Is the trademark owner always right?
In October last year, a local scandal connected with the unofficial Nokia company group took place in the Vkontakte social network. By that time, the group, created in 2007, already had over a million members and had a “beautiful” domain name “nokia.vkontakte.ru”. As a result of negotiations between representatives of the company and social network staff, this domain came under the control of Nokia, and now the “official” group is already there. The group at that time had more than a million members, and that they all thought about Nokia, you can easily imagine. In general, such ill-conceived actions rather hurt the company's image.
The lame analogy “Competition” between a trademark and a domain name dates back to the times when domains were not provided for in Russian legislation. However, the practice required - and the courts began to adjudicate on such disputes, creating precedents in the literal sense of the word, although we have the right and not a precedent. However, the analogy between the domain and the TK on closer examination begins to look flawed. In order to understand why this happens, you need to understand the nature of both. A trademark is a designation whose task is to identify a specific product or service. Some features of its use are connected with it.
For example, there is a special classifier, MKTU ("International Classifier of Goods and Services"), which divides goods and services into classes. A trademark is registered for certain classes to identify certain types of goods. And in different classes the same word can be registered as TK. At the same time, there are restrictions on what words and designations can be registered for the individualization of certain goods. For example, an image of an apple cannot be made a trademark for fruit, since an image “does not have a distinctive ability” to identify such services. At the same time, it can be made an element of a sign registered in this area, but such an element will not be protected separately.
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But in some other areas an apple can easily be made a trademark. For example, for computers, an example of which is the famous company Apple. Or in the music field, as illustrated by the less well-known record company Apple, founded by The Beatles and now engaged in the release of records exclusively of this group. When the “computer” Apple began selling song files in its iTunes store, it had friction with Apple’s “music”, which, however, were safely eliminated during the negotiations.
This is a non-standard situation: usually trademarks are registered in such a way as to prevent such. Therefore, such conflicts arise either when the registering authority oversaw something when registering a mark, or here in such exceptional cases: when both trademarks appeared, the sale of musical records using computers was something of a fantasy ... A trademark is registered on the territory of a particular country, or according to the international system, when the application is filed with the Russian Patent Office, and it already sends documents to patent offices of other countries.
However, TK can only be registered in countries that are parties to an international registration agreement, that is, in the end, registration is still limited to the borders of specific countries. Now, knowing these features, one can easily notice that the analogy between domains and trademarks is initially defective. The domain and the site that is associated with it can be viewed from anywhere in the world, and the trademark not only operates within the country, it is also limited to specific groups of goods.
A trademark can be not only “verbal”, as a domain - it can be an image that includes a certain word. If this word is an “unprotected element”, like “apple” for fruits, then there can be several TK in one area, this word is used. Much closer to the trademark is the so-called “commercial designation”, which serves to individualize certain places: commercial, industrial and other enterprises. In the same way, a domain name is used to individualize “places” on the Internet. However, the courts, due to domain names, are associated with two other types of means of individualization: the mentioned trademarks and the "brand names" described in Chapter 72 of the Civil Code. Both TK and the “name” appeared before the adoption of the fourth part of the Civil Code, and the “domain” courts at that time were associated with them. Then the legislator entered the domains in the then trademark law, and then rewrote most of the rules from there, thereby securing our “lame analogy” forever.
The Kodak Affair
In order to understand the general principles by which “domain” cases are considered, it is best to start from the very beginning: one of the first such cases, which concerned the domain name “kodak.ru”. This case was considered back in 1999, when the then law “On Trademarks ...” did not have any “domain names”. So the courts had to resolve this dispute on the basis of the general principles of legislation, which were then enshrined in law in an explicit form.
So, a certain entrepreneur registered the domain name “kodak.ru” for himself, which, as you understand, did not like Eastman Kodak. A lawsuit was filed to an arbitration court, in which the claimant argued that the use of the company's name by the defendant as the domain name leads to misleading consumers, and requested that the defendant be prohibited from using the trademark. However, the court rejected the claim, substantiating its decision by saying that the domain is neither a trademark, nor a commodity, nor a service.
The plaintiff decided to appeal the decision, but the fiasco was waiting for him here too. In addition to the same argument “domain is not a trademark”, the appellate court applied the rule of the so-called “exhaustion of rights”. The fact is that the defendant also sold Kodak goods, of course, not counterfeit, but those produced by Kodak itself. For such cases, the law provides for the restriction of the exclusive right to a trademark when it can be used without the consent of the copyright holder. The condition is simple: “Registration of a trademark does not entitle the right holder to prohibit others from using this trademark in relation to goods that were entered into civil circulation on the territory of the Russian Federation directly by the right holder or with his consent.” This is a quote from article 23 of the Law On Commodity signs ... ", now a similar condition is contained in Article 1487 of the Civil Code.
