The team of Russian-canadian law firm wrote for IPS vc.ru a column about the registration of a trademark and use another brand. At the beginning of life, every company gets the name — brand name and, if necessary, and commercial designation. Upon successful development of the products or services of the company become known to a wide circle of consumers, and the brand acquires a price. Registration of a trademark allows you to legally protect success against unfair competition. According to article 1484 of the civil code, the exclusive right to use the trademark gets the one who used it will register.
The presence of this law legally prohibits competitors to provide services or sell products under the protected brand. The fact of registration creates an intangible asset that can be disposed of “by any means not contrary to law” (p. 1 St. 1229 of the civil code), including licensing, sale or mortgage of the security for the loan, for example, in the Russian branches of Western banks. A trademark can be not only verbal, but also visual (logo) and combined (St.
1482 OF THE CIVIL CODE). Check graphic elements in different combinations on different color background helps to protect the recognizable design of the company. There are other types of trademarks. For example, companies Vanish, MTS, Sberbank failed to register color as a trademark (see trademarks № 310 048, № 560 598, № 556 088). Since the logo design is a creative job, since the creation of it still protected by copyright.
The author (designer) should formally convey to the company the right to use the logo (for St. 1285 or 1286 of the civil code), to avoid disagreements, especially if in the future the brand will be expensive. Suppose that you are several years sell Windows under the name “Spring outside the window”. You made the brand recognizable thanks to important investments in advertising, the quality of your product and a personal approach to clients, but for some reason did not register. Competitors can get ahead of you, having the trademark on your brand (St.
1484 OF THE CIVIL CODE). On the basis of the acquired exclusive rights they can sell this kind of production called “Spring outside” and prohibit its use. A forced delay in the registration of a trademark may be related to its lack of distinctive character. For this reason, for example, the word mark “1C” (№ 340 505) initially could not be registered. But after the registration and use for some time combined designation (No. 134 503) the name of the “1C” was known, so word mark has acquired distinctiveness.
How to prove the distinctiveness of a trademark, see p. 35 rules for filing and examination of trademark, hereinafter — the rules; p. 1.1 St. 1483 OF THE CIVIL CODE. Another example of the loss of the brand connected with foreign producers, particularly from China, who import the product in Russia and do not care about the protection.
As soon as a brand becomes recognizable in the market, the competitor is in a hurry to register it and make a trademark in the customs register, thereby imposing a ban on the import to Russia of products of the original manufacturer. In practice, such situations are quite common, and ways to protect the victim of the Creator of the brand, unfortunately, are few and more expensive than the initial registration of a trademark. In particular, to fight against aggressive business practices, as described in these two examples, you need to promptly challenge the threat trademarks in the Chamber for patent disputes and in court to prove the right of prior use or unfair competition. It should be noted that registration of a trademark allows you to not only protect your brand, but also to reduce the risk of infringement of the exclusive trademark rights of third parties. If the symbol has passed the examination and was, therefore, infringing someone elses characters were not revealed.
Therefore, the trademark registration must precede major investments in the brand. And because the brand name is often convenient to use the trademark before registration of the company should understand the formal requirements for a trademark, to conduct a preliminary search of trademarks and names, which may in the future disturb you. It would seem that everything is clear — bright came up with a unique name, drew its logo, conducted a search in the trademarks and applied for registration. But there are St. 1483 of the civil code, which stipulates grounds for refusal of registration of the trademark.
State examination checks if your trademark with the existing ones, using concepts such as “similarity to the point of confusion” factor “the introduction of consumer confusion” or “lack of distinctiveness”. And the risk of refusal of registration often lies in the underestimation of the applicants these are generalized statements narrow their understanding. According to the above rules, approved by the order № 482 of the Ministry of economic development of the Russian Federation. Identity of trademarks is the coincidence of symbols in all elements, the exact copy of means of identification (see p. 41 of the regulations).
The similarity to the point of confusion is the Association between a trademark, despite some differences (see p. 42-44 of the regulation). Uniformity of trademarks shows how great the opportunity for the consumer to carry the goods to the same manufacturer (see p. 45 of the rules). Misleading are signs that the rise in the consumers mind the idea of a certain quality of product, its manufacturer or place of origin, which is untrue (see p.
37 of the rules). The lack of clear quantitative criteria of similarity of trademarks can benefit from competitors. Sometimes even quite openly: Image source. FAS.
