A trademark without registration is not considered to be the intellectual property of the company-owner and is not subject to alienation, licensing agreement or presentation in banking transactions as collateral. Unconfirmed formal rights to the brand does not allow its safe use in documents, promotions, advertising, labeling of goods.
In this situation, the developer also does not have the right to prohibit the use of his brand by other persons and entrepreneurs. An unprotected trademark can be used by any unscrupulous competitor, it becomes problematic to prove a priority right to it.
If you have developed a logo, spent material resources on advertising, earned yourself credibility among consumers and suddenly a company with a similar name appears on the market and uses your trademark, you can bring the offender to responsibility for illegal use of a trademark by court decision. You can force him to abandon the production and sale of counterfeit products, change the name of the company, as well as pay you compensation from 10 000 to 5 million rubles.
Infringement of trademark rights is defined by three conditions:
Some infringers use the same name of the mark, and in this case the infringement of your rights, as they say "on the face". In this category also fall such cases as changing the register, translation of the name, adding meaningless elements to it. For example, BonAgua to bonagua, BonAgua to BonAgua, BonAgua to BonAgua limited. If your trademark is BonAgua, you can claim damages. For an infringement of an exclusive right, it is enough to use not the entire designation, but just a similar one, including a literal translation of the mark.
When establishing an infringement of a right, you must also take into account the types of activities covered by your trademark. If you sell clothes, and another company with a similar name sells fruit, in this case it does not violate anything, because the type of activity is different. But it is necessary to pay attention to the list of goods and services that protects your trademark, the classes of the Nice Classification. The trademark certificate contains an appendix in which the entire list of goods/services is indicated. In the absence of a paper certificate, all information can be found in the Register of Trademarks.
In this case the sign of infringement is not the full coincidence of the type of activity, but its homogeneity. For example, the categories of shoes and clothing, vegetables and fruits are similar in terms of goods sold and services provided. Therefore, you should choose the most precise and detailed classes of the Nice Classification of Goods, so that, if necessary, immediately prove the homogeneity of the goods. For this purpose, the best option when registering a trademark would be to contact lawyers in this area of law.
After determining the similarity of the name and the homogeneity of the activity, it is necessary to find out whether your trademark is profitable to the infringer. If a person has created a product for his own use, he does not violate the exclusive right, but if he sells this product, it means he is using someone else's trademark. In this case, it does not matter whether the offender knew that the designation belongs to you or not, the important thing is the fact - the use of the trademark. This can be advertising, placement of the mark on labels, brochures and social networks.
Registration of a trademark in Rospatent is the initial stage of its protection. After obtaining the Certificate, the right holder will be able to successfully protect its rights in case of disputes and infringements.
Methods of trademark protection, which are used in legal practice:
Protection of intellectual property and its success depends on the validity of the plaintiff's claims, supported by strong documentary arguments.
If there is a trademark certificate, other companies are not allowed to use the trademark without the special permission of the right holder. Otherwise infringers may be held civilly, administratively and criminally liable.
According to article 1515 of the Civil Code of the Russian Federation, the owner of a registered trademark has the right to claim payment under one of the following options if unlawful use is detected:
According to Article 14.10 of the Administrative Offences Code of the Russian Federation, the administrative sanctions applied to the infringers include fines for illegal trademark use
In the case of production for the purpose of sale or sale of counterfeit products, the fines are increased:
A repeated offence of using a trademark or causing damage to the right holder on a large scale will entail criminal liability under Article 180 of the Criminal Code of the Russian Federation.
The punishment shall be the following: a fine from 100000 to 300000 rubles or in the amount of the wages or other income of the convicted person for the period up to two years, or compulsory works for the period up to four hundred and eighty hours, or correctional labor for the period up to two years, or compulsory works for the period up to two years, or deprivation of freedom for the period up to two years with a fine of up to eighty thousand rubles or in the amount of the wages or other income of the convicted person for the period up to six months.
