On October 12, 2023, the consultation session on intellectual property for exporters is held
A Belarusian manufacturer of confectionery products, owning a Russian trademark, the verbal part of which reproduces his corporate name, but having missed the deadline for its renewal in the Russian Federation, was confronted with the registration of a similar trademark in the name of a Russian manufacturer of similar products during this period. The filed opposition against granting legal protection to a trademark in the name of a Russian manufacturer was not satisfied by the Chamber of Patent Disputes of Rospatent. Wanting to establish a franchise network for the sale of his products, a Belarusian manufacturer turned to a consulting center with a question about what could be done to return the trademark to the Belarusian manufacturer from a Russian manufacturer.
Counter-questions revealed additional information related to the actions of the Russian entity.
The answer was based on the norms of Russian legislation in the field of trademarks and fair competition.
Since the opposition against granting legal protection to the trademark in the name of the Russian manufacturer of confectionery products was based only on one reason – non-compliance of the trademark registration with the requirements of paragraph 8 of Article 1483 of the Civil Code of the Russian Federation (Paragraph 8 of Article 1483: No trademark registration shall be granted for uniform goods to designations identical or similar to the degree of confusion to a company name or a commercial name (specific elements of such names) protected in the Russian Federation …, to which rights had emerged owned by other persons in the Russian Federation prior to the priority date of the trademark being registered), then the Belarusian entity has at least one more ground for filing an opposition with the Chamber of Patent Disputes.
In particular, taking into account the fact that the Russian manufacturer imposes a license agreement on the Belarusian manufacturer of confectionery products, there is a possibility to examine the presence of unfair competition signs in his actions. If the totality of such signs is determined, the Belarusian applicant will be able to file an opposition in accordance with subparagraph 6 of paragraph 2 of Article 1512 of the Civil Code of the Russian Federation. In accordance with this norm, the granting of legal protection to a trademark may be challenged and deemed invalid in full or in part during the entire period of validity of the legal protection, if the actions of the right holder related to the granting of legal protection to a trademark or another trademark similar to it to the degree of confusion are declared in accordance with the established procedure as abuse of right or unfair competition.
