Is it illegal to reference a trademark on the internet?

It is an unavoidable reality of life that using the outcome of intellectual effort or a method of identification without the permission of the right holder is prohibited. Unauthorized use may be regarded as a violation of the exclusive right, resulting in legal liability. It’s worth noting that trademarks and service marks are used as means of identification. A trademark identifies the goods of legal entities or individual entrepreneurs, whereas a service mark identifies the work or services offered by them. The term trademark is used here for ease of comprehension.

Various well-known and not-so-well-known trademarks are frequently mentioned on various web resources, entertainment, and instructional sites. In this case, whether referencing a trademark on a website constitutes trademark infringement is debatable. Is it required for someone who wants to use a trademark in an Instagram post or reference a trademark of another person in a video to obtain permission from the right holder?

To grasp these concerns, recommend learning what constitutes an infringement of the exclusive right to a trademark from a legal standpoint, and first and foremost, understanding what is covered by the notion of the exclusive right to a trademark.

Is it illegal to reference a trademark on the internet?

According to paragraph 1 of Article 1484 of the Civil Code of the Russian Federation (hereinafter – the Civil Code, the Code): “The person in whose name the trademark is registered (the right holder) shall have the exclusive right to use the trademark by Article 1229 of the Civil Code of the Russian Federation in any manner not contrary to law, i.e., have the exclusive right to the trademark. The right holder may dispose of the exclusive right to trademark”. In pursuance of paragraph 2 of Article 1484 of the Civil Code:

“The exclusive right to a trademark may be exercised for identification of goods, works or services in respect of which the trademark is registered, in particular, by the placement of the trademark:

1. On goods, including labels, packages of goods produced, offered for sale, sold, demonstrated at exhibitions and fairs, or otherwise commercialized in the Russian Federation, or stored or transported for this purpose, or imported into the Russian Federation.
2. In the course of performing work and rendering services.
3. On documentation related to commercialization of goods.
4. Offers for sale of goods, the performance of work, rendering of services as well as announcements, signs, and advertisements.
5. On the Internet, including the domain name and other methods of addressing.”

The law-maker attributed the posting of the trademark on the Internet to one of the powers under the exclusive right to the trademark in subparagraph 5 of paragraph 2 of Article 1484 of the Civil Code.

At the same time, if we follow the general rule outlined in the Code regarding the procedure for disposing of the exclusive right, the right holder may, at its discretion, permit or prohibit others from using the result of intellectual activity or means of identification under subparagraph 2 of paragraph 1 of Article 1229 of the Civil Code. The lack of a restriction does not imply consent (permit).

At the same time, if we follow the general rule outlined in the Code regarding the procedure for disposing of the exclusive right, the right holder may, at its discretion, permit or prohibit others from using the result of intellectual activity or means of identification under subparagraph 2 of paragraph 1 of Article 1229 of the Civil Code. The absence of prohibition shall not be considered as consent (permit).

In any event, if someone wishes to utilize another person’s trademark elsewhere, they must first obtain permission from the right holder. Otherwise, there’s a chance you’ll be prosecuted. Everything is, in fact, a little different than it appears at first glance, and here’s why.

Under paragraph 3 of Article 1484 of the Code: “No one has the right to use, without the permission of the right holder, similar designations concerning goods for identification of which the trademark is registered, or similar goods, if there is a likelihood of confusion as a result of such use”.

The following are the list of the subject matter of proof in this category of disputes, according to a fairly broad court practice concerning the consideration of disputes linked to the defense of trademark rights:

• Claimant owning this right.
• Violation by the defendant by using the trademark or a designation similar to it to the extent of confusion with respect to goods (services) for the identification of which the trademark is registered, or similar goods (services), if there is a likelihood of confusion as a result of such use.

The essential in this case is the use of one of the ways covered by the exclusive right to a trademark for the identification of products or services, homogenous items or services about which the trademark is registered, rather than the mention of a brand itself.

In this regard, the use of words, including common names registered as word trademarks, is not a trademark use if it is done in common sense and not to identify a specific product, work, or service (including the methods listed in paragraph 2 of Article 1484 of the Civil Code), such as in written publications or speaking. A similar legal approach was reflected in paragraph 157 of the resolution of the plenum of the Supreme Court of the Russian Federation dated April 23, 2019, No. 10 on the application of Part Four of the Civil Code of the Russian Federation. (Hereinafter Resolution No. 10).

Based on the analysis of these legal rules, it should be concluded that use of the designation included in the scope of the trademark’s legal protection may be recognized as use for information purposes and does not constitute an infringement of trademark rights, provided that the following conditions are met:

1. Such designation is not used for the purposes of identification of a particular product or service (including the methods listed in paragraph 2 of Article 1484 of the Civil Code).
2. Such designation is used in a dictionary meaning.
3. Such designation is used in written publications or speaking.
4. Such designation does not create the likelihood of mixing, and as a result, does not mislead consumers about the business entities, their goods, and services, as well as the economic relationship between these entities.

It should be noted that a similar legal approach is set out in the decisions of the Court for Intellectual Property Rights dated July 16, 2018, case No. A33-25467/2016 and January 29, 2020, case No. A40-31460/2019.

As a result, the following is the answer to the question posed in the title of this article: A mere reference to a linguistic symbol that is part of someone else’s trademark and is the subject of a right defense, such as a webpage reference, does not constitute trademark infringement.  The point is that the verbal symbol has a verbal mark, used in its direct dictionary meaning and regardless of the goods and services for which the trademark is registered. Therefore, there is no need to ask permission of a right-holder to use the trademark to refer to it in the publication on a social network.

(As cited in zuykov.com)

AAA IPRIGHT – Global IP – Global Trademark Registration

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