Approaches to protecting and defending “first-to-file” and “first-to-use” trademarks

There are opposing concepts regarding the determination of when the legal protection of a mark emerges – “first to use” and “first to file”.

In the Russian Federation and other countries of the Roman-German legal family, the most common “continental” “first-to-file” approach prevails, according to which the basis for the emergence of legal protection is registration , and its validity begins from the date of filing of the corresponding application.

According to Article 1494 of the Civil Code of the Russian Federation, the priority of the trademark is established based on the date of filing the trademark application with the Federal Executive Authority for Intellectual Property. The priority of the mark according to a divisional application (paragraph The priority of the mark according to a divisional application (paragraph 2 of article 1502 of the Civil Code of the Russian Federation) is established depending on the date of filing of the initial application and provided that there is a right to an earlier priority according to the original application – according to the date of this priority.

In contrast, the legal orders of common law countries adhere to ‘first to use’ – whereby the right to the mark arises after the name begins to be used which meets the conditions of protectability. For example, in Canada or the United States, trademarks are granted legal protection depending on their actual use in a trade or in the provision of services (depending on the situation – for example, according to sec. 1 (a ) or (b) of Lanham law – either in connection with current use or in connection with a good faith intention of such use, which will be confirmed by evidence in the future). Thus, during the implementation of the “first user”, the priority of the mark is not guaranteed by the actual filing of the application, but by the actual use.

However, despite the seemingly unambiguous enshrinement of the “first to file” principle in the Civil Code of the Russian Federation, while granting legal protection to trademarks, one can notice an indirect manifestation of the “first to use” approach ” in the norms of the Civil Code of the Russian Federation, as well as in the practice of law enforcement.

For example, in accordance with paragraph 3 of article 1483 of the Civil Code of the Russian Federation, state registration as a trademark is not allowed with respect to designations that are or contain elements that are false or likely to mislead a consumer concerning one of the product or its manufacturer, which implies both preventing the registration of the names concerned and invalidating this registration if it has taken place. One of the most common instances of misleading consumers is potential confusion between manufacturers operating in the market under similar designations.

In accordance with subparagraph 6 of paragraph 2 of Article 1512 of the Civil Code of the Russian Federation, the granting of legal protection to the trademark can be challenged and invalidated if the actions of the right holder related to the granting of legal protection to trademark or other confusingly, have been recognized as an abuse of rights or unfair competition (which, in turn, may involve a wide range of situations, in particular, and competition to the designation fulfilling the functions of a means of individualization).

Articles 14.2, 14.4, 14.6 of the Law on the Defense of Competition also provide, directly or indirectly, possibilities of restricting the holders of trademark rights in the context of competition for individualizing designations (including those which have appeared before the priority date of the mark), as long as they contain grounds for establishing unfair competition such as deceptive, confusing, unfair registration itself and use of the mark.

Repressive practice, in turn, also helps to identify and confirm the factors that may lead to the restriction of rights holders’ possibilities. These factors may be the emergence of special individualizing properties to the particular designation due to its massive application in commercial activities by a number of people, and the acquisition of an exclusive right to such designation by a right holder .

This model implies the intention of the right holder to take advantage of the recognizability of the designation, in which often immediately after the registration of the mark, he takes legal action against competitors.

Thus, the designation that has acquired a distinctive ability as a result of the long-standing efforts of various (and sometimes many) manufacturers brings unreasonable benefits to an economic entity, and a ban on this can be called a high-profile implementation of the “Anglo-Saxon”. “first to use” principle.

As examples, we can cite the following cases of challenging the decisions of the antimonopoly authority with a contrary result, but applying the concept of benefiting bona fide users of the individualizing name:

  • The holder of the “HANSOL” trademark right did not dispute the recognition of the registration of his trademark as unfair competition: at the time of the filing of the trademark application, the homogeneous product bearing the above name had been sold for a long time to the Russian market by various market players, as a result of which the brand became widely known to consumers of this product and was directly associated with this product.
  • In another case, the plaintiff succeeded on the contrary in having the decision of the Federal Arbitration Tribunal annulled, by which its actions with a view to the registration and use of the mark had been recognized as unfair competition – before the date of registration by the applicant “Antigrippin” as a trade name for a medicinal product in 1996 and before the priority dates of similar marks (2007, 2009), the name had been widely used by pharmacists and doctors, pharmaceutical companies , while not related to a specific composition and manufacturer, and it was related to the drug manufactured by the pharmacy. The designation had appeared heavily in mass media dealing with medical topics and even in regulatory literature.

According to the explanations of Sergey Zuykov (the managing partner of Zuykov and Partners, the patent attorney of the Russian Federation, a Eurasian patent attorney), the “first to use” approach is also periodically used in judicial practice Russian on a violation of the exclusive right to the trademark, which often occurs in cases concerning designations that can be generically called “Soviet”.

This is clearly seen in the case examples concerning the prohibition of use of the marks and/or the recovery of appropriate damages, often using the patterns of abuse of rights:

  • In the case, which went through two rounds of litigation and reached the Supreme Arbitration Court of the Russian Federation, the television company unsuccessfully tried to ban the magazine from using the designation “Chelovek i Zakon”, which was similar to the brand; as a result, the Supreme Arbitration Court of the Russian Federation dismissed the claim, as priority was given to trademarks after the registration of the defendant’s mass media in 1990 and the start of publication of these mass media , whose name coincided with the plaintiff’s trademarks, as early as 1971. The court, although referring to the standards on the priority of the mark, however considered that the actions of the plaintiff could be qualified as an abuse of rights due to the proven activity of the defendant before filing of the claim by the plaintiff.
  • In another case dealing with the defense of the exclusive right to the trademark and the recovery of damages, the courts also dismissed the claim on the grounds that the manufacturer-defendant manufactured the homogeneous products under the name constituting a verbal element of the mark “Malvina” 13 years before the priority date of the mark.
  • In 2006, the Supreme Arbitration Court of the Russian Federation, in the resolution on a particular case concerning the designation “Spartak”, stated an obiter dictum, “… if the use of the designation by the subject of economic activity began and became known in circulation before the priority date of the mark, such use cannot be recognized as an infringement of the exclusive rights in the mark.
  • In 2019, the Intellectual Property Court rejected the application for the defense of the trademark “Detskiy” with the priority of 2016 (concerning the cream, the design of which was developed as early as 1955), because it established the fact of using the appellation contested by the defendant well before the registration of the mark, as well as the fact that it had acquired a fairly wide popularity among consumers compared to the manufacturer-defendant.

Thus, the formal adoption of the “first-to-file” approach in the Civil Code of the Russian Federation does not completely exclude the partial and one-time application of an opposite principle – at least when implementing prohibition of abuse of rights and unfair competition.

Originally published in Global Brand Review.

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