The meaning of "exhaustion" is to give market participants a certain degree of freedom when handling goods and services: if the seller has bought a "legal" product, he can resell it without asking permission from the manufacturer or copyright holder of the trademark. If the law did not provide for such a right, permission for such a sale would have to be asked separately, and if, for example, the manufacturer wanted to annoy the seller, he could simply not give such permission and block the sale of goods. So, the appeals court decided that, once the domain owner sells Kodak products through the site associated with it, then this very “depletion” occurred, and the domain owner has the full right to use it to designate “original” goods. Kodak filed a cassation complaint, and also unsuccessfully. But the perseverance of her lawyers was nevertheless rewarded: upon further appeal, the case was transferred to the Presidium of the Supreme Arbitration Court. The most complex cases are handed over for consideration, and the decisions of the Presidium have a great influence on the practice of all arbitration courts.
The case was referred to the Presidium on the protest of the Deputy Chairman of the Supreme Court of Arbitration, in which he described the violations that, in his opinion, were committed during the consideration of the case by previous instances. They consisted of the following: firstly, the courts, when considering the case, proceeded from the fact that, since the domain is not provided for by law, its use cannot violate trademark rights. However, the law does not limit the ways in which TK can be used, so there were no obstacles to considering the registration of a “beautiful” domain to be a violation. Secondly, since the registration of domains is carried out without prior arrangement, and the domain goes to the first applicant, Kodak now, according to the court, is deprived of the opportunity to register the same domain name for itself (given the existence of other domain zones and third-level domains - The conclusion is indisputable, frankly).
In general, the Presidium of the Supreme Arbitration Court returned the case for consideration “from the beginning,” to the court of first instance, which made the decision to stop the respondent’s use of the domain name. According to the court, he abused the right to “exhaustion of rights”, provided for by Article 23 of the Law “On Trademarks ...” (“Abuse of Law” is a formulation from civil law, indicating that a person uses his right solely with the intention to cause someone that harm). In addition, according to the court, the actions of the defendant prevented the plaintiff from registering a similar trademark (which is not at all surprising).
This is one of the first such decisions, and now the issue of “conflicts” between the TK and the domain has been considered in more detail by the courts. But even in this example, one can see the general principles by which such disputes are now resolved. And the main question in their consideration is to find out whether the rights of the owner of the trademark are violated by the actions of the site owner. It is quite possible that they are not violated ... And if we return to the beginning, to the case of the Vkontakte group, now the rightness of Nokii will not look so definite at all. Indeed, the group used the company's trademark, but only to identify the area of ​​the site in which its products were discussed. Such use can be qualified as “exhaustion of rights”. The existence of the group does not interfere with the use of the “full-fledged” domain name “nokia.ru” ... So, if in the actions of the owners of the group it wasn’t found, as in the case of Kodak, “abuse of right”, then the chances of Nokia to sue the controversial subdomain, if it came to court, they would look quite unsteady and ephemeral. Perhaps that is why the case did not come to court ...
The lame analogy “Competition” between a trademark and a domain name dates back to the times when domains were not provided for in Russian legislation. However, the practice required - and the courts began to adjudicate on such disputes, creating precedents in the literal sense of the word, although we have the right and not a precedent. However, the analogy between the domain and the TK on closer examination begins to look flawed. In order to understand why this happens, you need to understand the nature of both. A trademark is a designation whose task is to identify a specific product or service. Some features of its use are connected with it.
For example, there is a special classifier, MKTU ("International Classifier of Goods and Services"), which divides goods and services into classes. A trademark is registered for certain classes to identify certain types of goods. And in different classes the same word can be registered as TK. At the same time, there are restrictions on what words and designations can be registered for the individualization of certain goods. For example, an image of an apple cannot be made a trademark for fruit, since an image “does not have a distinctive ability” to identify such services. At the same time, it can be made an element of a sign registered in this area, but such an element will not be protected separately.
')
But in some other areas an apple can easily be made a trademark. For example, for computers, an example of which is the famous company Apple. Or in the music field, as illustrated by the less well-known record company Apple, founded by The Beatles and now engaged in the release of records exclusively of this group. When the “computer” Apple began selling song files in its iTunes store, it had friction with Apple’s “music”, which, however, were safely eliminated during the negotiations.
This is a non-standard situation: usually trademarks are registered in such a way as to prevent such. Therefore, such conflicts arise either when the registering authority oversaw something when registering a mark, or here in such exceptional cases: when both trademarks appeared, the sale of musical records using computers was something of a fantasy ... A trademark is registered on the territory of a particular country, or according to the international system, when the application is filed with the Russian Patent Office, and it already sends documents to patent offices of other countries.
However, TK can only be registered in countries that are parties to an international registration agreement, that is, in the end, registration is still limited to the borders of specific countries. Now, knowing these features, one can easily notice that the analogy between domains and trademarks is initially defective. The domain and the site that is associated with it can be viewed from anywhere in the world, and the trademark not only operates within the country, it is also limited to specific groups of goods.
