How to protect yourself from branded trolls

_{Image taken from Wikimedia , the author - Gil. Distributed under the Creative Commons Attribution 2.0 Generic license.}

Hi, Habr! My name is Andrey, I am a lawyer in the field of intellectual property and IT-technologies.

Some time ago, the story of andrei_mankevich , the author of a mobile application, the implementation of the game Balda, was published on Habré, which was deleted on the basis of a complaint by the copyright holder of the respective trademark. Judging by the comments on this story, many wondered if it was possible to somehow restore justice and punish the troll.

In this regard, I want to talk about the possibilities offered by Russian law to protect against such actions.

To the note: “patent trolls” (“patent troll”) are persons purchasing or registering a patent for an invention, utility model or industrial design solely to demand remuneration from other persons for using the patent under the threat of a lawsuit. Such persons, as a rule, do not produce any useful product on the basis of the purchased patent.

For persons carrying out similar activities with trademarks and objects of copyright, the terms “trademark troll” (can be translated as “brand troll”) and “copyright troll” (“copyright troll”, “copyitroll”) are used respectively.
Next, I will talk about branded trolls - individuals who register or buy trademarks in order to earn on the presentation of claims and lawsuits.

Bit of legal education

A trademark is a designation used for the individualization of the goods of persons engaged in entrepreneurial activity. The designation used to customize services, respectively, is called a service mark. This designation can be any text, graphic, three-dimensional, and even in the form of a video, smell, or a tangible object. A trademark may also consist of a combination of different forms. The most common are verbal and pictorial trademarks, as well as trademarks, which include a combination of a verbal and pictorial element.

In Russian law, trademarks and service marks are regulated equally, therefore I will use the term “trademark” later, meaning also the service mark.
The trademark is subject to registration by the specialized state body - Rospatent. After registration, a person in whose name a trademark is registered has the exclusive right to use the trademark in any way it chooses, and also to prohibit all third parties from using the same.

In order to avoid the exclusive use of a certain designation in all spheres of activity, the law provides for the need to register a trademark in relation to pre-defined goods and services. For convenience and for compatibility with international trademark registration systems, most countries (including Russia) use a single International Classification of Goods and Services (ICGS), in which goods and services that are similar in some characteristics are grouped into classes (currently, 45 ). A version of MKTU from Rospatent with classification and a simple search is available here .

Theoretically, a trademark can be registered in all classes, but in practice:

1. For each type of goods or similar goods there should not be the same or similar designation. In addition, the registered designation should not mislead the consumer regarding the source of origin and must comply with other requirements of the law - again, for each type of goods;
2. The fee for registering a trademark is calculated based on the number of classes;
3. If a trademark is not used for 3 years with respect to each type of goods and services, then its registration for unused goods and services can be terminated at the request of the interested person (no one will refund you and the costs will not be reimbursed).

The law explicitly states that “no one has the right to use, without the permission of the copyright holder, designations similar to his trademark in relation to goods for which the trademark is registered to be individualized, or similar goods, if such use creates the likelihood of confusion”

Passive protection: is there a violation?

Based on the provisions of the law, the following signs of violation of the right to a trademark can be distinguished:

1. A designation identical to or similar to a trademark is used;
2. The designation is used on goods for which a trademark is registered, or homogeneous with them;
3. As a result, there is a likelihood of mixing goods in the eyes of consumers.

Accordingly, in the absence of at least one of these three signs, the use of the designation is not considered a violation.

There is one exception associated with well-known trademarks - they can not be used even with respect to heterogeneous goods and services, if the consumer has an association that these goods and services are related to the copyright holder. But recognition of a trademark as well-known occurs on the basis of a special decision of Rospatent, and only if the trademark has indeed become well-known. In Russia, there are now slightly more than 200 registered: these include, for example, the text designation “KASPERSKY” , the Beeline logo, the Yandex logo. Trolls generally do not have rights to well-known trademarks.

When checking all three signs of a violation, it is quite convenient to use the Rospatent manual relating to the registration of trademarks. It provides detailed, illustrated with examples and jurisprudence recommendations on how to determine the homogeneity of goods and services and establish the possibility of confusion in the eyes of the consumer.

Let's look at the question of the presence or absence of a violation by the example of the above story with the “Balda” trademark.

_{Information about the trademark "Balda" from public registers of the Federal Institute of Industrial Property (FIPS)}

The trademark "Balda" is registered in the register of trademarks under the number 635443 in the name of LLC "Parity Lift". It appears, apparently, the designation in text form.

