New rules for reducing compensation for trademark infringement may appear in the Civil Code

The foreign word “brand” appeared relatively recently. It doesn’t occur to everyone that a brand or trademark belongs to someone and you can’t just pick it up and start using it at your own discretion. There is responsibility for this.

ATTENTION : our lawyer will help with illegal use of a trademark, read more about the issue of protecting exclusive rights to a trademark by following the link.

What does illegal use of a trademark mean - concept and legal characteristics

A trademark is a designation that serves to individualize the goods of a legal entity or individual entrepreneur, certified by a trademark certificate (Article 1481 of the Civil Code of the Russian Federation). Service mark is a designation used to individualize the work performed by specified persons or the services provided by them.

Illegal use means the use on the territory of the Russian Federation of a corresponding designation or one similar to it (to the point of confusion) without the permission of the copyright holder.

According to part 1. Article 180 of the Criminal Code of the Russian Federation is subject to illegal use:

trademark;

service mark;

appellation of origin of goods or similar designations for homogeneous goods.

Legislation applicable to this type of offense:

Civil Code of the Russian Federation (Articles 1229, 1231, 1233, 1252, 1477, 1488, 1489, 1490, 1503);

Code of Administrative Offenses of the Russian Federation (Article 14.10);

Criminal Code of the Russian Federation (Article 180).

Composition of the crime and qualifying characteristics

A qualified crime is the commission of those specified in Art. 180 of the Criminal Code of the Russian Federation of acts by a group of persons by prior conspiracy or by an organized group.

An important condition is the commission of a criminal act repeatedly or the resulting large damage.

Claim for illegal use of brand name

In the hands of the copyright holder of a trademark or logo are articles of the Civil Code of the Russian Federation numbered 1484 and 1515. Article 1484 establishes the exclusive right to a trademark, paragraph 2 notifies of the right to place a trademark on the Internet, including in a domain name and other addressing methods.

Article 1515 provides for liability for illegal use of a trademark. Paragraph 3 states: “A person who has violated the exclusive right to a trademark when performing work or providing services is obliged to remove the trademark or a designation confusingly similar to it from the materials that accompany the performance of such work or provision of services, including from documentation , advertising, signs." A lot of companies and individuals, including those in the web space, can fall under this definition.

Liability arises in the event of a personal appeal by the copyright holder with a claim for illegal use of a trademark to the judicial authorities. As part of the claim, the copyright holder has the right to demand payment of compensation from 10,000 rubles to 5,000,000 rubles, based on the nature of the violation and proven damage.

Also, the copyright holder has the right to demand compensation in the amount of twice the cost of goods on which the trademark is illegally placed. Or you can demand to pay twice the value of the right to a trademark if it were used legally. In this case, you can “get” a fairly large sum of money and lose your professional reputation, or rather, completely ruin it. A claim for compensation for copyright infringement creates the need to contact our lawyer, while we help both on the side of the plaintiff and the defendant, who will prove the absence of infringement or reduce the compensation payment, watch the video with tips on filing a claim in court

HEALTHY:

Types of use of TK without permission of the copyright holder

It can be difficult to understand when exactly wrongdoing occurs. Below are the most common cases of violation of the law in the form of the use of counterfeit goods or infringement of exclusive rights:

• Release of products under someone else's mark, the copyright holder of which did not give his consent. As an example, we can cite almost any market product, where under one or another brand of clothing there is something hidden that is far from original.
• Advertising and sale of goods under someone else's technical specifications. There was a Louis Vuitton restaurant in South Korea, and a clothing brand has the same name.
• Using a sign to place it on documentation that accompanies the movement of goods. Let's turn again to markets where, under the guise of original Adidas clothing, people promote their items.
• Placing someone else's mark on advertising images in order to increase sales of their products. As an example, we can cite any public catering service that often uses Macdonalds’ technical specifications to advertise its business.
• Use by the violator of the original technical specification to advertise their products or services on the Internet.

Types of liability for misuse

Civil law

According to Article 1515 of the Civil Code of the Russian Federation, the following penalties are provided for offenders:

The copyright holder has the right to demand the withdrawal from circulation and destruction of the counterfeit at the expense of the offender - the offender is obliged to comply with the requirements. If the holder of exclusive rights demands compensation, the amount of the fine varies from 10 thousand rubles to 5 million. There is also the option of collecting compensation from the violator, the amount of which is twice as much as the cost of the technical work.

Important! Offenses in relation to trademarks not registered in Russia are qualified under Art. 180 of the Criminal Code of the Russian Federation.

Administrative

According to Article 14.10 of the Code of Administrative Offenses of the Russian Federation, the following penalties are provided for offenders:

For individuals – penalties from 5 to 10 thousand rubles. Also, all counterfeit goods will be confiscated from the violator;

For officials - from 10 to 50 thousand rubles. Counterfeit goods are also subject to confiscation

For organizations - from 50 to 200 tr. Counterfeit goods are also subject to confiscation.

If the offender decides to produce a product with the aim of using it for his own purposes, then in this case the penalty is increased:

For individuals, the fine will be 2 times the price of the counterfeit product. All goods, materials and means of production are also confiscated.

Officials will pay a fine three times the value of the counterfeit, with confiscation of all goods.

For organizations, the fine is 5 times greater than the counterfeit, including its confiscation.

Criminal

According to paragraphs 1 and 2 of Art. 180 of the Criminal Code of the Russian Federation, the following penalties are provided for an offense if it is committed repeatedly or causes major damage.

