Нарушения в области товарных знаков в предпринимательской деятельности

Panin Andrei Aleksandrovich,
Student at the Russian State University of Justice

Scientific consultant Osadchaya Olga Nikolaevna,
Associate Professor at the Foreign Languages Department,
Russian State University of Justice, PhD in Philology
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Trademark violations in entrepreneurial activity

Abstract. The purpose of this work lies in the area of special features in the field of intellectual property. The article analyses the concept of a trademark as a means of individualization, and also reveals ways to protect intellectual property rights. Issues of abuse of right and unfair competition in the field of intellectual rights are considered. As a result of the study, major violations in the field of trademarks were identified, various defects in the procedural part of the legal mechanism regulating the use of trademarks were fixed. It has been established that the exclusive right to use a trademark as an object of intellectual property can be exercised to be protected against various violations in business activities.

Keywords: trademark, exclusive right, means of individualization, violations, abuse of rights.

Means of individualization help to attract the attention of customers to the product and make it easily recognizable. Among others, Article 1225 of the Civil Code of the Russian Federation [4] enshrines the trademark as a means of individualization protected by domestic law. Under a trademark is understood a designation serving for individualization of goods of legal entities or individual entrepreneurs, to which the exclusive right is recognized (article 1477 of the Civil Code of the Russian Federation) [4]. In accordance with Article 1482 of the Civil Code of the Russian Federation [4], trademarks may be expressed by means of verbal, pictorial, volumetric and other designations (combinations), regardless of colour or colour combination. The right holder of a trademark is a person in whose name this mark is registered in the State Register of Trademarks and Service Marks of the Russian Federation.

The basis of legal regulation of a trademark is the Civil Code of the Russian Federation, as well as departmental acts. Referring to Article 1479 [4] of the Civil Code will help to determine the effect of the exclusive right to a trademark in Russia:

1) if the exclusive right to a trademark is registered by the federal executive body for intellectual property of the Russian Federation (national way), this right will be valid only on the territory of the Russian Federation;

2) extension of the exclusive right to a trade mark is possible if it is registered under the international system.

Despite the fact that the Civil Code imperatively establishes the extension of the exclusive right to a trademark in space, violations in this direction still occur. It is worth saying that the illegal use of identical trademarks most often occurs in two areas:

1) for the purpose of attracting customers (advertising in the broad sense);

2) for labelling and transportation of goods.

It is crucial to disclose these points in more detail. Illegal use of a trademark, to which the subject has no exclusive right, for the purpose of attracting customers is possible by placing it (identical trademarks) on signs, documents, information stands, etc. without the consent of the right holder. Thus, in case № A17-10117/2016 OJSC “Ivanovo Heavy Machine-Tool Plant” (hereinafter – the plaintiff) filed a lawsuit against LLC “Ivanovo Machine-Tool Plant” (hereinafter – Respondent-1) and LLC “STAN” (hereinafter – Respondent-2) to impose the obligation to stop using the trademark and to recover compensation for infringement of exclusive rights to the trademark. The defendants used the trademark in advertising without the consent of the right holder, i.e. the plaintiff. The court considered the defendants' actions as an independent way of using the object of exclusive rights, violating the plaintiff’s right [1].

Disclosing the second sphere of unlawful use of trademarks, it is essential to consider the illegal labelling of products with an identical trademark without the consent of the subject who has the exclusive right to this mark (counterfeit). Basically, such infringement allows not only to sell goods more efficiently, but also to transport them between countries (parallel import). One of the examples of court practice is case № A40-162262/20 on the claim of Medtronic Inc (Medtronic Inc, USA, hereinafter – the plaintiff) against V-D-M LLC (hereinafter – the defendant) for recovery of compensation for infringement of exclusive rights to trademarks. The court stated that the defendant’s actions violating the plaintiff’s rights were manifested in the sale of goods imported into the territory of the Russian Federation without the permission of the right holder of the trademarks (the plaintiff) with which the goods were labelled.

