What can an entrepreneur do when he registers his trademark

The Alpina Publisher publishing house published the book “Stolen? Punish!" — on the protection of intellectual rights of entrepreneurs and creative people. It was written by lawyer Aleksey Bashuk and author of the bestsellers Write, Shorten andClearly understood» Maxim Ilyakhov. We publish an excerpt from the chapter “Brand Protection” about why entrepreneurs need to register their trademark at all and what is the use of this.

Prohibit competitors from using their designation

If someone violates the exclusive right to a trademark, the right holder will be able to recover compensation from the infringer, force him to rebranding and destroy counterfeit goods - goods that have been marked with a trademark. The judicial system will help the copyright holder in this.

In addition to the courts, there is also a whole arsenal: a statement to the police, to the FAS, an appeal to Rospotrebnadzor, a complaint to a domain registrar, administrations of search engines and social networks. All this is necessary in order to remove a competitor from the market who decided to cash in on your trademarks.

The amount of compensation can be calculated in different ways: any amount from 10 thousand to 5 million rubles, double the cost of a license or double the cost of counterfeit goods.

A specific amount in each case determines the court: five million is rare, and several hundred thousand - all the time.

St. Petersburg, 2018. The owner of the PILKI trademark for manicure salons filed a lawsuit against the Zolotaya Pilka salon network and demanded compensation - 5,000,000 rubles. In confirmation of the similarity of the designations, the plaintiff attached the conclusion of an expert - a patent attorney. In the end, the court agreed with the copyright holder. All five million, of course, were not recovered, but the court ordered the Golden File to pay 1,000,000 rubles, 500,000 rubles for each salon.

The trick of trademarks is that for their violation it is possible to recover not just damages, but compensation. For comparison: for violation of the right to brand name only damages can be recovered, and they need to be considered and proved. How much money exactly did the Ecobatonia bakery make less money from the appearance of ECOBATONIA in a neighboring city? God only knows. Calculating and proving damages from illegal use of a brand is an almost impossible task.

But with trademarks, the story is different: the amount of compensation does not need to be proven. It is enough to roughly justify it, and then the court will decidehow much to charge. Therefore, Ecobatonia writes lawsuit, raises a finger in the air, waits a couple of seconds, and then prints in a neat handwriting: "Million". Even if the judge exacts not a million, but 500 thousand - well, okay. […]

It must be said that trademark lawsuits should not be viewed as a way to make money. Here as with copyright: the task of compensation is to restore the position of the right holder.

On the one hand, the copyright holder does not have to prove the calculation of compensation, on the other hand, he must justify it. The better the calculation is justified, the more they will be charged, but the final decision is up to the judge. […]

Protect yourself from lawsuits from sudden copyright holders

Imagine that the agency "Performator" did not register a trademark - it just opened. We started working, spent money on corporate identity, and slowly bought advertising. And then it turns out that another “Performator” has been working somewhere in Moscow for a long time, which registered this name as a trademark 10 years ago.

Maybe the "Performers" will never know each other. But it may also happen that in a couple of years they will collide and one of them will have to fork out.

Of course, a completely made-up word like “Performer”, “Yandex” or just a long unusual name like “Chinese Pilot Zhao Da” is unlikely to be invented by anyone else - although anything can happen. But the shorter the name and the closer it is to the usual vocabulary words, the more likely it is that the conditional "Pilgrim", "Gifts of Nature" or Vitafood has been registered by competitors for 10 years already. […]

Now imagine: in order to violate other people's rights, it is not necessary to use someone else's sign exactly the same.

It is enough to be just too similar - lawyers have this called "similarity to the point of confusion." Roughly speaking, if buyers can confuse you, then there is a violation.

By the standards of our laws, Performator, "Performator-46", "Performator", "Performat" and even "PerformatorMarketing" are all designations similar to "Performer". Their use will be punished in exactly the same way as for the use of the original "Performer" itself - if the trademark owner decides to press everyone else.

That is why sometimes, in order to find a sonorous and at the same time suitable for registration name, you have to come up with and check out dozens of options.

Moscow, 2021. The manufacturer of gloves has registered the Russian Lions trademark for its products. Some time later, an intruder appeared on the Internet: a completely outside company offered to buy Russian Lions gloves. The copyright holder was not familiar with this company and did not give her permission to use his mark.

