Recently, litigation on copyright, protection of their rights and business reputation in the network has been very popular. This is due to the legislation of the Russian Federation in the field of Internet and copyright, or rather, the complexity of its understanding and application. Laws are written in a flowery language, new regulatory documents appear every day and amendments are made to old ones. Users are not always clear what is possible on the Internet, and for which it is possible to incur administrative and sometimes criminal liability. However, ignorance of the law is no excuse.
Today we answer all your questions about intellectual property. Everything you wanted to know about intellectual property on the Internet. Ask ...Under the cut an example of a question and answer
Can a ban on the use of a domain name, as forbidden to use the name of a legal entity?
To begin with, we remembered the controversy between Avto.ru
Regarding this case, I
would like to note that the initial dispute was not about the domain name, but about the company name of the persons involved in civilian circulation. Claims - “prohibit the defendant to use the company name Avto.ru Limited Liability Company and the abbreviated company name Avto.ru LLC”
According to Art. 1474 of the Civil Code of the Russian Federation a
person has the exclusive right to use his company name as a means of individualization in any way that does not contradict the law (exclusive right to a company name), including by indicating it on signboards, forms, invoices and other documentation, ads and advertising, on goods or their packages.Clause 3 of
this article does not allow a legal entity to use a corporate name that is identical to the corporate name of another legal entity or similar to it to a degree of confusion, if the said legal entities carry out similar activities and the corporate name of the second legal entity was included in the unified state register of legal entities earlier than company name of the first legal entity.
Similar rules were in the legislation of the Russian Federation and at the time of registration of the plaintiff and the defendant. Thus, in accordance with Article 138 of the Civil Code of the Russian Federation
, a company name is a means of individualization of a legal entity and, by its legal position, is equated with the results of intellectual property. The use of means of individualization, which are the subject of exclusive rights, can be carried out by third parties only with the consent of the copyright holder.
According to clause 4 of article 54 of the Civil Code of the Russian Federation, a
legal entity that is a commercial organization must have a company name. A legal entity whose company name is registered in the established manner has the exclusive right to use it. A person who illegally uses another's registered company name must, at the request of the holder of the right to the company name, cease its use and compensate for the losses caused.
The Presidium of the Supreme Arbitration Court of the Russian Federation in paragraph 16 of the Information letter dated December 13, 2007 N 122
“ Review of the practice of arbitration courts in cases involving the application of intellectual property law
” indicated that a special procedure for registering a business name has not been developed. In the part that does not contradict the Civil Code of the Russian Federation, in the period up to 01/01/2008, the Regulation on the company was approved by the Decree of the CEC of the USSR and the Council of People's Commissars of the USSR of June 22, 1927, according to clause 10 of which the company name is not subject to special registration, regardless of the registration of a legal entity. Consequently, a company name is considered registered from the time of registration of the legal entity itself.
By virtue of clause 11 of the said Provision on the company, it is unlawful to use not only the identical, but also the similar company name by third parties.
The SAC made the right decision (DECREE of June 22, 2010 N 4819/10), returning the case to a new trial in the Moscow Arbitration Court in summer, due to the fact that the courts did not correctly assess the circumstances of the case, as in the current legislation the company name was protected from the moment of registration of the company, and the activities of both organizations are similar.
It should be noted that in this case, even if the court decides on the violation of the rights to the company name, then, in my opinion, this will not be enough for the registrar to unilaterally be able to cancel the domain registration, as in accordance with clause 6.3 . Provisions on the registration of second-level domain names in the RU domain. The registration of a domain name is canceled before the expiration of the registration if the court decision comes into force:
- recognizing the administration of the domain by its Administrator as a violation of the rights of the claimant;
- and (or) prohibiting the use in the domain name of the designation to which the claimant has rights.
As can be seen from the wording of the claim, it does not fall under any of the listed clauses of the Rules.
Now let’s dwell on the question: can we oblige to prohibit the use of a domain name? Yes, there is a practice of applying to the judicial authorities with similar claims. As a rule, this is connected with the protection of the rights to the company name, trademarks and other means of individualization. For example, Part 2. Art. 1484 of the Civil Code
provides that the exclusive right to a trademark can be exercised including by placing the trademark on the Internet, including in the domain name and other ways of addressing (a similar rule also exists for appellations of origin).
However, it should be noted that if the right to domain name arose earlier than the priority of the registered trademark, the designations cannot be registered as trademarks (paragraphs 3, part 9. Art. 1483 of the Civil Code of the Russian Federation
). Those. You can claim the domain name if the trademark is registered before the domain name.
At the same time, the situation is complicated by the use of foreign names in domain names. A striking example is the FAS Ural District Resolution dated October 13, 2009 No. F09-7738 / 09-C6 in case No. 60-10998 / 2009-C7
. When the court rejected the claim to ban the use of a domain name, including for the reasons that the Russian language is not used in the domain designation.
Also, difficulties arise in the protection of combined names, that is, the name consisting of several words. If only one word is used in a domain name, the court may recognize that it is being used legally. In this case, everything depends on the purpose for which the domain name is used and on what goods and services a trademark is registered with. An example of when a user was prohibited from using a domain name is the case set forth in the FAS Decree of the East-Siberian District of 03/16/2010 in case No.19-10074 / 08
. Thus, the courts are guided not only by the rules governing relations in the field of intellectual property, but also by the norms of other branches (sub-sectors, institutions) of law, in particular the rules of law aimed at protection against unfair competition.Ask your questions!