Did the author of the post use an identical designation for the name of his game? Yes, I used it - the name of the application was completely identical to the registered trademark. Accordingly, the first sign of a violation is available.

We look information about registration further. The trademark "Balda" is registered in respect of a number of goods and services relating to the 9th and 42th classes of the MKTU.

According to the 9th class of MKTU, the trademark is registered in relation to the following goods: “scientific, marine, geodesic, photographic, cinematographic, optical instruments and tools for weighing, measuring, signaling, controlling (checking), saving and training; instruments and tools for the transmission, distribution, transformation, accumulation, regulation or control of electricity; equipment for recording, transmission, reproduction of sound or images; magnetic media, audio recording discs; vending machines and mechanisms for prepaid devices; cash registers, counting machines, information processing equipment and computers; equipment to extinguish the fire.

Is it possible to say that the computer game distributed under the designation "Balda" is homogeneous in at least one of the goods for which a trademark is registered? In my opinion, no. Rospatent in its management directly indicates that the belonging of goods to one class of MKTU does not indicate their homogeneity - it is important to look precisely at the generic and species belonging of goods (and even goods belonging to one type can be recognized as heterogeneous). And the software and especially computer games have nothing to do with any of the goods in class 9 of the MKTU, for which the “Balda” trademark is registered.

In class 42, the trademark is registered for the following services: chemical analysis; arbitration; architecture; study of technical projects; engineering; technical studies; consultations in the field of computer equipment; advice on intellectual property issues; maintenance software; the creation and maintenance of websites for third parties; software development; copyright management; legal services; engineering expertise.

Here on the list there are, at first glance, services that are close in meaning: “software development”, “maintenance, technical software”. But this does not mean that these services are homogeneous product “software” and even more so “computer games”.

In 2006, the Supreme Arbitration Court, considering the case of the beer producer Nevskoye challenging the AMRO Nevskoye trademark, recognized the uniformity of the goods “beer” and “nuts” and made the following conclusion:

Homogeneity is recognized in fact, if the goods, due to their nature or purpose, can be attributed by consumers to the same source of origin.

This conclusion was cited in the review of jurisprudence on the intellectual rights of the Supreme Court in 2015, and is still used by the courts.

“Software development” as a service, and not as a production process, implies the creation of software on order and for the purposes of third parties. The recipients of this service in most cases are legal entities and entrepreneurs. At the same time, the “computer game” product is aimed at ordinary users - individuals. Accordingly, since the range of consumers and the methods of selling goods and services are different, consumers will not be able to attribute these goods and services to the same source of origin, which means that this product and service are not homogeneous. The second sign is missing.

The third sign - the mixture of goods in the eyes of the consumer. With regard to mobile applications in the Play Market or the App Store, which have the same name, the probability of mixing is extremely small, since application stores are designed in such a way that the most powerful and eye-catching element is the application icon, not its name. In addition, the author is listed next to each application on Google Play.

_{Screenshot from Google Play. It is unlikely that a consumer will consider all these applications as works of one author, despite the fact that they all have the word “Sudoku” in the title.}

In the author's Sore App, however, you can only see it when viewing the application itself, but nevertheless, the user will see it before downloading the application.

_{Screenshot from the App Store. Although the author is not indicated when searching for applications, the user still sees different icons and does not perceive applications belonging to the same author, despite the common element in the title.}

_{But when viewing the application description in the App Store, the user already sees the author.}

That is, the probability that a consumer, when viewing applications in the Play Market or the App Store, will count applications with the same name belonging to the same author, is absent.

Accordingly, the likelihood of mixing two mobile games "Balda", if they have different application icons, in the eyes of the user, most likely will not occur - the third sign of a violation is also absent.

It turns out that, although the author of the corresponding game used the designation “Balda” in its name, there is no violation in this use, since the trademark is not registered in relation to computer games and software as a whole, and due to the arrangement of application stores, the consumer does not mix applications with the same name.

What with the above can be done in practice?

First, if, as in the case of Balda, a mobile application was deleted from Google Play or the App Store, appeal to Google or Apple , respectively.

To file an appeal, you must log in to your Google or Apple account. In justifying the appeal, you can use the arguments outlined above.

Secondly - to use this argument if the dispute with the troll comes to court.
Of course, the court may come to another conclusion, given the fact that all three criteria of violation are quite subjective, as well as merciless judicial discretion. But the chances for this, in my opinion, are small.