To make sure that the company really sells counterfeit goods, the copyright holder asked his friends to call the company's sales department and get an invoice for a batch of gloves. Fears were confirmed: the company entered into an agreement for the supply of 10,000 "Russian Lions" and issued an invoice for 1,440,000 rubles.

The perpetrators never received any payment. But the copyright holder took the contract and went to court, where he demanded compensation in the amount of double the price of the counterfeit offered for sale - it turned out to be 2,880,000 rubles. The defendant in court said that he did not know about the trademark of the plaintiff and, in general, issuing an invoice does not mean that he had such a volume of goods - the invoice was not paid, and the contract was not executed.

The court granted the claim in full. To calculate compensation, it is not necessary to directly buy the goods, it is enough to confirm the very fact of the offer for sale - this was already mentioned by the Supreme Court in one of its clarifications. And about “did not know”, the court said that the defendant, being an entrepreneur, had to show a reasonable degree prudence, that is, figure out what designations are applied to the product, and make sure that it does not violate other people's rights. The appeal upheld the decision, the Intellectual Property Court also agreed.

The excuse “didn’t know about the sign” doesn’t work. The courts argue as follows: trademark registries are open, the entrepreneur had to check that sells; and if he did not bother to figure it out and violated other people's rights, then he should be held accountable.

In addition to paying compensation, the violator will be forced to remove the name from advertising, from signs and from the Internet, he will have to
carry out a complete rebranding.

Registration of a trademark practically guarantees the right holder that he does not violate the rights of others when he uses his designation in business.

Rospatent is responsible for this: the task of FIPS experts is not to let a sign that is too similar to existing ones through for registration. In most cases, it is easier for an expert to overdo it than not, and give at least a preliminary refusal where there is reason to doubt.

Therefore, if Rospatent nevertheless registered the mark, then everything is in order with the designation and it can be used in business. Many register signs not so much to fight violators, but simply to make sure: work calmly, invest in development brand and not worry that a sudden copyright holder will come out tomorrow.

True, sometimes registered trademarks annul. For such disputes, Rospatent has a separate division - it is called the “Chamber for Patent Disputes”. Suppose competitors decide that the expert did not take into account something when registering the mark - for example, he did not notice a very similar mark registered for homogeneous goods. The interested company submits an objection to the registration of this mark to the Chamber, and the Chamber schedules a meeting. Further, the procedure is similar to court: the applicant defends his position, the copyright holder his - plus they can also call the expert who made the decision. If the applicant's position is confirmed, Rospatent may invalidate the trademark registration. The sign is canceled as if it never existed.

It is not particularly worth worrying about such cases: in relation to the total number of registrations, they are less than a percentage. Yes, and a registered mark still gives an indulgence: a company cannot be considered a violator if it used its mark in business, which was then canceled. In general, if Rospatent has registered a mark, you can sleep peacefully.

Protect yourself from patent trolls

There are companies that do not conduct any business, but only register a bunch of trademarks in order to drag everyone through the courts and earn on compensation. They are called "patent trolls". There are a dozen such craftsmen in Russia, and they own several thousand trademarks.

Russian trolls are really suing a lot, collecting compensation and selling trademarks at exorbitant prices to companies that did not register their designation on time. Trolls can and should be fought: trademarks are invented in order to use them in business, and not in order to register everything in a row and then put spokes in the wheels of real entrepreneurs.

If you prove in court that the troll is not using the mark for its intended purpose and is abusing its rights, then the court will instead terrible millions can recover a purely nominal compensation of 50-100 thousand rubles or even refuse the troll lawsuit.

Kemerovo, 2019. The owner of the sign "1,000 trifles" sued the entrepreneur and demanded compensation of 600,000 rubles. The first instance agreed with the claim and recovered the entire amount from the violator. The appeal overturned the decision of the first court and dismissed the claim.

The actions of the copyright holder were called abuse of the right: he did not use the trademark in business, but registered it only in order to cash in on compensation. The Intellectual Property Court upheld the appeal.

Sometimes troll trademarks at all annul. When the right holder does not use the mark within three years, any interested person may apply to the court to terminate the protection of the mark due to non-use. True, such a trial is an independent process. And it's good if he has time to end before the case for the recovery of compensation.

