What constitutes evidence of use?
Russian law stipulates that use of a trademark is compulsory. Failure to comply could lead to the termination of the trademark. Article 1486 of the Russian Civil Code establishes that the legal protection of the trademark may be prematurely terminated in respect of all or part of the goods or services, where the trademark has not been used for three consecutive years from the date of registration.
Once the three-year grace period has elapsed, any interested party may file a non-use cancellation claim with the IP Court. According to recent changes in Russian law which came into force on 12 July 2017, the interested party must approach the trademark owner with a preliminary proposal to either voluntarily cancel the trademark registration or assign rights in it to the interested party before filing the claim. A non-use cancellation claim can be filed with the court within 30 days of the two months from when this proposal is sent.
The following two criteria must be met in order to terminate a trademark:
- the interested party has filed the relevant claim; and
- the trademark has not been used for three consecutive years.
Proof of a legitimate interest in the cancellation of the trademark is the claimant’s responsibility. It is then the defendant’s responsibility to prove the use of the trademark in the past three years (counting back from the non-use cancellation filing date). In non-use cancellation proceedings, the trademark owner must prove genuine commercial use of the trademark in Russia, which may include acts related to the introduction into civil turnover and the factual use of the trademark with respect to goods or services listed in the trademark registration. Both criteria represent autonomous and independent grounds for upholding or dismissing a claim.
What constitutes use?
Article 1484 of the Civil Code lists the following acts which constitute trademark use:
- placement of the mark (including on labels and packaging) on goods that are:
- for sale;
- sold or demonstrated at exhibitions or fairs;
- otherwise introduced into circulation in Russia;
- stored or transported in order to be circulated in Russia;
- imported into Russia;
- use of the mark while performing work or providing services;
- use of the mark in the documentation accompanying goods introduced to the market;
- use of the mark in offers for the sale of goods and services, as well as in advertisements and on signboards; and
- use of the mark on the Internet, in domain names or in other means of address.
Documents evidencing use
As in any litigation case, the outcome depends on the evidence presented to the court. In the context of Article 1484 of the Civil Code, the evidence may include the following documents:
- supply contracts;
- shipping documents;
- documents on the volume of production;
- samples of goods and dated photographs of samples of goods;
- the licence agreement between the prior rights holder and the manufacturer (registered with the Russian Patent Office);
- sale information;
- the contract detailing the manufacture of the goods;
- confirmation of payment transactions;
- package labels;
- labelling on documentation;
- outdoor signs;
- certificates of conformity, supply contracts, shipping documents;
- online marketing campaigns in conjunction with the administration of the domain name;
- documents with evidence of the company's activity;
- contracts which detail the order of polygraphic materials and maquettes;
- licences for the manufacture, storage and supply of alcoholic beverages; and
- manufacturing capabilities for the manufacture of goods in conjunction with evidence of further introduction into civil turnover.
What does not constitute use?
When collecting the documents, it is crucial to make sure that they do not fall into typical pitfalls such as:
- providing no references or indications of dates;
- exceeding the three-year timeframe
- being unrelated to the goods or services named in the registration;
- failing to provide evidence on the introduction of the goods in question into the market.
Often trademark owners do not use the trademarks themselves, they authorise third parties to do so instead. In this respect Russian law does not stipulate that the owner must use the mark exclusively. The law indicates that the mark can be used by an authorised third party based on a licence or sub-licence agreement, or with the owner’s permission. The latter describes business or other contractual relationships between a rights holder and a third party.
Circumstances beyond the rights holder's control
Although a trademark must be used, Russian law provides some exceptions for non-use. These are circumstances beyond the rights holder's control (ie, force majeure or unpredictable political decisions), which may be used as a defence in cancellation proceedings. Examples of such reasons are:
- a state-imposed ban on imported goods;
- the purchase of expensive equipment which might lead to an unforeseen delay connected to significant financial expenses; and
- bankruptcy eliminating the exclusive rights to the trademark.
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