Reference! Major damage, according to Art. 180 of the Criminal Code of the Russian Federation, amounts to an amount exceeding 250 thousand rubles.

For illegal use of someone else's mark:

• a fine of 100 to 300 thousand rubles is issued or all wages that the culprit could have received for 2 years are confiscated;
• compulsory work up to 480 hours;
• sent to correctional or forced labor for up to 2 years;
• arrest and subsequent imprisonment of the offender for up to 2 years, with payment of a fine of up to 80 thousand rubles, or confiscation of his salary, which the culprit could have received for 6 months.

For illegal use of markings of a trademark not registered in Russia:

• a fine of up to 120 thousand rubles is issued or all the salary that the culprit could receive for the year is confiscated;
• compulsory work up to 360 hours;
• correctional labor for up to 1 year.

If the same acts were committed by a group of persons or by conspiracy, then other penalties follow:

• a fine in the amount of 200 thousand to 400 thousand rubles or in the amount of the salary or other income of the convicted person for a period of 18 months to 3 years;
• forced labor for up to 4 years;
• imprisonment for up to 4 years with a fine of up to 100 thousand rubles, or confiscation of the offender’s salary, which he could have received for 1 year.

If the offense was committed by an organized group of persons, then a separate penalty is provided for this:

• fine from 500 tons to 1 million rubles. or in the amount of salary or other income of the convicted person for a period of 3 to 5 years;
• forced labor for up to 5 years;
• imprisonment for up to 6 years with a fine of up to 500 thousand rubles or in the amount of the salary or other income of the convicted person for a period of up to 3 years.
• Important! Damage is considered major when its amount exceeds 250 thousand rubles.

Where to contact in case of an offense

If it happens that the copyright holder has recorded the use of his TK, then he can contact the following authorities:

• Ministry of Internal Affairs You should file an application to initiate a criminal case for illegal use of technical knowledge, as well as to the district offices of the Prosecutor's Office of the Russian Federation.
• Court. You need to go to court based on Articles of the Civil Code of the Russian Federation 1484 “Exclusive right to a trademark” and 1515 “Responsibility for the illegal use of a trademark.
• Antimonopoly Service. You can contact it in accordance with Article 39 of the Federal Code of July 26, 2006 N 135-F 3 (as amended on October 5, 2015) “On the Protection of Competition.” If there is a fact of advertising a product brand with a stolen brand.
• Send a complaint to the territorial bodies of the Federal Service for Supervision of Consumer Rights.

Our arbitration lawyers and intellectual dispute lawyers, based on successful judicial practice in intellectual disputes related to the protection of intellectual rights, have developed a number of practical recommendations. The recommendations of our company’s arbitration lawyers relate to the copyright holder receiving compensation for the unlawful use of a trademark.

Below you can familiarize yourself with a brief algorithm of actions for collecting compensation for unlawful use of a trademark in court.

Issues arising when protecting intellectual rights

Most often, when seeking compensation for violation of intellectual rights, including unlawful use of a trademark, the following questions arise.

— What evidence does the plaintiff need to collect to prove infringement of intellectual rights?

— Where and how can one obtain evidence confirming the unlawful use of a trademark, through which one can obtain compensation for the unlawful use of a trademark?

— How to record evidence of intellectual property rights violations for presentation to the court?

— How to protect intellectual rights?

— How to recover compensation for unlawful use of a trademark?

Currently, violations of the rights of the copyright holder through the unlawful use of his trademark by third parties have become widespread. The trademark may not be completely identical or, as the defendant will most likely argue, completely different, but, in the opinion of the copyright holder himself, confusingly similar to his own trademark.

The benefit for the violator is obvious and is expressed in the fact that he uses a well-known and popular trademark without incurring any costs for its creation and promotion on the market. And why would a violator of your intellectual rights do this when the legal copyright holder has already done it. And everything would be fine if this fact only caused moral distress associated with the injustice of the situation, but the unlawful use of a trademark can also cause significant financial losses to the copyright holder and damage the business reputation.

What should the owner of the right to a trademark that is illegally used by violators do?

In this situation, the following questions arise.

— How to stop intellectual property rights violations as quickly as possible?

— How to punish the violator, and more severely?

— What can be recovered from the violator in this case?

and a number of other issues regarding the protection of intellectual rights.

The copyright holder who finds himself in a similar situation, whether it is a legal entity or an individual entrepreneur, it does not matter, will be forced to prove the fact of the offense that the defendant committed, and possibly continues to commit, by using his trademark or something similar to it.

The copyright holder will also have to justify the amount of compensation if he intends to recover it from the defendant.

Well, if the disputed designation is not identical, but only similar to the trademark of the copyright holder, then, in addition, you will have to convince the judge of the existence of a similarity that will be sufficient to recognize the similarity of the disputed designation with the trademark of the copyright holder to the point of confusion.

Each of these facts is proven in various ways. Let's look at each one separately.

Facts of intellectual rights violation

So, the legal owner of the trademark, at some point, finds out that his right to the trademark is being violated. His natural desire is to punish the offender. To do this, he needs to go to court. As a rule, when considering cases on the protection of intellectual rights, as well as to establish the fact of an offense, judges establish the presence of two circumstances.