Active protection: challenging trademark registration

Let's imagine that the aforementioned “Balda” trademark would be registered for the goods “software” or, even better, “computer games” (the author claims that the trademark was subsequently registered for these goods, but I do not see such registration ).

In this case, one could say that the trademark is registered in violation of the requirements of the law, namely clause 1 and 2 of article 1483 of the Civil Code of the Russian Federation:

1. The designation consists only of elements that are included in the general use for certain types of goods. In this situation - the word "Balda" was included in general use to refer to games based on appropriate mechanics - both computer and desktop, by analogy, for example, with Sudoku.
2. The designation consists only of elements that are generally accepted symbols or terms. Again, as applied to this situation, the word “Balda” is used as a term to refer to the relevant rules and mechanics of the game.

If a trademark is registered in violation of the requirements of the law, then its registration can be challenged. Moreover, in a situation where a trademark violates the requirements of paragraphs 1 and 2 of Article 1483 of the Civil Code of the Russian Federation mentioned above, the registration of a trademark can be challenged during the entire term of the exclusive right to a trademark.

As an illustration of challenging the registration of a trademark in the first paragraph, the case of the trademark “dichlorvos” can be considered.

Dichlorvos (according to Wikipedia) is the abbreviation for a complex organic compound (C ₄ H ₇ Cl ₂ O ₄ P), which has been used for a long time to kill insects. Accordingly, the designation "dichlorvos" has become widely known in this quality.

A certain company, KrymBytHim, has registered the designation “dichlorvos” in relation to drugs for the destruction of parasites and pests (5th grade of ICGS). Other insecticide manufacturers appeared to be upset, and in 2017 one of the manufacturers filed an objection to the provision of legal protection to such a trademark.

Rospatent, and later the Intellectual Property Rights Court, decided to terminate the legal protection of the trademark, since it contradicts, inter alia, clause 1 of Article 1483 of the Civil Code of the Russian Federation. The court considered as proven the fact of long-term use of the designation “dichlorvos” in relation to insect control agents on the basis of “publicly available reference and reference sources posted on the Internet” and documents submitted by the parties. The court found that the designation "dichlorvos" was widely used in the USSR, long before the registration of a trademark.

In what way could one prove that the designation "Balda" entered the universal use of goods of a certain type? One can imagine, first, the data of the sites of stores where the corresponding game is sold, for example, OZON , Mosigra . You can ask the manufacturers of these games about when they sell the same game. You can also get information about the date of registration of the relevant mobile applications (information about this is stored at Google and Apple, despite the fact that the applications themselves are removed from the stores). In general, any evidence that would allow the mass use of a symbol to identify the relevant goods prior to registration of a disputed trademark will do.

On the second basis for the termination of registration of a trademark, the following interesting case of 2016 can be considered.

In 2013, M-Group attempted to register the designation “BITCOIN” as a trademark for a wide range of services of 36 and 38 classes of ICGS: financial and telecommunication services, respectively. By the way, I do not want to say anything bad about this company, but judging by the number and range of services declared for registration, the company hardly planned to provide all these services under the designation “BITCOIN”.

In any case, Rospatent refused to register the trademark, referring to the fact that the word “BITCOIN” is a generally accepted term for the corresponding virtual currency and payment system. The company disagreed with the decision of Rospatent and appealed to the court.

The company's arguments boiled down to the fact that the conclusions of Rospatent on the origin of the word “BITCOIN” are based on unreliable sources of information posted exclusively on the Internet: Wikipedia, online dictionaries, the newspaper Kommersant and the magazine Forbes and others.

The court on intellectual rights refused to overturn the decision of Rospatent, stating that the Internet is a publicly available source of information containing equivalents of scientific, technical and reference books, periodicals and dictionaries. And the decision of Rospatent provided enough references to various materials confirming the breadth of the use of the word “BITCOIN” to denote the corresponding virtual currency and payment system.

Accordingly, if we had to prove that the word “Balda” is a generally accepted term for the mechanics and rules of the game, we could refer to the corresponding Wikipedia article, the number of the journal in which the rules were first published, various websites containing a description games.

To terminate the legal protection of a trademark on the grounds listed above, an appropriate objection must be made and filed with Rospatent. For the above reasons, any person may file an objection during the entire term of the trademark right. You can file an objection in person or through a patent attorney.

In the event that Rospatent refuses to terminate the legal protection of a trademark, the Rospatent decision may be appealed to the Intellectual Property Court (and further on instances).