In any case, a collision with a patent troll will force you to spend several hundred thousand rubles on defense in the courts, or about the same amount on buying the mark from the troll and avoiding courts. This is what the trolls are counting on.

But if your name is more original than Chamomile, you are most likely not in danger of meeting trolls. Trolls register the most common names like "Anyuta", "Alliance", "Cornflower" and all that.

More original trolls, as a rule, do not encroach: there are too few companies that can be trolled. Sometimes trolls will target the trademarks of booming companies, but this is more of a rarity. And given the judicial practice of recent years, trolls are less and less afraid.

It happens that someone else's designation is registered not by a professional patent troll, but by a competitor - sometimes it may turn out to be a former partner or employee. This is done in order to interfere with the normal operation of the company or to receive money for the "redemption" of the designation.

Moscow, 2021. The company registered the Wally Tolly trademark and came to Wally Tolly Express LLC with an offer to buy the mark for 4,000,000 rubles. Like, compensation from you, if anything, we will exact five, and so let's four and disperse.

Wally Tolly Express did not pay the invaders and turned to lawyers. Upon an application to the Chamber for Patent Disputes, Rospatent declared the registration of the mark invalid, the Court for Intellectual Property rights recognized the actions of the “seller” as unfair competition, and the Federal Antimonopoly Service also fined above. As a result, the company of the invaders went bankrupt, and the sign was registered on real Wally Tolly.

The Wally Tolly dispute took us over a year. After everything is behind, the story sounds heroic, it is pleasant to tell it. But from a business point of view, it would be better if it did not happen at all. And not everyone can win such disputes.

Protect your domain from other trademark owners

Imagine a situation. Some entrepreneur opens an advertising agency LLC "Performance-Marketing Trade" and registers a domain in short: performator.ru. And a year later, our friend company appears, the copyright holder of the “Performator” sign, the domain of the same name. She sues the owner of the domain: she demands to give up the domain and pay compensation for trademark infringement. Who is right?

It would seem that the decision should be simple: if the company registered the domain before the trademark appeared, then the domain remains with it, and if later, then let it give the domain and pay compensation. But if it were that simple, trademark and domain law courts wouldn't drag on for years, and lawyers wouldn't write dissertations on them.

Do not rush to accuse lawyers of chicanery and injustice. Trademark owners are not always such cunning foxes playing with laws, and domain owners are poor orphans. It often happens the other way around: all sorts of smart people register domains on purpose, so that later they can be resold at exorbitant prices to companies. And sometimes it also happens that fate has managed to choose similar names and domains for ordinary entrepreneurs. In general, let's look at the situation from the point of view of law, and morality in these disputes, everyone has their own.

A trademark is intellectual property, and domains of this status in law No.

Domains are just a "technical means of addressing," as the Intellectual Property Court says. Therefore, the courts in disputes protect the trademark, not the domain. And they usually don't care how much money is invested in promoting a domain and how much more they have to spend moving from one domain to another.

The main questions that the courts are interested in in such situations are whether the domain and the sign are similar to each other and whether the owner of the domain has some kind of legitimate interest in it. If the mark and the domain are similar and at the same time the domain owner competes with the owner of the mark or simply registered the domain for resale, most likely the domain will be divided.

What was registered there before, whether the domain owner knew about the mark or not - these details only affect the scale of negative consequences for the domain owner. A domain can be banned from being used at all, or they can only be banned from conducting certain business through it; compensation may be recovered in whole or in part.

When considering such disputes, the court pays attention to which site is located on the disputed domain and what kind of interest its owner has in general. It depends on the court's conclusion about whether there is a violation or not. If it is, the purpose of registering and using the domain affects the amount of compensation that the copyright holder will receive.

As a rule, a million or more is awarded in cases where the domain owner sold on his website goods and services similar to those for which the trademark has been registered. It turns out that the owner of the domain was a competitor to the owner of the mark and violated his rights. This is the most serious violation in such cases.

If the domain hosts a website of a company from another area or even some kind of personal blog, then there is no trademark infringement.

