Alienation of exclusive rights to trademarks in relation to part of the goods (services)

According to paragraph 64 of the Administrative Regulations for the provision by the Federal Service for Intellectual Property of state services for state registration of orders under an agreement with the exclusive right to an invention, utility model, industrial design, trademark, service mark, registered topology of an integrated circuit, a program for electronic computers, a database, approved by order of the Ministry of Economic Development of Russia dated June 10, 2016 No. 371, when checking the submitted documents for state registration of the transfer of rights to trademarks, Rospatent checks the documents’ compliance with the registration conditions specified, inter alia, in subparagraph “i” of paragraph 3 of the Rules for state registration of orders for exclusive the right to an invention, utility model, industrial design, trademark, service mark, registered topology of an integrated circuit, computer program, database under a contract and the transfer of the exclusive right to the specified results of intellectual activity without a contract, approved by the Decree of the Government of the Russian Federation of December 24, 2015 No. 1416, taking into account the provisions of Article 1488 of the Civil Code of the Russian Federation.

As stated in paragraph 2 of Article 1488 of the Civil Code of the Russian Federation and subparagraph “i” of paragraph 3 of the Rules, alienation of the exclusive right to a trademark under a contract is not allowed if it may cause misleading of the consumer regarding the person producing goods/services.

Alienation of the exclusive right to a trademark under a contract may be considered as misleading the consumer regarding the product in cases where it is carried out in relation to a trademark that is confusingly similar to a trademark in relation to homogeneous goods and services, the rights to which are retained by the original copyright holder.

The above norms are also taken into account when “dividing” trademarks, when a part of the goods (services) is alienated to the acquirer.

In this case, taking into account the division of the trademark, in the event of successful registration of such alienation, two different copyright holders will have the exclusive right to identical designations, which, in order to comply with the above rules, must be protected in relation to goods (services) that are not similar to each other.

Thus, for successful registration of the alienation of the exclusive right to a trademark in terms of goods/services, it is necessary that, as a result of such alienation, the consumer is not misled about the manufacturer of such goods/services, that is, cases where several right holders have similar/identical designations in the list of legal protection of which homogeneous goods/services are indicated.

It should be borne in mind that if there is a series of trademarks registered in relation to similar lists of goods/services, their division is possible only if all trademarks are its subject, that is, when analyzing the possibility of such division, its subject in fact, it will be a comparison of each item (good/service) subject to alienation from one sign with each item (good/service) not included in the subject of alienation.

The above analysis for the homogeneity of the shared lists of goods /services occurs according to the following rules.

Issues related to establishing the homogeneity of goods (services) are regulated in accordance with Rules No. 482, as well as in accordance with the explanations of the highest court specified in paragraph 162 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 N 10 “On the application of part four of the Civil Code of the Russian Federation".

In accordance with paragraph 45 of Rules No. 482, when establishing the homogeneity of goods, the fundamental possibility of the consumer having the idea that these goods belong to the same manufacturer is determined.

Complementarity or interchangeability of goods, conditions and channels of their sale (general place of sale, sale through a retail or wholesale network), circle of consumers and other signs are taken into account.

The conclusion about the homogeneity of goods is based on the results of an analysis of the listed characteristics in their totality if the goods or services, due to their nature or purpose, can be attributed by consumers to the same source of origin (manufacturer).

As stated in paragraph 4 of paragraph 162 of Resolution No. 10, the homogeneity of goods is established based on the fundamental possibility that an ordinary consumer of the corresponding product will have the idea that these goods belong to the same manufacturer. In this case, the court takes into account the type (type) of goods, their purpose, the type of material from which they are made, the conditions for the sale of goods, the circle of consumers, complementarity or interchangeability and other circumstances.

In practice, when carrying out such a division, there are frequent cases when some goods/services are homogeneous both with alienated positions and with positions retained by the copyright holders, which is why they cannot either be included in the subject of the transaction or not.

This situation often arises when dividing trademarks that are protected in relation to a wide range of goods and services, and this problem is solved either by changing the subject of the transaction, or by amending the trademark certificate in the form of a complete exclusion of the specified goods/services from its legal protection.

As an example, you can register a trademark under certificate of the Russian Federation No. 352936, in respect of which an agreement on the alienation of the exclusive right to all services of the 35th class of the ICTU was registered (No. RD0435112 dated 06/21/2023): for the alienation of the specified list of services, the right holder was from the list of legal protection the services of the 35th class of the ICGS “hotel business management ” were alienated, which could be recognized as homogeneous both with the services remaining with the copyright holder (the service of the 44th class of the ICGS “rest homes or sanatoriums”), and with the services alienated to the acquirer.

In this case, an analysis for the possibility of dividing trademarks must be carried out before submitting documents for registration of partial alienation for the reason that, as a rule, if homogeneity is detected, Rospatent sends a notification about the need to submit missing and (or) properly executed documents for consideration of the application, in which, however, does not indicate all the obstacles in registering partial alienation. This practice is common when dividing wide lists that have a large number of homogeneous connections.

However, the opinion on the presence/absence of homogeneity in non-obvious situations may differ not only among professional patent attorneys, but also among Rospatent experts, as well as judges of the Intellectual Property Rights Court and other arbitration courts.

For example, the homogeneity of the goods “beer” and “beer snacks” was established only by the Presidium of the Supreme Arbitration Court of the Russian Federation dated July 18, 2006 No. 2979/06 in case No. A40-63533/04.

Thus, even the analysis carried out before filing documents for division of a trademark (marks) does not guarantee the sending of a notification to Rospatent about the need to eliminate the detected homogeneity of the compared goods/services, but it can reduce the risk of such a notification.

Based on the foregoing, we can conclude that partial alienation of a trademark is possible only if the alienated part of the goods/services is not recognized as homogeneous to those goods/services that remain with the copyright holder.