1. Is the plaintiff actually the copyright holder of the disputed trademark.

2. Is there any fact of illegal use of this mark by the defendant - the violator of your intellectual rights.

Proving the first fact is usually not difficult. To do this, it will only be enough to present a certificate of registration of the trademark to the court. This will be an undeniable argument about the priority of the trademark and the exclusive right to it belonging to the copyright holder.

But as for evidence of illegal use, the task here is more complicated. It becomes even more complicated in a situation in which the violation of intellectual rights is expressed in the use of not an identical trademark of the copyright holder, but only one similar to its trademark. In this case, you will also have to convince the judge that the indicated designations are confusingly similar.

Evidence of illegal use of a trademark

Here it is necessary to clarify what should be understood as evidence of illegal use of a trademark. So, for example, whether the use of a trademark is illegal must be decided by the court. Accordingly, the court will not necessarily agree with illegal use, as the copyright holder considers it. A subjective opinion is just the opinion of each individual subject. For it to have legal significance, the court must also be convinced of this. In order for the judge to agree with the opinion of the copyright holder, he needs to present the alleged offense to the court as clearly and convincingly as possible. This, in turn, will largely depend on how and by what means the illegal use of a trademark will be recorded.

From this we come to the conclusion that evidence of the illegal use of a trademark in court is not the fact of violation itself, but the form in which it is recorded and presented to the court.

Evidence that can be used to recover compensation for misuse of a trademark

1. Administrative act confirming the illegal use of a trademark

Perhaps the most convenient option would be a situation where the copyright holder files a claim for violation of his right after the defendant has been brought to administrative responsibility for this act under Art. 14.10 Code of Administrative Offenses of the Russian Federation Illegal use of means of individualization of goods (works, services). Let us remind you that a trademark also belongs to the means of individualization.

In this case, there will be no need for additional evidence of illegal use of the trademark by the defendant. The fact will be established prejudicially and the copyright holder will only have to justify the amount of monetary compensation. But such cases do not always take place in practice; situations are much more common when the fact of an offense has not been established administratively. So what should I do?

2. Test purchase of goods on which a trademark is illegally placed

One of the simplest, but quite effective ways of proving is a test purchase of goods. As a result of this action, we receive a sample of the product, a sales receipt, possibly video and photography, and more. It is necessary to take into account that individual evidence indicated may turn out to be insufficient, despite all its persuasiveness.

An example from the practice of our arbitration lawyers: the plaintiff, in one of the cases, presented copies of invoices. From these documents it emerged that the defendant-infringer supplied to a certain counterparty goods whose name contained a designation corresponding to the designation registered as a trademark owned by the plaintiff. However, the judge refused to satisfy the claim, citing the fact that although the invoices contain certain information, given the lack of other evidence, taken separately they cannot serve as indisputable evidence that the designation was actually placed directly on the goods themselves transferred under these invoices.

Conclusion: in order for the position of the copyright holder to be more convincing, it is necessary, as far as possible, to take a more comprehensive approach to collecting the evidence base.

In practice, there are cases when acts are drawn up based on the results of a test purchase. This is not at all necessary and, rather, even unnecessary. The sales receipt and sample of the goods are of key importance here, and the drawing up of the act is rather an additional, not particularly necessary, but quite costly measure.

Another case encountered in practice is the situation when copyright holders entrust control purchases of goods to public organizations. This is also an unnecessary and meaningless action for the same reasons as acts.

In large companies, control purchasing is usually carried out by the security service, but not every company can afford to maintain it, and creating it only for these purposes is, at a minimum, pointless. You can fill this gap by turning to our arbitration lawyers and intellectual property lawyers for help. It seems that this will be more effective and less costly. In addition, when protecting intellectual rights, the copyright holder, after recording the illegal use of a trademark, will in any case need representation in court.

2.1. Facts established by test purchase

With the help of a test purchase, it is possible to establish not only the fact of the sale of a counterfeit, but also evidence of the use by the defendant of a designation that is confusingly similar to the trademark of the copyright holder, not only on the product, but also on signs, price lists, in receipts, advertising brochures and other documents . The sales receipt also contains evidence of who the seller of the goods is, its name, cost, quantity and date of sale.

Therefore, it is extremely important to pay attention to the listed circumstances when carrying out this action.

2.2. Video footage confirming the illegal use of a trademark

A video recording during the test purchase described above, recording violations of the use of a trademark, will in the future be an excellent way to clearly demonstrate in court your actions and the facts that will be discussed. Video filming can be done independently, but it must be taken into account that video filming itself is not an indisputable fact and is not any kind of document, but only serves to record and visually present information. This is its only, but very significant drawback. In the case when the video recording is not carried out by the copyright holder himself, but entrusts it to another person, then, at a minimum, he also receives a witness.

2.3. Photography

Another good way to record the unlawful use of a trademark, somewhat similar to video filming, but apparently less visual, is photography. You can take photographs yourself, but in this case, just like video filming, it will have corresponding disadvantages.

As one of the options, if counterfeit goods are detected when moving goods across the border of the Russian Federation during customs inspection, you can make a request to the specified service with a request to provide a photo or video. In this case, the listed shortcomings of the evidence are absent.

We should not forget, among other things, to properly attach video and photo footage to the case materials.

3. Evidence inspection protocol

The next effective evidence, and in some cases the only and irreplaceable one, is a notarial protocol for the inspection of evidence or, as it is also called, a protocol for securing evidence. The photo or video taken in this case, indicated by the notary in the protocol, also does not have the disadvantages listed above. So one of the various functions performed by a notary is the provision and certification of legal facts, when contacted by persons interested in a certain type of evidence that may be necessary in a judicial or administrative body and when there is reason to fear that this evidence will be presented at the time consideration of the dispute on the merits will be impossible or difficult due to their loss or any other circumstances.

