civil Code of the Russian Federation) shall be established according to the date of filing the original application and provided there is a right to an earlier priority according to the original application - according to the date of this priority.

On the contrary, the legal orders of the common law countries adhere to “first to use” - according to which, the right to the trademark shall emerge after the start of using the designation that complies with protectability conditions. For example, in Canada or the USA, the marks are assigned the legal protection based on their actual use in a trade or at providing services (depending on the situation – for example, according to sec. 1 (a) or (b) of the Lanham Act - either in connection with the current use or in connection with a good faith intention of such use, which will be confirmed with evidence in the future). Thus, when implementing “first to use,” the priority of the mark is guaranteed not by the very filing of the application, but by the actual use.

However, despite the seemingly unambiguous enshrinement of the principle of “first to file” in the Civil Code of the Russian Federation, while granting the legal protection to the trademarks, one can notice an indirect manifestation of the approach of “first to use” in the norms of the Civil Code of the Russian Federation, as well as in the law enforcement practice.

For example, according to Paragraph 3 of Article 1483 of the Civil Code of the Russian Federation, the state registration as the trademarks shall not be allowed in respect of the designations being or containing the elements that are false or capable of misleading a consumer regarding a product or its manufacturer, what entails both preventing the registration of the relevant designations, and invalidating such registration if the latter has taken place. One of the most common cases of misleading the consumers is potential confusion between the manufacturers operating at the market under similar designations.

In accordance with Subparagraph 6 of Paragraph 2 of Article 1512 of the Civil Code of the Russian Federation, granting the legal protection to the trademark may be challenged and invalidated, if the right holder’s actions related to granting the legal protection to the trademark or to another trademark being confusingly similar to it, have been recognized as an abuse of the right or unfair competition (which, in turn, may imply a wide range of situations, in particular, and the competition to the designation performing the functions of a means of individualization).

Articles 14.2, 14.4, 14.6 of the Law on Defense of Competition also provide directly or indirectly the opportunities for restricting the rights holders of trademarks in connection with the competition of the individualizing designations (including those that have emerged earlier than the priority date of the trademark), since they contain such grounds for establishing unfair competition, as misleading, creating confusion, the unfair registration itself and the use of the mark.

The law enforcement practice, in turn, also allows identifying and confirming the factors that are likely to entail the restriction of the rights holders’ opportunities. Such factors may be the emergence of special individualizing properties at the particular designation as a result of its mass application in business activities by a number of persons, and acquiring an exclusive right to such designation by one right holder.

This model implies the right holder’s intention to take advantage of the recognizability of the designation, wherein often immediately after the registration of the trademark, he begins the legal prosecution of the competitors.

Thus, the designation that has acquired a distinctive ability as a result of the longstanding efforts of various (and sometimes numerous) manufacturers unreasonably brings advantages to one economic entity, and a prohibition to this can be called a mediated implementation of the “Anglo-Saxon” principle of “first to use.”

As examples, we can cite the following cases on challenging the decisions of the antimonopoly authority with an opposite result, but applying the concept of providing an advantage to good-faith users of the individualizing designation:

• The right holder of the trademark “HANSOL” failed to challenge the recognition of its mark registration as unfair competition: by the time of filing the application for the trademark, the homogeneous product marked with the above designation had been sold for a long time at the Russian market by various market players, as a result of which the mark became widely known among the consumers of this product, and it was associated directly with that product.
• In another case, the applicant, on the contrary, managed to cancel the decision of the Federal Arbitration Court, by which its actions for the registration and use of the trademark had been recognized as unfair competition -prior to the date of the registration by the applicant of “Antigrippin” as a medicinal drug trade name in 1996 and prior to the priority dates of the similar trademarks (2007, 2009), the designation had been widely used by pharmacists and doctors, pharmaceutical enterprises, while not being tied to a specific composition and a specific manufacturer, and it had related to the drug manufactured by pharmacy. The designation had appeared massively in the mass media relating to medical themes and even in regulatory documentation.

According to the explanations of Sergey Zuykov (the managing partner of Zuykov and Partners, the patent attorney of the Russian Federation, a Eurasian patent attorney), the approach of “first to use” is also periodically used in the Russian judicial practice on a violation of the exclusive right to the trademark, wherein this often occurs in the cases regarding the designations that can be generically called “Soviet.”

This can be clearly seen in the examples of the cases regarding the prohibition to use the trademarks and/or the recovery of appropriate damages, often using the schemes for the abuse of the right:

• In the case, which underwent two rounds of instances and reached the Supreme Arbitration Court of the Russian Federation, the TV company tried unsuccessfully to prohibit the magazine to use the designation “Chelovek i Zakon,” which was similar to the trademark; as a result, the Supreme Arbitration Court of the Russian Federation dismissed the claim, since the priority had been granted to the trademarks later than the registration of the defendant’s mass media in 1990 and the beginning of publishing this mass media, which name coincided with the plaintiff’s trademarks, as early as in 1971. The court, although referring to the norms on the priority of the trademark, however, considered that the plaintiff’s actions could be qualified as the abuse of the right due to the confirmed activity of the defendant prior to filing the application by the plaintiff.
• In another case on the defense of the exclusive right to the trademark and the recovery of damages, the courts also dismissed the claim due to the fact that the manufacturer-defendant had been manufacturing the homogeneous products under the designation constituting a word element of the trademark “Malvina” 13 years prior to the priority date of the trademark.
• In 2006, the Supreme Arbitration Court of the Russian Federation, in the resolution on a particular case regarding the designation “Spartak,” indicated obiter dictum, “... if the use of the designation by the subject of economic activity has started and become known in circulation prior to the priority date of the trademark, such use cannot be recognized as a violation of the exclusive rights to the trademark.”
• In 2019, the Intellectual Property Court dismissed the claim for the defense of the trademark “Detskiy” with the priority of 2016 (regarding the cream, which design was developed as early as 1955), because it established the fact of using the disputed designation by the defendant for a long time prior to the registration of the trademark, as well as the fact it had gained a fairly wide popularity among the consumers in relation to the manufacturer-defendant.

Thus, formal adopting the approach of “first to file” in the Civil Code of the Russian Federation does not exclude completely the partial, pointwise application of an opposite principle - at least when implementing the prohibition to the abuse of the right and unfair competition.

Originally published in World Trademark Review