Under aggravating circumstances (for example, committing a crime by an organized group) the fine may increase to 1,000,000 rubles or in the amount of the wages or other income of the convicted person for a period of three to five years, or by compulsory labor for up to five years, or imprisonment for up to six years with a fine of up to five hundred thousand rubles or in the amount of the wages or other income of the convicted person for a period of up to three years or without such.
If you are convinced that your exclusive right to a trademark is being infringed, you need to start collecting evidence. The better the evidence, the more likely it is that the court will rule positively. It is impossible to know in advance which of your arguments will be more complete and convincing to the judge.
You can buy a product and keep a receipt with the designation, take pictures of the sign or the store inside, take screenshots of the site, pages in social networks. The latter should be certified by a notary, as at the time of the trial, the offender can delete the site.
After collecting the maximum amount of evidence, a claim should be sent. It is drawn up in free form and without it the court will not start the proceedings. In some cases the offender voluntarily fulfills the requirements of the rights holder and the case does not come to court.
In the claim it is necessary to specify:
You can draw up a claim yourself, but a qualified lawyer will be able to draft it so that the infringer wishes to contact you as soon as possible and not to bring the case to trial. He can pay for his services himself - this should be specified in the claim itself. It is sent by registered mail to the legal address of the offender, which can be obtained from the Unified State Register of Legal Entities. It is necessary to make an inventory of attachments and keep a receipt for payment - these documents are attached to the claim.
According to Russian law it is possible to go to court after the deadline of 30 days from the moment the claim was sent. During this period the infringer may contact you and wish to settle the dispute amicably by fulfilling all your conditions.
Protection of trademark rights presupposes the participation of state authorities, since the unfair competitor violates the law on advertising and misleads the consumer. You can apply to the Federal Antimonopoly Service, the police and Rospotrebnadzor by filing a corresponding application.
The FAS monitors fair competition and the legality of advertising. If a company uses someone else's designation, the right holder will receive less profit from the sale of its goods, and can also be damaged business reputation. The antitrust authority will file an application to the court against the offender, the result of which will be a fine.
One company uses someone else's trademark and thus misleads the consumer, here comes to the protection of Rospotrebnadzor. After the inspection, it sends the case materials to the court, which holds the offender administratively liable. As a result, the company will pay a fine, and the equipment and materials will be confiscated.
The police check the offender for the absence of corpus delicti in his actions.
It is also possible to protect your trademark on the Internet using social networks, advertising operators and domain registrars. You can complain to the administration of the social network or advertising platform and the infringer's page will be blocked at the request of the right holder.
If in the above mentioned cases the protection of the exclusive right is performed on the basis of an ordinary complaint with the full list of reasons for blocking, the domain registrar blocks it only by court decision. It is necessary to prove the degree of similarity and confusion between the trademark and the domain, its impact on the reputation and profits of the company, the homogeneity of the goods offered. In this case it is also better to contact a lawyer to accurately take the domain from the offender.
If the offender has not contacted you within 30 days to settle the dispute amicably, you can go to court. You need to draw up a statement of claim and clearly state your requirements in it. You can demand:
The exclusive right is protected in arbitration courts. An appeal is heard by the Court of Appeals and a cassation by the Court of Intellectual Rights. For a positive outcome of the case, it is necessary to prepare a sufficient evidence base, which the court will pay attention to while making a decision.
Receiving a claim is not a reason to panic, don't rush to pay compensation immediately and destroy your goods. You need to thoroughly understand the situation, for this purpose:
Of course, the rights holder can find the violation on their own, they can apply to law enforcement, customs and other agencies that monitor the trafficking and movement of products on the territory of Russia. But the specialists of Pervoistok Company will reveal and repeat facts of violation of your exclusive rights for trademarks on the legislative level. We will represent your interests in court and other authorized bodies and will draw up all necessary documents to bring the infringers to responsibility.
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