In practice, as a rule, such protocols are used to record information posted on Internet resources, for example, when recording advertising and public offers containing the designation of a disputed trademark. But the protocol may be necessary not only in these situations, but also in cases where the unlawful use of a trademark will not be expressed in the sale of goods with a disputed designation or in indicating this designation in the documentation, but in some other actions. For example, the designation may be placed on an advertising or information sign on the street. In this case, recording such a fact in the notarial protocol will be more powerful evidence in comparison with an ordinary photograph or video recording. In this case, a notary should be invited to draw up the specified protocol before sending a claim or lawsuit to the defendant, as this will avoid the risk of destruction of evidence.

Advice from our arbitration lawyers. Always check documents drawn up by a notary very carefully. Unfortunately, very often there are mistakes that your procedural opponent can use in the future.

Actions that qualify as illegal use of a trademark

It is important to correctly determine whether the defendant’s actions constitute a violation of trademark rights. To do this, it is necessary to understand what is meant by the very use of a trademark, what actions can be called unlawful use of a trademark. The list of ways to use a trademark is open. In particular, use is carried out by placing trademarks on goods that are produced, offered for sale, displayed or otherwise put into circulation on the territory of Russia, or stored or transported for this purpose, or imported into the territory of Russia. The use of a trademark is possible when performing work or providing services on documentation. This list is constantly supplemented and specified by judicial practice.

For example, if a company produces a product that does not directly bear someone else’s trademark, but it appears on the packaging of this product manufactured by another person, then the company that manufactured the product is still responsible for this illegal use of the trademark. Her actions are regarded as the creation of a counterfeit product and its introduction into circulation. Please note that references to the fact that another person was involved in affixing the trademark to the packaging does not relieve liability.

It should be noted that in accordance with the new edition of Part 4 of the Civil Code of the Russian Federation, which came into force on October 1, 2014, legal entities or individuals who are entrepreneurs can be held liable for violation of intellectual rights, regardless of guilt. A similar position was previously expressed by the Presidium of the Supreme Arbitration Court of the Russian Federation, but it was not enshrined in law. An exception to this rule is the case if the violation occurred due to force majeure, the presence of which must be proven by the offender. If a company is held liable without fault, it has the right to make a recourse claim for damages. Apparently, we are talking about a recourse claim against the one who was really guilty of this.

True, when applying the principle of guilt, it is necessary to remember the explanations set out in paragraph 23 of the joint Resolution of the Supreme Court of the Russian Federation and the Supreme Arbitration Court No. 5/29. According to the second paragraph of this paragraph: “Courts should keep in mind that this rule is subject to application to methods of protecting relevant rights that are not related to measures of liability. Liability for violation of intellectual rights (collection of compensation, compensation for losses) arises in relation to Article 401 of the Civil Code of the Russian Federation.”

Evidence of confusingly similar designations

Whoever decides the issue of the similarity of a disputed designation with a specific protected trademark - an expert, a judge, a specialist from the antimonopoly authority or Rospatent, they will all be guided by certain provisions of the Rules for the preparation, submission and consideration of documents that are the basis for taking legally significant actions for the state registration of trademarks , service marks, collective marks dated July 20, 2015 No. 482, as well as Methodological recommendations for checking declared marks for identity and similarity dated December 31, 2009 No. 197.

Rule No. 482 contains definitions of identity and similarity to the extent of confusion between the declared designation and another designation.

For example, a verbal designation is considered identical with another designation if it coincides with it in all elements: sound, visual and semantic. A designation is considered confusingly similar to another designation if it is associated with it as a whole, despite individual differences.

The Supreme Arbitration Court of the Russian Federation has repeatedly indicated that when establishing the threat of mixing two similar designations, three factors must be taken into account, namely:

1. Distinctive ability of a sign with earlier priority.

2. Similarity of opposing signs.

3. Homogeneity of the goods and services they designate.

Among other things, it matters how long and widely the plaintiff’s trademark was used before the defendant’s similar designation appeared on the territory of the Russian Federation. In simple terms, how high is the degree of its popularity and recognition. Accordingly, the higher it is, the greater the likelihood that a consumer may confuse a new similar designation with this well-known trademark.

References to these provisions very often appear in judicial acts in disputes regarding the recovery of compensation for the illegal use of a trademark. And methodological recommendations No. 197 contain specific instructions with examples on how to compare certain designations.

Taking this into account, it is better for plaintiffs in disputes over the recovery of compensation for the unlawful use of a trademark to immediately take as a guide the specified provisions of Rules No. 482 and Methodological Recommendations No. 197. A reference to them can correct an error that may also be made by the court.

For example, in one of the disputes, the cassation overturned the acts of the lower authorities, since when establishing the similarity of two designations to the point of confusion, the courts focused on comparing individual elements, but should have proceeded from the general impression, the perception of the trademark as a whole. In addition, to recognize similarity, the danger itself, the opportunity, and not the actual confusion of trademarks in the eyes of the consumer is sufficient.

