In Russian IP law, a trademark is one of the key tools for the individualization of goods and services. However, in practice, situations often arise when the legal protection of a trademark has already been terminated, but at the same time interested parties seek to challenge the very fact of its provision. 

In this case, a fundamental question arises: is it permissible to invalidate the provision of legal protection of a trademark if at the time of filing an objection or consideration of the dispute, such protection has already been terminated? At first glance, this question may seem devoid of practical significance: if the law has ceased, then why dispute its existence? However, a deeper analysis shows that the effects of trademark registration may persist after its termination. 

Early termination of legal protection of a trademark 

The grounds for early termination of the legal protection of a trademark are listed in Article 1514 of the Civil Code of the Russian Federation. Such grounds include: 

• Termination of the legal protection of the trademark due to its non-use for three years; 

• Termination of the legal entity or the death of the citizen (the right holder), if there are no grounds for universal succession (inheritance, reorganization of the legal entity); 

• Waiver of the right to the trademark by the right holder; 

• Transformation of a trademark into a designation that has come into general use as a designation of goods of a certain type; 

• If the trademark is registered in accordance with Paragraph 7 of Article 1483 of the Civil Code, termination of the right to use the relevant geographical indication or appellation of origin of the goods; and 

• In other cases, provided for by this article. 

The key point of termination of the legal protection of a trademark on the grounds provided for in Article 1514 is the termination of the exclusive right to the trademark for the future (Paragraph 174 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). 

Since the legal protection of a trademark is terminated for the future, this means that the right is terminated from the moment of the occurrence of the relevant legal fact or the decision of the competent authority, but does not affect the legitimacy of the existence of the right in the past. 

The idea of such a legal consequence is that the termination of legal protection for the future does not call into question the legality of the registration of the trademark as a whole and does not affect the rights already exercised. 

Invalidation of the provision of legal protection of a trademark 

Other legal consequences follow the invalidation of the provision of legal protection of a trademark on the grounds enshrined in Article 1512 of the Civil Code of the Russian Federation, which, among other things, include: 

• Loss of distinctiveness of the trademark; 

• The trademark is false or capable of misleading the consumer regarding the product, its manufacturer or place of production; 

• The trademark is contrary to the public interest, the principles of humanity and morality; 

• The trademark is identical or confusingly similar to applications filed earlier for registration as a trademark, trademarks of other persons in relation to similar goods and having an earlier priority; 

• The trademark is identical or confusingly similar to the name or commercial designation or to the name of the selection achievement, the rights to which arose in the possession of other persons before the priority date of the registered trademark; and 

• In other cases, provided for by this article. 

In contrast to the early termination of the legal protection of a trademark, the invalidation of the grant of legal protection to a trademark entails the cancellation of the decision of Rospatent on the registration of the trademark (Clause 1 of Article 1512 of the Civil Code of the Russian Federation). This means that the registration of a trademark is considered unlawful from the date of filing the application, and the legal protection is considered not to have arisen in principle. 

Accordingly, the idea of such a legal consequence is that the invalidation of the grant of legal protection to a trademark indicates the illegality of the registration of such a trademark from the very beginning and casts doubt on the already exercised rights with such a designation. 

Admissibility of challenging the grant of legal protection to a trademark terminated early 

Pursuant to Clause 32 of the rules governing the consideration of administrative disputes, where the relevant register contains a record of the invalidation or termination of legal protection, the proceedings shall be discontinued and the parties duly notified. 

A literal interpretation of this provision suggests that the early termination of trademark protection precludes further consideration of the dispute on the merits. 

However, judicial practice has developed a more nuanced approach. The courts consistently hold that discontinuation of proceedings is justified only where the prior existence of the contested legal protection does not affect the rights or legitimate interests of the applicant. 

This position was previously articulated in Paragraph 54 of Resolution No. 5/29 (2009), which provided that a decision of the administrative authority invalidating a patent or trademark takes effect from the date of its adoption and entails retroactive cancellation of the corresponding exclusive right from the filing date of the application. 

Although Resolution No. 5/29 is no longer in force, its substantive approach has been preserved in Resolution No. 10. In particular, Clause 139 confirms that decisions invalidating legal protection likewise produce retroactive effects, resulting in the termination of rights as from the filing date. 

It follows from the combined interpretation of Clauses 139 and 174 of Resolution No. 10 that the termination of trademark protection for the future does not, in itself, eliminate the legal interest in challenging such protection. This applies, in particular, where the applicant seeks to establish that the protection should have been invalidated ab initio – for example, in circumstances where claims were previously asserted against the applicant based on the use of the trademark prior to its termination. 

Accordingly, even where legal protection has been terminated, in whole or in part, prior to the filing of an opposition, such opposition may still be upheld, provided that the applicant demonstrates a continuing legal interest, including a prior infringement of rights. Thus, the determination of whether proceedings should be discontinued or the dispute examined on the merits depends on whether the applicant has established that the existence of the contested trademark in the relevant past period adversely affected its rights or legitimate interests. This approach is consistently reflected in the case law of the Intellectual Property Rights Court (see, inter alia, cases No SIP-1037/2021, SIP-485/2019, SIP-297/2020). 

Therefore, the mere fact of early termination of trademark protection does not constitute sufficient grounds for discontinuing proceedings. Where a legally protected interest is established, the objection must be considered on the merits. 

To conclude otherwise would effectively deprive interested parties of legal protection against registrations made in violation of Article 1483 of the Civil Code, both in administrative and judicial proceedings. 

The conclusion is: the current legislation separates the legal consequences of the institutions of early termination of legal protection of a trademark (in which case legal protection is terminated for the future) and invalidation of the grant of legal protection to a trademark (in which case the trademark is cancelled from the moment of filing an application for its state registration with Rospatent). 

In view of the above, the courts consistently support the possibility of challenging the legal protection of a trademark even in case of its early termination, however, in the presence of a legitimate and justified interest of the person who initiated such a challenge, allowing to eliminate the legal consequences of illegal registration of a trademark from the moment of its occurrence.