The domain owner sells clothes on his website, and someone has a trademark on the cafe - well, that means that the owner of the cafe is out of luck, the brand clothes ahead of him. There is no trademark infringement here. […]

The story with cybersquatters is a little more complicated - when a person registers a domain and does not place anything on it, but simply sits and waits for this domain to be bought from him. Here it may seem strange, but the courts quite find in such actions a violation of the right to a trademark, although the owner of the domain does not sell goods and services there, for which the mark is registered. The logic of the courts is that the domain owner has no legitimate interest in using the domain, and at the same time he prevents the owner of the mark from exercising his rights, which means that he is an infringer. […]

Sometimes registrants manage to fend off claims from trademark owners, for example, if it turns out that the trademark was registered illegally. But in order to prove this, the domain owner will need to go with a separate application to the Chamber for Patent Disputes, the Federal Antimonopoly Service or another court.

An important detail: all these disputes will go in parallel. That is, in one court, the owner of the mark is trying to prohibit the use of the domain and collect compensation, and in another, the owner of the domain is trying to prove the illegality of the registration of the mark. The court is not obliged to stop the dispute for a while until the consideration of the objection is completed. If the owner of the mark wins the court and seeks compensation, and then the registration of his mark is declared illegal, then the first dispute will have to be reviewed taking into account the new circumstances. It is unlikely that all these cases will take less than a year.

In general, ordinary entrepreneurs have three options not to get into a domain dispute:

1. Choose a domain that no one will definitely be able to register as a trademark. For example, an indication of goods in the spirit of “clothes46.rf” - we simply register the domain and that’s it, we don’t need a sign.
2. Register a domain that will match the company's existing trademark. For example, the owner of the sign "Ecobatonia" registers the domain "ecobatonia.rf" - he does not need another sign here.
3. Register a domain name as a trademark. This option is suitable if the company's domain differs from its characters. For example, the domain "ekobatonia.rf" is busy, and the owner of the sign "Ecobatonia" registers the domain horovod.ru for the website of his company. In this case, horovod should be registered as a trademark if someone has not already done so. And if you did, choose another domain.

Block competitors contextual advertising

Almost all courses of specialists in contextual advertising is taught to set up advertising "by competitors" in search engines. You take the company "Romashka", put the name of the competitor "Cornflower" in the keywords - and you're done: buyers write in the search for "Cornflower", follow the first link, and there is the website of "Camomile". As a result, the buyer's payment is sent not to the Cornflower account, but to the Chamomile account. Maybe the buyer mixed up the sites, maybe he just decided to buy from the nearest link, the result is the same - "Vasilyok" did not receive the money that he could have received if the competitor had not set up advertising according to his name.

Previously, only the use of foreign trademarks in the texts and titles of contextual advertising ads was recognized as a violation. The courts did not pay much attention to keywords.

But then, in one of the clarifications, the Supreme Court saidthat the use of foreign trademarks as keywords can also be recognized as unfair competition. Well, it started.

Moscow, 2021. The Internet service set up contextual advertising based on the name of a competitor. The name turned out to be a registered trademark.

The copyright holder filed an application with the Federal Antimonopoly Service and a lawsuit in court. FAS recognized the violation and called the actions of the violator unfair competition. The first instance exacted 200,000 rubles from the violator, the appeal upheld the decision.

The Intellectual Property Court closed the case in cassation for review by the court of first instance. They decided that they still needed to recover more: the compensation was increased to 999,052 rubles. Yes, they increased. The appeal upheld the decision, the Intellectual Property Court also agreed, the Supreme Court did not see any violations by the courts and upheld the decision.

So far, in such cases, not everything is clear. The use of someone else's mark as a keyword can be considered as two infringements: unfair competition and use of a trademark. One action, two violations.

Unfair competition means that the entrepreneur violated the rules of the game in the market, that is, he received some unreasonable advantages, and buyers and competitors could suffer from this. Everything is clear here.

But there is a question whether such actions can be considered a violation of the right to a trademark. There are cases where the courts recognize a violation: they say, the mark is registered, and you used it to lure strangers clientspay compensation. But there is another position: they say, in such cases, the trademark is not used to individualize goods and services, which means that there is no violation for which compensation should be collected, although there is unfair competition. There are many disputes, decisions are different, so far the approach of the courts has not settled down. We are waiting for dissertations on this topic.

In order not to bother you, I suggest that you stop at the following: you cannot use other people's characters in your keywords. They may not be compensated for this, but the search engine can block campaigns, and the FAS can fine them.

Speaking of search engines: just in case, check if the search engine automatically adds the names of competitors to your keywords, if it does, remove them.

