In which cases I can lose my exclusive rights to a trademark within the 10 years while its registration is valid?
► Continuous non-use of the trademark by the rights holder for 3 years.
Today, this reason is especially relevant, since trademarks may not be used due to circumstances beyond the control of the rights holder, such as importban, sanctions, a company crisis and other reasons.
As states the Article 1486 of the Civil Code of the Russia, the possibility of filing an application for early termination of legal protection of a ™ due to its non-use to the Chamber of Patent Disputes depends on whether the applicant is acknowledged as “interested person”.
Besides the legal significance, registration of a ™ requires to be used by the owner. The possibility of early termination of legal protection of a ™ serves as a tool to prevent the monopoly on designations that are not used by owners to individualize products. The principle of mandatory use of a ™ is used as a condition for maintaining rights to it and is aimed to stimulate the intensive use of ™ in turnover.
We note, that the application can be submitted only by the interested persons. Thus, the legitimate interest in terminating the legal protection of an unused ™ have only producers of goods & services in respect of which (or similar ones) an application for early termination of the protection of a ™ has been filed, and those who intend to actually use this ™ or a confusingly similar designation in civil circulation to individualize their products.
The presence or absence of interest of the applicant is checked by the panel of the Chamber for Patent Disputes during the meeting. The board must determine whether the applicant can act as an interested person and whether the papers submitted do confirm his interest. Otherwise, the consideration of the application is discontinued.
ATTENTION: the burden of proving the use of a ™ lies with the rights holder, who must provide evidences of use of the ™. If the authorities are not satisfied with the evidence provided, the owner may refer to circumstances beyond his control that prevent the use of the ™ such as references to imposition of sanctions by the government, import restrictions and other measures hindering the use of a ™ .
In this case, the risk of early termination of the ™ validity can likely be avoided.
► Rights tranfer to the trademark to the legal successor without concluding an agreement with the owner.
► Trademark use on goods that do not have uniform characteristics.
►.Trademark transformation into a designation in common use.
Contact us on ™ issues:
+7 (495) 540 44 57