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the analysis of separate infringements of copyrights at the trade-mark registration, containing objects of the copyright

The judiciary practice developing since 1992 on affairs about infringement of the rights of authors by owners of trade marks, is extensive enough. Affairs of the given category are resolved in Chamber on patent disputes (PPS) Rospatent and arbitration courts.

And arbitration courts

Can consider cases, acting both the first instance, and the second if earlier business it was considered in PPS.

So, for example, "Winnie's" trade mark has been registered addressed to Open Company «NPO Alternative». The patent body recognised the specified registration completely void, proceeding from that,

That the challenged trade mark completely reproduces the name of the character of "Winnie" from known in territory of the Russian Federation of a literary work «a Winnie-the-Pooh and all».

The given decision of patent body has been appealed in arbitration court of of Moscow which has satisfied requirements of the owner of a trade mark and has cancelled the decision of patent body. Thus by court it has been specified, that it is impossible to recognise "Winnie's" word as result of creative activity of the author as, according to the rules of a translation from English accepted at the moment of a writing of the book, it is Russian transcription (transfer) of rather widespread English-speaking name «Winnie». Thus, the court has drawn a conclusion that "Winnie's" word is not present the bases to consider as the character as an element of the form of product in sense of point 3 of article 7 of the Law on trade marks.

The given decision has been appealed in the Ninth arbitration appeal court by which decision the first instance decree has been upheld.

From 19.06.2003 № КА-А40/3146-03 the decision of arbitration courts of the first and appeal instance is cancelled by the decision of Federal arbitration court of the Moscow district. In opinion of court of court of cassation, character B.Zakhoder is not the diplomatic copy of character A.Milne.

The court has specified, that in the name of product of author A.Milne - «Winnie - the-Pooh and The House at Pooh Comer», the name of the character «Winnie» is translated into Russian as "Uinni", that the Winnie-the-Pooh and all »differs both on a writing, and on a pronunciation from the character of author B.Zakhoder"Winnie"in its product«. The conclusion of Arbitration court of of Moscow about transfer of an English word «Winnie» as "Winnie" is recognised by insolvent for the reason, that till 1960 of a similar Russian transcription of this word did not exist also this transfer is entered into lexicon of Russian by B.Zakhoder.

Besides, in different places of the text of a fairy tale of B.Zakhoder it is called as various image (Winnie, a Winnie-the-Pooh, the Down), however each of these names is specified on quite certain by the character - a bear cub. The character described in product - a bear cub a Winnie-the-Pooh (Blame), it is focused on perception of the Russian-speaking reader, possesses a number of prominent features of behaviour and by that, it is allocated by the author concrete, well recognised, original characteristics.

The character under "Winnie's" name has received so wide popularity at inhabitants of Russia what exactly such name of a bear cub at once, automatically causes in consciousness of the Russian spectator audience, and absolutely different age, direct associations with the character of a fairy tale of B.Zakhoder.

Thereby it is established, that registration of a trade mark of "Winnie" has been made with infringement of requirements of point 2 of a part of 3 articles 7 of the Law on trade marks.

Thus arguments that "Winnie's" word is used as a name in different literary works (in S.Bekketa's play «happy days», in a feature film «My cousin Winnie»), literatures and arts, characters from them or citations have not been taken into consideration as established by norm of point 2 of a part of 3 articles 7 of the Law on trade marks the interdiction concerning registration as trade marks of designations concerns products of a science known in the Russian Federation. The listed products are little-known in the Russian Federation as associations are familiar with character B.Zakhoder only to a narrow circle of fans and experts on cinema and foreign fiction while "Winnie's" word causes, first of all.

In affairs of a similar category it is necessary to consider, elements how much listed in given point fall under copyright protection.

For example, «33 cows», registration and use by the trade mark third party of "33 cows» have not been recognised by infringement of exclusive rights of Oleva N.M. and Dunaevsky M. I, authors of a song.

In the decision of Federal arbitration court of the Moscow district from July, 29th, 2002 №КА-А40/4933-02 it has been specified, that word-combination use «33 cows» does not break Oleva N.M.'s copyrights as does not come within the purview of points 1, 3 articles 6 of the Copyright law. As according to the expert judgement a word-combination «33 cows» and the word of "cow" has been recognised by common their connection falls under signs isolated literary - an artistic image, such original name which is inherent only in creativity of any one concrete author. In the text of a song the combination of words of "33 cows» is used in values habitual for Russian without privnesenija in it of the original maintenance or the form.

The word-combination isolated from a context of "33 cows» (including as the name) is determined by stereotypes of national creativity, is constructed on model of folklore and does not contain the signs reflecting creative originality of speech of any individual.