Forensic examination in the protection of intellectual rights

In the event of a dispute over images that are confusingly similar, the copyright holder must be prepared for the fact that the infringer will deny the similarity and may petition the court to appoint an expert examination to resolve this dispute. As a rule, courts grant such requests very often. If such a request is granted, this threatens the copyright holder, at best, with delaying the process, and at worst, the court may receive a biased and not entirely objective expert decision. It should be taken into account that there is no special need for an expert examination when considering such cases. And this has been confirmed more than once by the Supreme Arbitration Court of the Russian Federation. In particular, when considering disputes regarding the protection of intellectual rights, the Supreme Arbitration Court of the Russian Federation indicated the following:

“The issue of confusing similarity of designations is a matter of fact and, as a general rule, can be resolved by the court without ordering an expert examination, since resolving this issue does not require special knowledge. The question of the confusing similarity of two verbal designations can be resolved by the court from the position of an ordinary consumer.”

Therefore, the plaintiff, citing this position, has the right to object to the appointment of the examination. It is worth noting that the judge can independently, without the involvement of experts, determine the presence or absence of confusing similarities in the designations. However, this should not be taken as an opportunity for arbitrary assessment.

Letters from FIPS confirming violation of intellectual rights

At the same time, in some cases, copyright holders themselves, even before the case is tried in court, seek confirmation from experts in the relevant field that the designations are confusingly similar. Very often, for this purpose, a comparative verification of designations is ordered from the Federal Institute of Industrial Property (FIPS). Alleged offenders also often resort to this method.

Usually such evidence is accepted by the courts. The courts proceed from the fact that the parties are not deprived of the right to submit to the case materials pre-trial letters, certificates and expert opinions on the issue of confusing similarity of marks. Such documents quite often appear in disputes about the recovery of compensation for the unlawful use of a trademark.

Sociological survey confirming the similarity to the point of confusion

Another very common and powerful evidence of the presence or absence of confusing similarities is sociological surveys. This evidence is important, since one of the main criteria when determining confusing similarity is how consumers perceive the controversial designation. As noted above, to recognize similarity, the presence of only the danger itself is sufficient, and not the actual confusion of designations in the perception of the consumer. The fact that there is a danger can be confirmed by these opinion polls.

Justification of the amount of compensation for illegal use of a trademark

In addition to suppressing the fact of illegal use of a trademark, the copyright holder, as a rule, also has a desire to punish the negligent offender financially, and, of course, also to compensate for his property losses resulting from the violation of intellectual rights.

The judge, having established the fact of illegal use of a trademark, will then determine the validity of the amount of compensation. This obligation according to Art. 56 Code of Civil Procedure of the Russian Federation and Art. 65 of the Arbitration Procedure Code of the Russian Federation lies entirely with the copyright holder. And as stated above, it is necessary to do this as convincingly as possible.

In this case, the copyright holder has a choice between two options, namely: to recover damages or special compensation provided for in subparagraph 1 of paragraph 4 of Article 1515 of the Civil Code of the Russian Federation.

In practice, as a rule, compensation is chosen between the specified alternative. And this is not surprising, given that calculating real losses, and then proving their validity in court is quite difficult, and sometimes simply impossible. But you should not think that it will be possible to collect compensation without difficulty; this will also require effort.

So, the amount of assessed compensation, like many other things, is determined at the discretion of the court. But this does not at all mean that the copyright holder is relieved of the obligation to prove the validity of the size of his claims. On the contrary, the amount of compensation awarded will directly depend on how convincing the collected evidence base looks, how significant the arguments in favor of the validity of the stated claims will be, and how much the plaintiff convinces the court of the legality of the stated amount.

It should be noted that the joint Plenum of the Supreme Court and the Supreme Arbitration Court at one time clarified that the price of the claim must be indicated in a fixed amount, despite the fact that the final amount of compensation is determined at the discretion of the court.

Risks arising from unreasonably inflated amounts of compensation for unlawful use of a trademark

When filing a claim for double compensation, the calculation procedure is clear. To do this, you need to determine the price of the product on which the disputed designation is placed, or the cost of the right to use the plaintiff’s trademark based on the price that, under comparable circumstances, is usually charged for lawful use, and multiply the resulting amount by two. This calculation is very clearly described in the law. Difficulties often lie in justifying the initial amount from which the double amount of compensation for illegal use of a trademark is calculated.

When a plaintiff seeks compensation, he is completely free to determine the amount. It is limited only to ten thousand to five million rubles. Guided by the fact that there is no need to prove the amount of compensation, plaintiffs often indicate an upper limit of five million rubles. But as practice shows, it is almost impossible to receive such large compensation without justifying its size in any way. The court may consider the demands to be excessive and award compensation at its discretion, reducing it significantly. Accordingly, the conclusion is that the presentation of inflated and unfounded demands for compensation for the illegal use of a trademark entails unfavorable consequences for the plaintiff. These consequences may be expressed in the refusal to satisfy the claims in terms of their overstatement, with the corresponding legal costs being assigned to the plaintiff. The plaintiff will not be able to receive compensation for state duty expenses in proportion to the part of the claims that he was denied.

Please note that when collecting compensation, paragraph 3 of paragraph 9 of the resolution of the Plenum of the Supreme Arbitration Court of the Russian Federation dated December 22, 2011 No. 81 “On some issues of application of Article 333 of the Civil Code of the Russian Federation” does not apply by analogy. It states that when the plaintiff demands a penalty, and the court reduces it on the basis of Article 333 of the Civil Code of the Russian Federation, the defendant is charged with the costs of the state duty, calculated from the amount of the claim (without taking into account the reduction by the court). Later, the Supreme Arbitration Court of the Russian Federation clarified that this clarification cannot be applied to cases of recovery of compensation on the basis of paragraph 4 of Article 1515 of the Civil Code of the Russian Federation. Thus, if the court reduces the amount of compensation, the difference between the paid state duty and the state duty, which corresponds to the amount of compensation established by the court, will not be returned to the plaintiff.

