The body of evidence confirming use of a trademark in cases of early termination due to non-use

In the interests of persons wishing to individualize goods (services) designations registered as trademarks by other persons, but not used by them, the institution of early termination of legal protection of trademarks has been introduced into Russian legislation.

The institution of early termination of legal protection of a trademark, concluded in Article 1486 of the Civil Code of the Russian Federation, is provided for unused trademarks that occupy a place in the register, but are not actually used by the copyright holder. The purpose of early termination of legal protection of such trademarks is to ensure the possibility of registration and use by an interested person of an identical or similar designation for similar or homogeneous goods, works, services, and not to obtain unjustified advantages by using the reputation of a well-known brand for promotion in the market.

According to Article 1486 of the Civil Code of the Russian Federation, the legal protection of a trademark can be terminated early in relation to all goods or part of the goods for the individualization of which the trademark is registered, due to non-use of the trademark continuously for three years.

A proposal from an interested party may be sent to the copyright holder no earlier than three years from the date of state registration of the trademark.

If, within two months from the date of sending the proposal of the interested person, the copyright holder does not submit an application for waiver of the right to the trademark and does not conclude an agreement with the interested person on the alienation of the exclusive right to the trademark, the interested person, within thirty days after the expiration of the specified two months, has the right to apply to court with a claim for early termination of legal protection of a trademark due to its non-use.

Based on the standards of evidence for this category of disputes, the plaintiff is obliged to prove that he is an interested party in the early termination of the legal protection of a trademark, the copyright holder of which is the defendant (clause 1 of Article 1486 of the Civil Code of the Russian Federation, Article 4 of the Arbitration Procedure Code of the Russian Federation), whereas in the latter lies the burden of proving the use of the disputed trademark in the three-year period preceding the submission of a mandatory pre-trial proposal by the interested party (clause 3 of Article 1486 of the Civil Code of the Russian Federation, Article 65 of the Arbitration Procedure Code of the Russian Federation).

Civil legislation does not establish an exhaustive list of cases when the plaintiff can be recognized by the court as a person interested in the early termination of the legal protection of a trademark; the presentation by the plaintiff in confirmation of his interest of evidence of production and sale of goods not by himself, but by a person affiliated with him does not exclude the fact of recognition of the plaintiff interested in early termination of legal protection of a disputed trademark.

However, regarding the use of a trademark by the copyright holder, the following should be noted.

In contrast to the question of the interest of the person filing an application for non-use of a trademark, when asked about the use of a trademark by the copyright holder as a general rule (with the exception of well-known trademarks), homogeneity is not examined, since the copyright holder is obliged to provide evidence of the use of the disputed trademark in relation to each specific goods/services for which legal protection is provided.

From the norms of the current legislation and the explanations of the higher court, it follows that in a case of early termination of legal protection of a trademark, the copyright holder of this trademark must prove the actual use of the controversial means of individualization when introducing the product into civil circulation, and not preparation for such use.

The judicial practice of the Intellectual Property Rights Court proceeds from the fact that when assessing evidence of the actual use of a disputed designation, a set of circumstances must be established confirming the introduction into civil circulation of products marked with such a designation, including indicators of the volume of such products.

For example, a low level of turnover of expensive (exclusive) products with a disputed trademark may be recognized by the court, together with other evidence, as sufficient evidence of the use of this trademark, while the same volume of turnover of less expensive products due to their qualities (more accessible to ordinary consumer due to its cost, and/or prevalence, and/or classification as household items, items of everyday use, etc.) cannot indicate that the specified product confirms the fair use by the copyright holder of its trademark, and evidence of such use cannot be considered sufficient.

This approach is based on the legal position of the World Intellectual Property Organization, which states that the use of trademarks must be made public, that is, goods must be offered for sale through normal commercial channels. In this case, the use must be actual; nominal use is not enough.

For example, in case No. SIP-1078/2020, the fact of use of the disputed trademark by the copyright holder (another person with the consent of the copyright holder) when labeling only 750 bottles of beer in a three-year period, taking into account the nature of the product, is symbolic (imaginary).

The conclusion about the imaginary (symbolic) use of the disputed trademark was made by the court on the basis of an analysis of the documents submitted to the case materials, from which the volumes of products introduced by the copyright holder into civil circulation during the disputed three-year period are discerned.

On the one hand, the legislation does not require the copyright holder to disclose all of its business transactions during the period under study relating to the use of the disputed designation; on the other hand, the symbolic use of a trademark (only for the purpose of maintaining its legal protection) cannot serve as a basis for maintaining the exclusive right to it.

The issue of imaginary, nominal, symbolic use of a trademark relates to the assessment of the factual circumstances of the case and must be declared in the court of first instance. It is this approach that allows the court of first instance to comply with the adversarial principle of the arbitration process and the procedural rights of persons participating in the case: both the plaintiff’s right to ask the court to examine the evidence presented by the defendant for the symbolism of the use of the trademark, and the defendant’s right to submit additional documents confirming other volumes of input of goods, marked with a disputed trademark, in civil circulation during the disputed period.

Based on the above, in cases of early termination of legal protection of a trademark due to non-use, it is necessary, among other things, to take into account the totality of circumstances confirming the introduction into civil circulation of products marked with such a designation, including indicators of the volume of such products. If the court establishes the symbolic (imaginary) use of a trademark by the copyright holder only for the purpose of maintaining its legal protection, this circumstance may serve as a basis for invalidating the legal protection of the trademark.