Along with the violations outlined above, there is an illegal use of a designation similar to the extent of confusion with another's trademark. Confusion occurs with the simultaneous action of the following conditions (paragraph 3 of Art. 1484 of the Civil Code of the Russian Federation) [4]:

1) the right holder did not consent to the use of a trade mark (sale of goods, advertising, fixing in the domain name and on the Internet) similar to his (par. 1, 2 of Art. 1484 of the Civil Code of the Russian Federation) [4];

2) the designation similar to the registered trademark was applied to the goods for individualization of which the trademark is registered, or homogeneous goods, i.e. the buyer could assume that these goods belong to the same manufacturer;

3) the result of such use is a likelihood of confusion. The fact of infringement is established when there is a danger of confusion by ordinary consumers of the relevant goods (paragraph 162 of the Resolution of Plenum of the Supreme Court of the Russian Federation of 23.04.2019 № 10) [5].

The illustration of confusion can be found in the definition of the Supreme Court of the Russian Federation of 20 January 2023 № 310-ES22-28445 [2] on refusal to accept the cassation appeal in the case № A35-8338/2021, the essence of which is as follows:

The individual entrepreneur K. filed a claim with the Arbitration Court against the individual entrepreneur D. for prohibition of illegal use of the trademark “SELFBOOK”. According to the plaintiff, the defendant illegally used the registered trademark without the consent of the right holder (the plaintiff). The court concluded that the word designation “SELFbook” used by the defendant is identical to the plaintiff’s trademark, as it coincides with it in sound (phonetic) and semantic (semantic) elements, which creates a danger of real confusion in the eyes of the consumer and violates the rights of the plaintiff.

In addition to infringement of the exclusive right to a trademark, bad faith is the behaviour of abuse of right, for example patent dealers / trolls / holdings. The concept of “patent dealer” is new and refers to individuals or entities that make money from patent lawsuits [3]. Their business model is as follows: a patent dealer finds an unregistered trademark, registers it and applies to the court with a lawsuit against the entrepreneur from whom this mark was found.

In judicial practice such cases can be found in significant quantities, for instance, case № 310-ES15-12683, A08-8801/2013c [2]. The courts of first and appellate instances found: CJSC “ADF VA “MIR” (hereinafter – the plaintiff) is the right holder of the trademark “Festive” in respect of goods of class 30 of the MKTU (ice cream). The claim states that the defendant violated the plaintiff’s exclusive right to the trademark, as it used the word element: ice cream “festive” in the production and sale of ice cream.

The courts of first and appellate instances did not satisfy the claims, stating that the plaintiff did not use the trademark for its intended purpose from the moment of registration of the disputed trademarks and until the moment of appeal to the court. The Judicial Board of the Supreme Court of the Russian Federation pointed out that the plaintiff's behaviour is considered bad faith if the trademark is used only for the purpose of prohibiting third parties from using the relevant designation.

To sum up, violations in the field of trademark use may occur through the use of an identical trademark or through the use of a mark confusingly similar to another’s trademark, as well as in the case of bad faith behaviour. The infringed right can be protected by any means provided for by Article 12 and paragraph 1 of Article 1252 of the Civil Code of the Russian Federation.

In conclusion, it should be highlighted that legal relations in the sphere of use of trademarks are developing and becoming relevant. Nevertheless, there are still certain risks, which can be connected with the imperfection of legal regulation, generating, for example, patent dealers. More attention should be paid to such an advanced sphere as the use of means of individualization, including trademarks.

Литература

1. Electronic Justice. URL: https://kad.arbitr.ru/Card/517645b3-b5e2-4da2-9068-60b429d24c22 (дата обращения :20.12.2023).

2. Opredeleniye Sudebnoi kollegii po ekonomicheskim sporam Verkhovnogo Suda RF [The Definition of the Judicial Collegium for Economic Disputes of the Supreme Court of the Russian Federation]. URL: https://base.garant.ru/71310942/ (дата обращения: 12.01.2024).

3. Shurtakov K. V. “Patentniye trolli”: analiz zarubezhnoi i rossiyskoy praktiki [“Patent Trolls”: Analysis of Foreign and Russian Practice] // Economics of Science. 2016. №4. URL: https://ecna.elpub.ru/jour/article/view/75/75 (дата обращения :10.01.2024).

4. The Civil Code of the Russian Federation. URL: https://www.consultant.ru/document/cons_doc_LAW_5142 (дата обращения: 12.12.2023).

5. The Resolution of Plenum of the Supreme Court of the Russian Federation. URL: https://www.consultant.ru/document/cons_doc_LAW_323470/ (дата обращения: 11.01.2024).