If it is important for you that visitors to competitors' sites still get to yours, then instead of campaigns on search, run banner ads, for example, in the Yandex advertising network. So far, no one is fighting for such settings, because from the outside it is impossible to determine exactly why a particular banner is shown to a person, how exactly the display condition is configured there.

Remove offenders and fakes from the Internet

Imagine the situation: “Performator” develops its own brand, advertises on the Internet, and then a competitor with a similar name appears on social networks without asking. If the offending company performs poorly, then bad reviews begin to write about it on the Internet and an unprepared buyer may decide that all the reviews are about the same company. The owner doesn't like it.

There is no need to arrange any test purchases: the very offer of goods on the Internet under a foreign sign is already violation. All social networks have feedback forms for such cases. Copyright holder writes complaint to technical support, and after a few days the social network blocks the violator.

Remove defamatory online company reviews

Even the best company in the world has a bad review on the internet. And, most likely, it was not written by clients, but by competitors or review sites themselves.

Information extortionists work quite unpretentiously. An invented bad review appears on the Internet about the company, and when the director of the company asks to delete slander, he is required to show a court decision, a photocopy of a passport, a birth certificate, documents on dog - or instead of all this, transfer money to the owner of the feedback site, 10-15 thousand.

Of course, if you sue the ransomware site, then most likely the review will be forced to be deleted, because to prove the truth of the information must be its distributor, that is, not the plaintiff, but the responder himself - and he does not cope. Several times they even demanded compensation from review sites. But such a case can take a year or two, the company will spend money on lawyers, and reviews will hang on the Internet and complicate the life of the company.

It is easier for entrepreneurs when such stories are resolved without a trial: the reviewer receives a claim and simply deletes the review himself.

To do this, the reviewer needs to write such a claim that he would no longer have any desire to get into conflict. The more references to laws and courts will be in the claim and the greater the amount of compensation the plaintiff counts, the higher the likelihood that the claimant will simply erase the review and decide not to get involved.

This is where the trademark comes into play. After all, the trademark owner does not need to consider losses, it is enough to ask for compensation. And the claim with reference to the Register of Trademarks of Rospatent and the demand for a million rubles in compensation looks more impressive than just a claim.

Get rid of negativity on social media

The same story applies to negative reviews in social networks. If a defamatory video was shot about the company and posted on YouTube, you can ask the moderators to remove the video. The same is true in social networks: if some fake pages write nasty things about your company, you can contact the community administration or the social network, referring to the trademark.

In most cases, mentioning the company in negative feedback does not constitute the use of its trademark within the meaning of the law. But not all moderators of social networks, groups in social networks and review sites understand intellectual property as well as you. It is easier for moderators to agree with the copyright holder and remove controversial content.

If the moderation did not respond to the complaint or rejected it, submit it again. A new complaint will go to another moderator, who can make a different decision. The same YouTube sometimes blocks videos only from the fourth or fifth time, but it's still faster than going to court.

Safely sell products on marketplaces

In pre-Internet times, entrepreneurs from different cities competed less among themselves. Even if one of them had a trademark registered and the other worked under a similar name, they could work all their lives and never know about each other. And even if they found out, many did not go to the courts - simply because the violator from another city did not interfere much.

Now the Internet and marketplaces have united everyone into one market: it doesn’t matter what city you are in, when you have delivery all over the country. Because of this, entrepreneurs with the same or too similar names find their products in adjacent tabs in browser.

Some marketplaces do not accept goods from the supplier for sale until they check the trademarks.

If the entrepreneur supplies goods of his own production, he shows his registration. If he resells other people's goods, he shows contracts with manufacturers, from which it will be clear that he sells original goods, and not counterfeit goods.

Other marketplaces do not check anything at all, they simply accept the goods from the supplier and launch them for sale. But they write a tricky clause in the contract: the supplier assures that his goods do not violate the rights of others, but if it turns out that they are violating, then the seller compensates the marketplace for all losses, and sometimes pays a fine above. Many entrepreneurs take offer without looking, but in vain.

When it is discovered that someone else's trademark is illegally used on the supplier's product, claims will first be made to the marketplace. He will quickly block the goods, or even the entire store, and request documents from the supplier. If the violation is confirmed, the block will not be removed, and the copyright holder will sue.