The key criteria to be followed when determining the amount of compensation should be the reasonableness and proportionality of the amount recovered to the violation committed and its consequences. The amount of compensation is also influenced by the nature of the violation, the period of illegal use, the degree of guilt of the violator, the presence of previous violations of the plaintiff’s exclusive right by the defendant, and the likely losses of the copyright holder. Therefore, before demanding maximum compensation, the plaintiff should evaluate each specified circumstance and think about how to justify them before the court. It is highly desirable, when seeking compensation for unlawful use of a trademark, to provide evidence that confirms the serious nature of the violation, the duration of illegal use, the calculation of damages, etc.

Please note that if the fact of trademark infringement is that an outside organization used an identical or similar designation in the name, then it is fundamentally important whether it is a commercial company. The names of non-profit organizations are not a means of individualizing legal entities in the sense of the provisions of Part Four of the Civil Code of the Russian Federation. If the violation consists of the use of a trademark in the name of a non-profit organization, the court will refuse to recover compensation for illegal use of the trademark

Proving the copyright holder's losses

To justify compensation, the plaintiff may refer to the possible amount of income of the offender, as well as to his probable losses. This is due to the fact that the amount of compensation for the unlawful use of an intellectual property object, including a trademark, is determined based on the need to restore the property status of the copyright holder. In other words, the plaintiff must be put in the financial position it would have been in if the intellectual property had been used lawfully. The presentation of this evidence by the plaintiff and the objections of the defendant, who does not agree with the amount of the amount being recovered, oblige the latter to present to the court evidence of the unfoundedness of the plaintiff’s calculations. Accordingly, the defendant cannot simply declare that the amount of the plaintiff’s possible losses and the defendant’s possible income are overstated. In order for the statement not to look unfounded, it is necessary to substantiate it properly.

Convincing evidence of losses and possible income can be real license agreements concluded with other persons. This is applicable for the recovery of both double compensation and estimated compensation. Thus, if a claim is made for the recovery of double compensation, then, under the terms of the contract, the court can determine the price that is usually charged for the lawful use of the trademark. And when collecting estimated compensation, the amount of payment under the license agreement can be regarded as the plaintiff’s lost profits, which he uses to justify the requested amount of compensation for the unlawful use of the trademark.

When providing a license agreement, it is necessary to take into account that the court will examine its terms for “similarity” with the circumstances of the illegal use of the disputed designation. So, for example, the court will find out what kind of license is being discussed in the agreement, what is the territory where the license is granted, as well as the volume of sales of products using the trademark. If, according to these criteria, the licensed use of a trademark and the illegal use of the disputed designation by the defendant are incomparable (for example, in the contract the entire territory of the license is indicated as the entire Russia, while in a dispute with the defendant the fact of illegal use of the disputed designation is proven in only one subject of the Russian Federation), then the court can significantly reduce the amount of compensation or refuse the claim.

At the same time, the court is unlikely to take into account the local acts of the plaintiff, which approved the procedure for calculating the amount of remuneration paid under the license agreement. The court may consider such evidence unreliable and insufficient due to its one-sided nature. But if the goods are discovered while crossing the customs border in the Russian Federation, compensation can be calculated based on the value of the goods indicated in the customs declaration; this fact will not raise doubts in the court.

Please note that sometimes copyright holders, using legal tricks, first file a lawsuit to suppress violation of the exclusive right to a trademark. Having won this dispute and armed with a court decision in which the fact of illegal use of the trademark is recognized, the copyright holder files the next claim demanding compensation for the illegal use of the trademark, using the first decision, which has the property of prejudicial significance.

Duration of illegal use of a trademark

To determine the amount of compensation, the duration of the period of illegal use of the trademark may be of significant importance. For example, in one of the disputes, by a decision of the court of first instance, compensation in the amount of one million rubles was recovered from the defendant for the fact that for nine years he used the designation registered with the plaintiff. However, the appellate and cassation instances considered that the plaintiff had proven that the period of violation lasted only three months, and on this basis they reduced the amount of compensation to two hundred thousand rubles. Therefore, in order to increase the amount of compensation, it is very important to prove that the defendant illegally used the plaintiff’s trademark for a sufficiently long period of time.

By the way, the fact of using a controversial designation on the Internet in some cases can be proven using screenshots taken using certain services. Their essence is that they allow you to establish what specific Internet pages looked like a certain time ago. If on a certain date, for example, two years ago, the defendant’s website page contained the plaintiff’s trademark, then on this basis it can be stated that the defendant has been illegally using the trademark for two years. Of course, notarization of this circumstance has a stronger evidentiary value.

To successfully conduct cases on the protection of intellectual rights, including the collection of compensation for the illegal use of a trademark, for effective representation of the rights and interests of individuals and legal entities in courts of general jurisdiction and in arbitration courts for various categories of intellectual disputes, call: +

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Pre-trial claim for copyright infringement

There may be several grounds for claims. For example, violation of a copyright agreement, which is not so difficult. Or here’s another example: a person took a photo from a third-party resource, and not from the author’s resource, and there is no indication that the photo is not the author’s. This will also be considered copyright infringement.

