Identifying the rights holder of a trademark – how to do it and what it is for
According to the Russia Patent and Trademark Office (Rospatent), at least 60,000 applications to register a trademark have been filed each year since 2014. In 2018 this figure reached 76,062.
Every designation can be used by legal entities other than the rights holder if they have a licence or franchise agreement in place. Article 1485 of the Russian Civil Code states that a mark is registered and protected in accordance with Russian legislation and consists “of the Latin letter ‘R’, the Latin letter ‘R’ being in a circumference, the word designation ‘trademark’ or ‘registered trademark’”. It also indicates that the rights holder can choose to place its mark on an item – this inclusion is not mandatory. It may be possible to identify the trademark holder as an item’s packaging often contains a reference to the manufacturer. While in some cases the company directly indicates that it possesses the exclusive rights, in most cases products do not carry this information. This is because integrated manufacture of products is common (ie, the raw materials are obtained by one company, the package is manufactured by another and the product is assembled into a whole by a third company). Multiple entities can be mentioned on the packaging, and it is therefore possible that one of them is not the rights holder – for example, if the designation was used on the basis of the licence agreement.
Another way to identify a trademark holder is through Rospatent’s website, which contains the Register of Trademarks and Service Marks. Although it is available to the public, carrying out a search can be difficult as this requires knowing the item’s trademark or application number. In this case, when the right holder’s search is carried out at the preliminary registration stage, it is advisable to carry out a complete search, which includes searching the database for applications containing similar designations.
Why it is necessary to identify the rights holder
Information about the trademark owner is useful in the following cases:
- before filing an application to register a mark, when the applicant plans to register a designation that is confusingly similar or identical to the protected trademark used to individualise products and services – while such registrations are generally prohibited, there are exceptions (eg, where the applicant receives a letter of consent from the current rights holder to register the designation);
- when a company wishes to use another entity’s registered trademark for homogeneous products and has concluded a licence or franchise agreement with the holder of the exclusive rights;
- if a legal entity has decided to obtain the protected trademark and become the exclusive holder of the designation by concluding an alienation agreement with the original owner;
- when a rights holder turns to a company with a proposal to conclude the licence agreement for the use of the designation belonging to it – it is advisable to identify the rights holder of the trademark independently in order to confirm the authority of the entity that has offered to carry out the transaction; and
- if a company uses a designation before it is registered because it does not want to delay the manufacture and the sale of the product. If the designation in question is similar to a mark that is already registered then it is possible to claim for termination of its use. It should be noted that these kinds of claim may also be addressed to holders of a prior registered designation. Despite the specialists’ skilled work in carrying out trademark examinations, potentially confusing designations can end up being registered. Russian legislation stipulates a pre-court procedure for settling such disputes. Thus, a rights holder is entitled to address the alleged violator with a request to terminate its actions and may claim for monetary damages. In such cases, identifying the trademark owner means understanding whether the claims are legitimate or whether they are illegal machinations or fraud.
This is an insight article whose content has not been commissioned or written by the WTR editorial team, but which has been proofed and edited to run in accordance with the WTR style guide.
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10