First to file and first to use – navigating Russia’s blended system

There are two concepts by which the start date of a trademark’s legally protected status is determined – first to file and first to use. Russia uses the first-to-file system. In this, as the name suggests, legal protection begins at the point of filing.

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

 By contrast, common-law countries adhere to first-to-use principles, according to which, the right to the trademark emerges after designation is first used in such a way that meets protectability conditions. For example, in Canada or the United States, marks are assigned legal protection based on when they were first used.

However, despite the enshrinement of the principle of first-to-file in the code, some of its norms – as well as general enforcement practice – are more in keeping with a first-to-use approach.

For example, according to Article 1483(3), a registration shall not be allowed in respect of designations being or containing elements that are false or capable of misleading a consumer with regard to a product or its manufacturer. This entails both preventing the registration of the relevant designations and invalidating any such registrations that have already been granted.

In accordance with Article 1512(2)(6), legal protection to a trademark may be challenged and invalidated, if the rights holder’s actions are an abuse of the right or qualify as unfair competition.

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

In addition, Russian law enforcement practice also allows third parties to identify factors that are likely to restrict their opportunities. Such factors include additional individualising properties that emerge in relation to a particular designation as a result of its mass application in business activities and often due to the efforts of various (and sometimes numerous) manufacturers. Restricting this benefit to a single rights holder would be manifestly unfair

A prohibition on this practice can be seen as a mediated implementation of the Anglo-Saxon principle of first-to-use.

In the next week’s article, we will consider several cases that demonstrate this.