Protection of trademark rights

A trademark is a very real, though intangible value. In order to avoid misappropriation, counterfeiting or copying of a trademark or service mark by unscrupulous persons, its registration is made, after which disputable situations become possible to resolve in favor of the right holder, including in court.

We can often see how in the windows of stores, bridal salons, beauty salons and other trade and service organizations the brands of well-known manufacturers adorn the windows. If this is done without a license agreement, it is illegal advertising. Legal action in such cases is quite rare, but it happens.

When the use of TM is not considered a violation

If the goods have been put into circulation in the Russian Federation with the written permission of the right holder, the use of the trademark located on them by others is legal. In other cases, the use of designations covered by legal protection in Russia requires the permission of the owner, executed in the form of a license agreement.

Liability for infringement of trademark rights

The infringer of trademark rights is obliged to stop the unlawful acts. He bears civil, administrative and criminal liability.

One of the flower stores in Moscow placed an image of the brand of a famous manufacturing company in the window. The copyright holder has filed a statement of claim in court. As a result of negotiations on a mutual agreement between the companies was a licensing agreement. But the plaintiff is not always ready to settle. And in such a case, undesirable consequences may arise for the infringer.

The protection of rights to TK implies that the right holder has the right to demand from the infringer of the law:

1. Withdraw from circulation all labels and packages of goods depicting the infringing trademark.
2. Remove the infringing trademark from the packaging and labels of goods.
3. The services or work performed by the defendant shall be subject to removal of the trademark from the advertising materials and documentation.
4. Payment of compensation ranges from 10 000 rubles to 5 000 000 rubles. The amount for the infringement of an exclusive right shall be determined by the court.
5. Payment of compensation in 2 times the value of the goods on which the illegally used trademark is placed.
6. Payment of compensation at the rate of 2 times of the profit for the goods on which the illegally used trademark is placed, in case the goods could have been sold.

The infringer of the trademark rights for actions committed more than once or resulting in major damages may be subject to a penalty:

• levied a fine of 200,000 rubles or the offender's income for up to 18 months of work
• or compulsory works from 160 to 240 days;
• or correctional work for up to 2 years.

The court protection also provides that the infringer of the rights to the unregistered trademark in Russia may be punished by a fine of 200,000 rubles or the income of the infringer for multiple acts or acts resulting in a major damage:

• a fine of 120,000 rubles or income for a period of up to one year;
• or compulsory works from 120 to 180 days;
• or correctional labor for up to 1 year.

When infringement of the rights to a trademark registered or unregistered in Russia has been committed more than once or has caused major damage and, by prior conspiracy, the infringement has been committed by an organized group or by a group of persons, the following penalty may be imposed

• levied a fine of 100,000 to 300,000 rubles or the offender's income for a period of one to two years;
• or arrest from 4 to 6 months;
• or up to 5 years of imprisonment.

Trade mark protection abroad is also performed on the basis of the registration fact, but sometimes, as for example in the USA - on the basis of the proved fact of its use. Since the Paris Convention, special attention has been paid to the protection of well-known trademarks around the world.

A company (let's call it "Tettronim") sued "Tettronim-Neo" for alleged similarity to its trademark. Upon investigation, the court determined that the image used on the defendant's printed products differed greatly from the plaintiff's logo in form and color. On this basis, the suit was dismissed.