Image source. Courtesy of the press service of “Tradition” for the article “Fontanka”, in German. “Win shelf”. But even in this obvious, it would seem that the case of oil “Baba Valya” in a survey conducted by the FAS, only 58% of the voting determined the similarity of the packages. A patent attorney from the Respondent even on the basis of the comparative analysis to prove the lack of similarity of packaging to the point of confusion (see the decision of the FAS in the case of Valio (trademarks № 383 792, 445 374; 975 439, 991 381) and “Baba Valya”).
In the following examples, the trademarks have already been registered, but the registration was challenged by the right holders of similar trademarks in the Chamber of patent disputes (PPP): Numerous occasions when, on the contrary, in the Chamber of patent disputes was possible to challenge the refusal to register rejected by the expert FIPS trademark. For example, in the Chamber of patent disputes was able to defend trademarks Philosophy (conclusion), “Kulibin” (conclusion), “Car Japanese” (conclusion). Increases the chance of getting a reliable brand knowledge of law enforcement practices. Once in the “white spots” not covered by our laws, you give yourself over to the will of the waves and lawyers who can interpret the law in your and not your favor.
For example, the question remains the use of anothers trademarks in domain names and contextual advertising. This has been written on the “Habrahabr”. “Someone elses trademark in contextual advertising. Legally or no?” “Collection of judgments. Key words and trademarks”, “is it Always the rights of the trademark owner?”.
Experience shows. The court recognizes that use of trademarks as keywords in contextual advertising leads to confusion of goods or services from consumers. One example. OOO “Byzova.ru” has addressed with the requirement to “amayama Avto” and SP Nikolaev E.
Stop using the registered trademark “bizovo” and the words “bizovo”, “bizov”, “bizov”, “bezovo”, “Byzova” on the Internet. Here is an excerpt from the case n A51−11 605/2013: According to the company “Byzova.ru”, the courts made unreasonable conclusions about what keyword to search for information on the Internet has no individualizing capacity, indicating the corresponding symbols as keywords is for technical purposes and can not lead to confusion of goods (services) and to admit the use of the trademark in the sense of St. 1484 Civil code of the Russian Federation.
The plaintiff believes that the public offer should be that the individualization of the sites is precisely the key words used by advertisers in contextual advertising. In this regard, the use of trademark occurred in the time of the society “amayama Avto” in the annexes to the agreement with the third party disputed the trademark as a keyword to personalize the Internet and promote your website, which led to increase website traffic defendants.
The point puts the review of a third party, “Yandex”. The key word has no individualizing ability even to specific ads, as based on key words it is impossible to identify the specific advertisement, as one keyword can be used for unlimited number of advertisements as same and different advertisers. Keywords are not part of the ad, not included in its contents and is not displayed to users.
Well, since keywords do not contribute to the individualization of goods, and the exclusive right to a trademark when it is used as key words is not disturbed (p. 5) St. 1484 OF THE CIVIL CODE). It can be summarized that the usage of others trademarks as keywords still perceived object relationship is ambiguous.
But the courts often do not satisfy such claims. But the use of anothers trademark as a domain name often have to pay. In simple cases, such cases could be reduced to p. 5) of article 1484 of the civil code.
This happened, for example, in the case № A40−179 336/2016 where the plaintiff was a company ZF Friedrichshafen. The court satisfied the claim on domain SACHS.RU containing trademark No. 791 003 “SACHS” on the basis that the Respondent has “no legitimate rights and interests in domain” he is not the owner of this trademark, as well as “domain does not contain the name or corporate name of the defendant”. So if you want to avoid unnecessary risk — check your domain name in the trademarks database of. But even if you hurry to apply for registration, and found no threat from the similarity of your trademark with other objects of legal protection, you can still expect to get permission of the copyright holder for registration (for p. 4, 6, 9, 10 St.
1483 OF THE CIVIL CODE). Please note that the expert in this case has the right to refuse registration if it considers that the presence of two similar trademarks may introduce consumer confusion. A state fee in case of refusal of registration is not refundable. Therefore, before applying at the stage of development and approval of designation must conduct a full scan for all possible grounds for refusal and for compliance with the requirements of the legislation. The procedure of registration of the trademark is detailed in the civil code (articles 1492-1507) and rules.
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