In such a situation, a foreign trademark is used by both the supplier and the marketplace. The copyright holder can sue any of them, or maybe both at once. The marketplace will not disappear anywhere and will definitely pay, so they will first sue it. But after the marketplace incurs losses, it will go to demand this money from the supplier.

Kemerovo, 2019. On the site "Wildberry" were sold woodenpuzzles. It turned out that this was a counterfeit: the supplier used someone else's trademark and even copied the puzzles from the plaintiff. The copyright holder demanded compensation of 1,780,000 rubles, as a result 480,000 rubles were recovered from the marketplace.

Marketplaces are doing their best to evade responsibility: every month they change their contracts, and in the courts they call themselves information intermediaries: they say, we are out of business, all questions are for suppliers. The position of marketplaces is as follows: “The seller is IP Ivanov, and we just publish his offer.”

Copyright holders do not agree: the marketplace does not just publish the offer, but moderates the cards, advertises goods, assigns discounts, advises buyers, accepts payments, delivers goods, and then also conducts returns. And on all this, the marketplace makes money, so let it be responsible for violations.

Judicial practice on marketplaces is still being formed.

Some courts collect compensation from marketplaces, some (most often) send them to sue the supplier. There are solutions where compensation is collected jointly and severally from both the supplier and the marketplace. But the question is not whether there is a violation or not, but from whom to collect compensation.

In any case, the supplier will end up suffering money for violation, so entering the marketplace without understanding trademarks is dangerous.

Start selling franchises

essence franchises is that one entrepreneur sells another the right to work under his own brand. But when the "seller" himself does not have the right to a trademark, then legally there is no brand - therefore, there is nothing to sell.

Normal franchise looks like this: there is a strong brand, it is registered with Rospatent, the franchisor gives the right to work under it and controls the quality of the franchisee's work. The agreement between the partners is registered with Rospatent. If the franchisee violates quality standards and harms the brand image, the franchisor terminates the contract and revokes the license through Rospatent.

When selling a franchise without registering a trademark, the seller at least substitutes his own franchisees: when it turns out that this trademark is already in fact is occupied by someone else, the defendant in the case of trademark infringement will not only be the franchisor, but also each individual buyer of his so-called franchises. […]

Use trademark registration in advertising

Trademark holders only they have a right use the legal protection mark ®. This marking indicates that the trademark is registered and its owner is ready to prosecute violators under the law.

Use the ® symbol without trademark registration it is forbidden: responsibility up to criminal.

So far, no one has been sentenced to punishment under this article, but it exists.

But the TM (trademark) marking in Russia is not regulated in any way, so anyone can use it and in any way. In other countries, this symbol marks designations that have already been filed for registration, but have not yet been registered.

Prohibit the import of counterfeit products across the border

A trademark can be entered in the Customs Register of Intellectual Property Objects (TROIS). Then the customs officers will detain goods at the border if the carrier does not have documents from the copyright holder.

There is such a myth, they say, “what are these your trademarks? out the Chinese forge everything and nothing." Well, yes, Russian signs are valid in Russia, Chinese - in China. The Chinese can produce anything at home, our signs do not work there. But when they try to import products under a false name to Russia, our customs officers meet them here.

You may remember the hype around Xiaomi in 2017, when customs stopped letting their equipment into Russia. This happened just when Xiaomi decided to streamline the sales of their equipment in the Russian Federation and made their marks in TROIS. Permissions were given only to those who agreed to the terms of official dealership. Now all over the country there are the same beautiful Xiaomi stores, and the brand is strong. In many ways - thanks to the trademark.

Increase company value and pay less taxes

A trademark is an intangible asset of a company. It can be evaluated and put on the balance sheet, then the company will rise in price. This can be useful to attract partners and investors or get some government licenses that require a large share capital.

A separate joy is that such an increase in capitalization does not affect the tax base: the value of the company's assets grows, and taxes must be paid for it No need. Moreover, the trademark subject to depreciation - getting cheaper every year. It turns out that every year the accountant fixes the "cheapening" of the trademark in the reports. According to the documents, the company's profit becomes smaller, which means that the income tax also decreases.

The book “Stole? Punish!" learn to defend their intellectual rights. From it you will learn why patents and trademarks are really needed, how to deal with pirates and plagiarists, how much you can lose on fines, as well as other important things.

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