The claim itself does not have any specific form. It is written in any form and may look like a complaint.

The content of the claim must be formatted as follows:

• Name of the addressee and his place of residence.
• Name and address of the author of the claim.
• Part that includes confirmation of authorship, as well as information directly indicating copyright infringement.
• Calculation of the amount that the author requires for the violation.
• For reference: the claim does not necessarily have to be of a material nature; it may happen that the author will only need to remove his content from a third-party resource.
• The amount of moral damage, if the author thinks there is one.
• The operative part, which includes a statement of demands in a concise form, for example, “I demand that the facts of violation of my copyright be eliminated and that I be compensated for material damage in the amount of 100,000 rubles”;
• There should be an “applications” section where the author indicates documents proving his claims.

Trademark litigation and compensation collection

The first instance through which cases regarding this offense pass is the arbitration court (Article 27 of the Arbitration Procedure Code of the Russian Federation). The Intellectual Property Rights Court considers cases only at the cassation stage, if the case so requires. The Supreme Court of the Russian Federation in such cases acts as a supervisory body.

• Statement of Claim Before filing a claim, you should ensure that the form and content comply with the official regulations. All claims for illegal use of a trademark should be formalized as follows:
• Full name of the judicial authority to which the application is being submitted;
• Information about the defendants in this case and the plaintiff;
• Title of the case (for example, “Statement of Claim for Illegal Use of a Trademark”);
• A reasonable description of the violation and the defendant's response;
• Competent presentation of all requirements;
• References to the articles of civil and civil procedure legislation necessary in this case;
• If property claims are made - the full cost of the claim;
• List of attached documents;
• Documents and evidence.

The fact of violation must be established and proven by the copyright holder himself, while the law does not place any restrictions on the evidence provided. Exceptions are acts that have signs of a criminal offense.

Documents include:

• title documents;
• contracts;
• acts;
• invoices;
• payment documents;
• correspondence between the parties regarding the dispute, etc.

IMPORTANT: If there are no necessary attachments to the application, this may lead to a complete refusal of the claim or termination of the case.

To apply to the arbitration court, the parties need to confirm their legal status with relevant documents (certificate of registration, extracts from state registers of legal entities and individual entrepreneurs in relation to the plaintiff and defendant).

Methods of protecting a trademark

To protect a trademark, you need to register it. This can be done at the Federal State Budgetary Institution “FIPS” (this is a branch of Rospatent). The mark must be registered in the area where it will be used. The registration process takes 12-15 months. The validity period of the sign is 10 years. It can be renewed an unlimited number of times. If the company will operate, including abroad, it is necessary to undergo international registration. It is needed for protection on the territory of other states.

IMPORTANT! If a company has registered a mark in Russia, this will not automatically become a guarantor of protection in other countries. The right of ownership is valid only in the country in which it originated.

Before sending an application to Rospatent, you need to check whether the selected mark is used by anyone else. Matches can be found using the Rospatent database. This database consists of 500,000 characters. If the rights to a mark belong to another company, then it cannot be registered. Match checking is performed by the patent office. Its representatives compare the logo/name with the database. This allows you to eliminate all matches.

The copyright holder has the authority to control the use of the mark by third parties under these circumstances:

• Labeling products, packaging, advertising media.
• Use of a trademark as a service mark.
• Indication in the documents accompanying the release of products into circulation.
• Use of a trademark in promoting products or services.
• Use on social networks, domain, email.

A person who has rights to a mark cannot restrict the use of a mark if it is used for personal purposes by individuals who do not pursue profit-making purposes. Penalty cannot be imposed on persons who use signs in agreement with their owner.

FOR YOUR INFORMATION! Registration of a mark does not guarantee that competitors will not use it. But if the use of a trademark is detected, the entrepreneur can quickly respond to the violation. To do this, it makes sense to first send a letter of complaint, and then, if the offending company does not react in any way, go to court.

Compensation amount

The copyright holder, according to Art. 1515 of the Civil Code of the Russian Federation, has every right to request material compensation for the violation. The plaintiff has a choice when filing claims (Article 1252 of the Civil Code of the Russian Federation):

• compensation for losses and possible benefits, the calculation of which falls entirely on the shoulders of the plaintiff;
• suppression of the offender’s actions;
• seizure of material media;
• compensation, the limits of which are established in the legislation of the Russian Federation (Article 1515 of the Civil Code of the Russian Federation).
• Costs and processing time

Legal costs in cases of illegal use of trademark are considered after payment of the state fee.
The amount of the state duty depends on the value of the claim, since these cases have the status of property (Article 333.21 of the Tax Code of the Russian Federation). The terms of consideration depend on the complexity of the case, but the law states that they cannot exceed six months (in especially complex cases - nine). The speed of receiving compensation depends on the financial situation of the defendant and the work of the FSSP.

Trademark challenges

The grounds and terms of the challenge are discussed in detail in Article 1512 of the Civil Code of the Russian Federation. The main reasons for disputing are:

In the case when TK is a global brand, one of the monopolies in its field (for example: Coca-Cola, Xerox, Palaroid, etc.). There are a lot of similar examples, especially with the Coca-Cola brand; every person can remember at least one.

Trademarks that consist only of descriptive elements (for example: sparkling wine, caramel bar, super paste).

Trademarks that contain the coats of arms or flags of a particular state, symbols of intergovernmental organizations.

