Commercial entities can use various ways to identify their products and services, to market them and to increase their recognition in the eyes of consumers. To this end, trademarks and service marks can be earned and registered, which the company can use to promote its brand. The legal protection regime allows the use of these objects for the company's own needs, and provides protections against possible infringement.
Rules for using a trademark
Until a company registers a trademark through Rospatent, it will not be able to successfully assert any claims against competitors who would use a similar object to label their products. From the moment of registration and the issuance of a certificate of protection, a regime of legal protection and a set of exclusive rights will arise, which will allow:
use the designation for the production and sale of own products, brand promotion through advertising and marketing actions, formation of corporate style and documentation;
to transfer the rights to trademarks under assignment or licensing agreements, within the franchising agreement;
to take any available protection measures in case of violation of exclusive rights by others.
The certificate is issued for 10 years, and the company can extend this term an unlimited number of times.
The legal protection regime can be established not only within one country, but also internationally. For this purpose, it is possible to obtain a registration certificate in individual foreign countries, or to take advantage of the Madrid system - with a single application it is possible to obtain protection in several countries at once.
The legislation of the Russian Federation and international acts stipulate the following rules for the use of a trademark:
the protection regime will apply to the classes of products according to the Nice Classification, which the company will indicate in the application for registration of the trademark - for other product groups, not indicated in the application, the designation can be used and registered by other entities;
while the certificate of protection is valid, only the right holder may give consent to the use of the designation by other persons - this permission of the right holder may be expressed in the form of agreement of cession or license agreement;
the use of a trademark without the consent of the right holder is a violation of the law, which may entail civil, administrative or criminal liability.
The company is obliged to start using the trademark within 3 years after registration. Violation of this legal requirement may lead to the compulsory cancellation of the protection regime if such a demand is made by any interested person.
Commercial use of a trademark
Trademarks belong to the objects of commercial property, so any options for the transfer of rights can only be carried out on a reimbursable basis. Exclusive rights have a specific value, which is reflected in the accounting and tax reports. The following rules apply to the disposal of exclusive rights:
under the assignment agreement the company may sell the exclusive rights to the designation, after which it will lose the protection regime;
for temporary transfer of rights the license agreements are executed, which may provide for the territory of legal use of rights, the order and form of remuneration, other conditions of cooperation;
agreements on the transfer of rights to designations must be registered through the patent services, otherwise they will not lead to legal consequences.
If the company does not plan to use the trademark in future activities, the sale option would be the best option. The amount and form of remuneration can be determined by the parties themselves, or by contacting an independent appraiser.
The option with registration of licenses gives significantly more opportunities for the company, as it preserves the exclusive right to the trademark. Depending on the intentions of the right holder, the following methods of temporary transfer of rights to the designation are allowed:
the company may issue an exclusive license, under which the temporary right of use will belong to only one entity;
a variant with the issuance of several licenses at once is allowed, including the distinction by territory of use, by the range of products;
in the registration of license agreements the company may retain the right to use the trademark for their own needs;
one of the conditions of temporary transfer of rights may be a permission to sublicense - in this case, the temporary holder of a trademark can transfer the rights to it to other persons even without additional coordination with the original right holder.
Gratuitous transfer or donation of trademark rights is not allowed. Such agreements will not be registered with the Russian PTO, and an attempt to hide the donation under other types of transactions will result in claims and fines from the tax authorities.
Illegal use of a trademark
Use of the trademark by others may only be made with the permission of the right holder. Any violation of exclusive rights will be punishable under the norms of the Civil Code of the Russian Federation, the CAO RF or the Criminal Code of the Russian Federation. Let's highlight the most common types of violations, which the right holder may face:
marking products with another's designation;
use of another's designation to mislead consumers, provision of knowingly false information about the manufacturer;
violation of competition rules;
violation of the terms of license agreements, including exceeding territorial limits, failure to comply with the terms of payment of remuneration, etc.
Detection of violations may occur as a result of independent actions of right holders, or by applying to law enforcement agencies or other authorized agencies.
The owner of a national or international trademark certificate has the following powers to protect exclusive rights:
making written demands to the infringer - to prohibit the unlawful use of the trademark, to withdraw infringing products from circulation, to compensate losses or to pay remuneration;
filing claims in court - for early termination of license agreements, for recovery of damages or punitive damages;
appeal to law enforcement authorities to bring administrative or criminal liability - such punishment will follow for the most serious violations, for example, for causing major or especially major damage.
In any variant of liability the right holder can demand compulsory confiscation of counterfeit products, a ban on the production and sale of such goods. When appealing to the court, it is possible to recover actual losses or to obtain punitive compensation. The amount of compensation is determined in the range from 50 thousand rubles to 5 million rubles, or in double the value of counterfeit products or the evaluation of the exclusive right.
Our company offers a full range of services to protect the interests of trademark owners. We will provide protection in the following areas:
We will provide consulting support for the use, disposal or protection of exclusive rights;
Draw up all necessary documents for the transfer of rights - assignment contracts, license agreements;
We will provide support in protection of exclusive rights from infringement and represent our interests in courts and other authorities.
With the help of our specialists, you will be able to bring the offenders to justice and recover the maximum possible amount of damages and compensation. You can find out more about all the conditions of cooperation at the consultation, which you can get by phone or through the feedback form.