Unfair competition

As I said above, patent trolls use trademarks not for the purpose of protecting and developing their business, but only with the intention of demanding compensation from other persons using the designation. Sometimes it is different (as in the same story with “Balda”) - a trademark is used in order to clear the market and promote your product - a mobile application, for example.

All such actions are fully covered by the concept of “unfair competition”.

Unfair competition is any action that meets the following criteria:

1. Aims to obtain benefits in the implementation of business activities;
2. Contradicts legislation or business rules, or the requirements of reasonableness, good faith and fairness. Please note that actions may be formally legal, but at the same time contrary to good business practices;
3. Able to cause damage to other competitors or damage their business reputation. At the same time, any persons are considered competitors, including non-profit organizations and ordinary citizens engaged in any income-generating activity (other than labor).

Although unfair competition can be recognized as any activity that meets the above criteria, the law identifies several of its varieties, in particular unfair competition related to the acquisition and use of means of individualization (article 14.4 of the Law on Protection of Competition).

For unfair competition using a trademark, the Federal Antimonopoly Service may fine an offender and issue binding instructions to terminate such actions. In addition, the recognition of actions to acquire and use a trademark as unfair competition is an independent basis for the termination of the legal protection of a trademark (in the order I described above).

A typical example of unfair competition is the case of the BLACK FRIDAY trademark.

In 2016, Black Fraydey registered the corresponding trademark BLACK FRIDAY, issued 52 domain names, including the designation BLACK FRIDAY, and then began sending letters demanding compensation for violating the right to trademark to other persons using the corresponding designation. One of the recipients of such letters turned out to be a company - a representative of the Association of E-commerce Companies (Ozon, Yulmart, Citylink, M. Video, Eldorado and many other companies are included).

As a result, the Association itself appealed to the antimonopoly service with a statement recognizing Black Friday’s actions as unfair competition - and the antimonopoly service granted the Association’s statement. The granting of legal protection to the BLACK FRIDAY trademark was declared invalid by Rospatent.

Black Friday has tried to challenge the decision of the anti-monopoly service at the Court of Intellectual Property Rights, but the court left this decision in force, indicating, in particular, that:

1. The designation “BLACK FRIDAY” was widely used before the trademark registration date to signify Friday after Thanksgiving, the traditional day for the start of Christmas sales in the United States. The designation in this capacity has become widespread throughout the world;
2. The designation “BLACK FRIDAY” is used by many individuals, including online retailers in their sales organization;
3. After registration of the relevant trademark, Black Freide began to make massive demands to cease trademark infringement in order to harm competitors and drive them out of the market.

Accordingly, the court found that there are all signs of unfair competition in the company's actions: they are aimed at obtaining advantages in commercial activities (by receiving compensation and forcing competitors out of the market), contradict the requirements of good faith and are capable of causing damage to others.

How can one recognize the actions of a person as unfair competition? The law allows for the possibility of filing a similar application both immediately to the court and first to the Federal Antimonopoly Service, but contacting the antimonopoly service is often simpler and faster. An application to the antimonopoly service is submitted in a free form, and for some time it may be filed through the state services.

findings

In conclusion, I would like to say the following. Publicity is good and useful, but you need to fight brand and other trolls with their own weapons - on the basis of the law.

A typical arsenal in the fight against the troll may include the following actions:

1. Checking the nuances of registration of a disputed trademark, the presence of a violation. If necessary, appropriate explanations are provided to app stores;
2. Making a statement about the presence in the actions of the troll unfair competition;
3. Challenging the granting of legal protection to a troll trademark.

By the way, if there is reason to believe that the patent troll itself committed a violation, for example, the copyright of a computer program, the design of a mobile application was violated, as in the case described by the author of the game “Balda”, then you can, firstly, send a response complaint to Google and Apple, and, secondly, also to go to court on this basis.

Sources

I deliberately tried to avoid references to legislation and judicial practice in the article itself, so that it was easier to read. — , :

1. « ( )» 18.12.2006 № 230- — , . 1477 — 1515;
2. 26.07.2006 № 135- « » — , ;
3. 22.04.2003 № 56 « » — , , ;
4. 24.07.2018 № 128 « , , , , , » — ;
5. 18.07.2006 № 2979/06 № 40-63533/04-67-642 — «» ;
6. 14.09.2018 № 01-659/2018 № -672/2017 — ;
7. 07.09.2016 № -368/2016 — ;
8. 14.05.2018 N 01-190/2018 № -491/2017 — « ».