Technical specifications that can mislead the consumer (for example, if the sign shows a camel with sheep’s wool).

TK is immoral, contrary to public morality and signs of human humanity.

A frequent example of a challenge is a situation where a trademark that is not registered, but used by the copyright holder, is officially registered by another person. The result may be a challenge by the official copyright holder of the rights of the original author of the idea.

The above article partially provides for restrictions on the time limits for challenging up to 5 years from the date of publication of information about the state registration of trademark in the official gazette. Basically, the challenge is carried out during the entire period of validity of the exclusive right to the trademark.

Illegal registration of a trademark

What is meant by illegal registration of a trademark, how is this possible? In general, registration of a trademark is carried out with the aim that the corresponding trademark is not used illegally by other persons.

Illegal registration can probably be understood as cases when a person submits documents to register a trademark that does not belong to him.

Registration of a trademark that is similar to another already registered trademark may be considered illegal.

It is possible to challenge the registration of a trademark that uses generally accepted designations and words; if the designation misleads consumers, does not comply with the principles of humanity and morality, etc.

That is, the illegal registration of a trademark lies more in the illegality of the actions of the person who applied for registration of the trademark, violating certain requirements for trademarks.

How to file an objection to the registration of a trademark?

An application for challenge can be filed by the interested copyright holder on the basis of Art. 1513 of the Civil Code of the Russian Federation.

The procedure for challenging a trademark is as follows:

• The application is submitted to the Chamber of Patent Disputes (hereinafter referred to as the Chamber of Patent Disputes).
• From the Chamber, the application goes to FIPS, after which you need to pay a fee in the amount of 13.5 thousand rubles.
• The application of the teaching staff is being reviewed. There may be several meetings. Review may take from 3 to 6 months.
• If the plaintiff does not agree with the decision of the PPP, then he can file a claim with the Intellectual Property Rights Court.
• Each situation is considered individually with an eye to paperwork.

Results of challenging the technical assignment

After filing an application for appeal and making a decision by the federal body, if the answer is positive, either a new certificate is received or the current one is canceled (depending on the reasons for the challenge).

How to prevent illegal use of a trademark

To ensure that a trademark assigned to the copyright holder is not used, special measures are required. Here are a few of them:

• You should never forget about preventive measures. Using the services of lawyers, you can check whether the designation of the company that the copyright holder is planning to open is free.
• Checking points of sale. It is necessary to allow experts to check your field of activity.
• Verification of supplier rights. If the copyright holder decides to send his goods abroad, then he simply needs to be sure that the supplier has all the legal rights to do so.
• A technical site cannot be forced to remain empty for more than 3 years. If this happens, then competing companies will be able to go to court to register a similar trademark.

What you need to understand before getting involved in a trademark war

It is necessary to calculate whether going to court will be cost-effective and to carefully develop a strategy for the “war” for a trademark. Maxim Ali explains: “It is necessary to compare the amount of legal expenses (for payment of fees, legal services, etc.) and the compensation that the court will satisfy. It should also be taken into account that legal costs are compensated to the winning party, but the final amount of compensation can be reduced by the court if it considers it disproportionately high (which the courts very often use).

It is a misconception that the trademark “war” is limited to the filing and prosecution of lawsuits. For example, the copyright holder may forget about the need to spend money on collecting/recording evidence (and these include costs for the services of lawyers or other contractors, notary fees for site inspection, and so on). In addition, the copyright holder may already remember in the process that counterfeit goods are produced abroad, which means that in order to clear the market, it is necessary to carry out a procedure for entering the mark into a special register so that customs can filter out counterfeit goods at the border. And, of course, the infringer can counterattack the copyright holder and challenge his trademark, which means he will have to participate in the appropriate proceedings.”

Maxim gives an example of a successful and relatively easy-to-implement strategy: “Some ways, bringing relatively small claims to a large number of violators. For example, “Smeshariki” and “Masha and the Bear”. In both cases we are talking about cartoon characters that are registered as trademarks. They are very often used illegally on children's products.

The copyright holder (or its licensee) reaches out to a large number of small businesses selling at retail. To prepare a claim, you must first conduct a test purchase, keeping the receipt, counterfeit goods and other evidence. When going to court, the plaintiff can claim a minimum compensation of 10,000 rubles per trademark, which will increase exponentially if there are several marks (even on the same product) or several counterfeit goods. Thus, by “collecting” small amounts from a large number of entrepreneurs, the copyright holder essentially receives another way to monetize his brand. At the same time, legal costs can be minimized: as a rule, we are talking about standard actions that do not require the involvement of a highly qualified and expensive team of lawyers (which, most likely, will also be inaccessible to small businesses).”

What to do if you face a fine for illegal use of technical knowledge

Each such case is completely individual. If the person completely agrees with the claim, then compensation is simply paid to the copyright holder.

Otherwise, the case goes to the arbitration court. Experts note that most of the compensation does not exceed 100 rubles, i.e. everything takes place in a simplified form, without court hearings. However, court participants have every right to request a transition from summary trial to regular trial, which experts say is the best solution. Thanks to this, the defendant has the right to show products with his own technical specifications. This decision is due to the fact that most defendants lose in court, fully relying on a simplified process. The chance of winning the case for the involved party increases many times.

Nowadays, it is necessary to be legally literate. This will help everyone who is going to start their own business to avoid mistakes in creating their own sign. This will also protect the copyright holder from unnecessary problems with those who are trying to make an easy profit by copying technical specifications.