A trademark can be not only “verbal”, as a domain - it can be an image that includes a certain word. If this word is an “unprotected element”, like “apple” for fruits, then there can be several TK in one area, this word is used. Much closer to the trademark is the so-called “commercial designation”, which serves to individualize certain places: commercial, industrial and other enterprises. In the same way, a domain name is used to individualize “places” on the Internet. However, the courts, due to domain names, are associated with two other types of means of individualization: the mentioned trademarks and the "brand names" described in Chapter 72 of the Civil Code. Both TK and the “name” appeared before the adoption of the fourth part of the Civil Code, and the “domain” courts at that time were associated with them. Then the legislator entered the domains in the then trademark law, and then rewrote most of the rules from there, thereby securing our “lame analogy” forever.
The Kodak Affair
In order to understand the general principles by which “domain” cases are considered, it is best to start from the very beginning: one of the first such cases, which concerned the domain name “kodak.ru”. This case was considered back in 1999, when the then law “On Trademarks ...” did not have any “domain names”. So the courts had to resolve this dispute on the basis of the general principles of legislation, which were then enshrined in law in an explicit form.
So, a certain entrepreneur registered the domain name “kodak.ru” for himself, which, as you understand, did not like Eastman Kodak. A lawsuit was filed to an arbitration court, in which the claimant argued that the use of the company's name by the defendant as the domain name leads to misleading consumers, and requested that the defendant be prohibited from using the trademark. However, the court rejected the claim, substantiating its decision by saying that the domain is neither a trademark, nor a commodity, nor a service.
The plaintiff decided to appeal the decision, but the fiasco was waiting for him here too. In addition to the same argument “domain is not a trademark”, the appellate court applied the rule of the so-called “exhaustion of rights”. The fact is that the defendant also sold Kodak goods, of course, not counterfeit, but those produced by Kodak itself. For such cases, the law provides for the restriction of the exclusive right to a trademark when it can be used without the consent of the copyright holder. The condition is simple: “Registration of a trademark does not entitle the right holder to prohibit others from using this trademark in relation to goods that were entered into civil circulation on the territory of the Russian Federation directly by the right holder or with his consent.” This is a quote from article 23 of the Law On Commodity signs ... ", now a similar condition is contained in Article 1487 of the Civil Code.
The meaning of "exhaustion" is to give market participants a certain degree of freedom when handling goods and services: if the seller has bought a "legal" product, he can resell it without asking permission from the manufacturer or copyright holder of the trademark. If the law did not provide for such a right, permission for such a sale would have to be asked separately, and if, for example, the manufacturer wanted to annoy the seller, he could simply not give such permission and block the sale of goods. So, the appeals court decided that, once the domain owner sells Kodak products through the site associated with it, then this very “depletion” occurred, and the domain owner has the full right to use it to designate “original” goods. Kodak filed a cassation complaint, and also unsuccessfully. But the perseverance of her lawyers was nevertheless rewarded: upon further appeal, the case was transferred to the Presidium of the Supreme Arbitration Court. The most complex cases are handed over for consideration, and the decisions of the Presidium have a great influence on the practice of all arbitration courts.
The case was referred to the Presidium on the protest of the Deputy Chairman of the Supreme Court of Arbitration, in which he described the violations that, in his opinion, were committed during the consideration of the case by previous instances. They consisted of the following: firstly, the courts, when considering the case, proceeded from the fact that, since the domain is not provided for by law, its use cannot violate trademark rights. However, the law does not limit the ways in which TK can be used, so there were no obstacles to considering the registration of a “beautiful” domain to be a violation. Secondly, since the registration of domains is carried out without prior arrangement, and the domain goes to the first applicant, Kodak now, according to the court, is deprived of the opportunity to register the same domain name for itself (given the existence of other domain zones and third-level domains - The conclusion is indisputable, frankly).
In general, the Presidium of the Supreme Arbitration Court returned the case for consideration “from the beginning,” to the court of first instance, which made the decision to stop the respondent’s use of the domain name. According to the court, he abused the right to “exhaustion of rights”, provided for by Article 23 of the Law “On Trademarks ...” (“Abuse of Law” is a formulation from civil law, indicating that a person uses his right solely with the intention to cause someone that harm). In addition, according to the court, the actions of the defendant prevented the plaintiff from registering a similar trademark (which is not at all surprising).
This is one of the first such decisions, and now the issue of “conflicts” between the TK and the domain has been considered in more detail by the courts. But even in this example, one can see the general principles by which such disputes are now resolved. And the main question in their consideration is to find out whether the rights of the owner of the trademark are violated by the actions of the site owner. It is quite possible that they are not violated ... And if we return to the beginning, to the case of the Vkontakte group, now the rightness of Nokii will not look so definite at all. Indeed, the group used the company's trademark, but only to identify the area of ​​the site in which its products were discussed. Such use can be qualified as “exhaustion of rights”. The existence of the group does not interfere with the use of the “full-fledged” domain name “nokia.ru” ... So, if in the actions of the owners of the group it wasn’t found, as in the case of Kodak, “abuse of right”, then the chances of Nokia to sue the controversial subdomain, if it came to court, they would look quite unsteady and ephemeral. Perhaps that is why the case did not come to court ...
Source: https://habr.com/ru/post/112964/
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