Generally trade mark use does not raise questions. The law (Article 1484) simply states that the trade mark may be used on goods, in documents, in advertisements and other material. When the issue of non-use is examined by courts, these provisions of the law are compared with what happens on the market. For the purpose of proper use, the law (Article 1486) also states that a trade mark may be used by the trade mark owner himself as well as by other people under the control of the trade mark owner. Control should be understood broadly. This is not only a licence but any transaction or chain of transactions where the trade mark owner is aware of the use by other people and may intervene if necessary. This is a relationship pattern that has been adjusted by judicial practice and proved in many cases.
Sometimes this matter takes a new and unexpected turn. There is a combined trade mark TSAR, No 456266 for meat products in Class 26.
A company brought an action against the trade mark owner in the IP court for non-use of the trade mark. The court accepted the claims and cancelled the trade mark for most of the products. The trade mark owner appealed against the judgment in the cassation court. The trade mark owner argued in the cassation court instance that he had submitted to the first instance court all evidence proving the use of the trade mark. According to him the trade mark was used, under his control, by a subsidiary company. Furthermore, the claimant did not prove that it was engaged in the same business. This circumstance is, however, secondary in the case that we describe. The businesses of both companies partly crossed which is why the trade mark was cancelled in part. What is more interesting is that the use of the trade mark was subjected to meticulous scrutiny.
The cassation court noted that according to the law, a trade mark should be used in the same way as it is registered, or with such changes that it should remain recognisable by consumers. If the trade mark owner uses a similar or even confusingly similar trade mark but consumers do not perceive it as the same trade mark as registered, this use should not be taken into account when the question of non-use is examined by the court.
The appeal of the trade mark owner did contain some arguments to the effect that the trade mark had been used. In fact, the trade mark (as a word and thus part of the combined trade mark) was used in contracts, payment orders and invoices. The Praesidium of the IP Court agreed with the findings of the first instance court and noted that the trade mark should have been used as registered. This is a combined trade mark while only a word element in standard script had been used in the documents.
In general, when proving the use of the trade mark in non-use cases, trade mark owners are advised to submit all kinds of documents including those mentioned above as well as advertisements, customs declarations and other material. This advice is true in relation to word trade marks but owners of combined trade marks may find themselves disadvantaged in a similar situation. Hence they should indicate the trade mark as registered in documents as well as instructing their licensees and distributors to do the same in order to be fully prepared for a possible non-use action.
When a trade mark is not used by the trade mark owner himself but by his partners in business through a chain of contracts, it is absolutely essential that the trade mark should be shown in all the documents exchanged by the parties and that the trade mark owner should control or at least be aware of the whole chain of distribution and be able to prove it.
Vladimir Biriulin |
Gorodissky & Partners
Russia 129010, Moscow
B. Spasskaya Str
25, stroenie 3
Tel: +7 495 937 6116 / 6109
Fax: +7 495 937 6104 / 6123