Dispute concerning registration of the character and the name of product of I.A.Goncharov with the same name "Oblomov" as a trade mark is interesting. [75] in 2001 the Appeal chamber, and then the Higher appeal chamber of Rospatent carried out consideration of the complaint of Anton Tabakova - the owner of restaurant «Oblomov on Presne» about the termination of granting of a right protection to a trade mark "Oblomov" which owner was Joint-Stock Company «IBG the companies» to which posessed restaurant "Обломов" on street Pjatnitsky. In both instances the complaint has been satisfied, and the decision on the termination of granting of a right protection to a trade mark as registration of such trade mark contradicts public interests is passed.

In 2002 of Joint-Stock Company «IBG the companies» were appealed by the specified decision in Arbitration court of a city of Moscow which recognised the decision of the Higher appeal chamber of Rospatent mismatching the Law on trade marks.

By results of the analysis of the text of a judgement it is possible to assume, that Joint-Stock Company «IBG the companies» has received the consent of Ministry of culture of Russia to registration of the name of known product and a surname of the protagonist of this product "Oblomov" as a trade mark and that later during consideration by complaint Rospatent the given consent has been withdrawn.

The court has analysed the arguments testifying to impossibility of registration of a designation "Oblomov" as a trade mark and has come to conclusion, that in the decision of the Higher appeal chamber does not contain sensible arguments and a legal substantiation of the termination of granting to the given trade mark of a right protection. So, in the decision does not contain proofs of that designation use "Oblomov" contradicts public interests. That the designation which contains slander on a society, concrete people, for example, can be recognised, mismatches the developed representations about a society, etc.

Also the court investigated also that fact, that "Oblomov" represents the name of widely known novel, and also a surname of the protagonist. At the same time, as products of authors of XIX century have already arrived in public property and can freely be used by any person without award payment, the court has specified that «on widely known product, including a surname of the main character of the novel of I.A.Goncharov, has expired copyright term». [76]

Thereby, having drawn such conclusion, the court indirectly recognised, that within period of validity of the copyright to product, the right protection is given to a name (surname) of the character, and also the literary work name.

The dispute connected with a trade mark «Lion's heart», considered in 2001 Appeal chamber of Rospatent is interesting. The society with limited liability "Restaurant" Lion's Heart », has addressed in Rospatent, wishing to prove, that Open Company" Камилор "wrongfully owns a trade mark« the Pub Lion's Heart ». The argument was one:« Lion's Heart »- a well-known nickname of the English king Richard Pervogo who has become famous for the bravery, besides, initiators of process, for the Russian consumer it not simply historical person, but also the character of widely known products - Walter Skotta's novel« Ajvengo »and a feature film« Richard Lvinoe Serdtse », removed in 1993 insisted. And if to take into consideration the popularity fact, registration should be cancelled then use« Lion's Hearts »as trade marks any can. Before Open Company" Restaurant "Lion's Heart» has sustained intermediate defeat: the Arbitration court of Moscow, and then and appeal instance, have passed the decision on wrongful use of a sign by them, have obliged to change this sign and to replace a signboard. The court has established, that a verbal designation «Lion's Heart», used by an institution on Michurinsk the prospectus, is similar to degree of mixture to a protected part registered before a sign belonging to Open Company "Камилор". As to appeal chamber of Rospatent it has passed at first sight a little strange decision - a designation «Lion's heart» is associative is not connected directly with king Richard. The unique basis with which probably to address in Rospatent and to demand cancellation of registration of a trade mark, article of the law about names of products of a science known in the Russian Federation, literatures and arts, characters from them or citations is. But the combination of words «lion's heart» is simple, have considered in Rospatent, - not product, not the citation and not the character. After all the character called Richard Lvinoe Serdtse.

In similar disputes where it is a question of names of products or characters from them to count on success it is possible only having on hands very powerful proofs of popularity. Whether it is necessary to reduce them to strict standards, the unequivocal opinion is not present even among patent attorneys. For example, attorney Tatyana Vahnina from company "Иннотэк" considers, that it is necessary to have defined kriterialnyj the device for the popularity finding of fact, approved by Ministry of Justice, and Evgenie Arievich from Baker&McKenzie believes, that if to establish criteria of popularity it can open simply «box Pandory».

Common knowledge is a certain deification of popularity. The common knowledge status is appropriated by Rospatent after long examination. In Russia this status allocates only three signs, and any of them has no relation to works of art, culture or a science - "News", "Uralmash" and "Java". Many experts consider, that the norms of the Parisian convention taken for a basis for an establishment of the status of common knowledge are treated in Russia with too high threshold - in Europe it is a question not about well-known, and of «a well-known trade mark». Popularity should be defined subjectively, on the basis of the data given by the party in interest. It cannot be settled. In the USA where the decision is accepted on the basis of a case law, judges establish the general criteria, however, final judgement and there remains on judicial discretion.

Transition of product of the copyright in public property does not mean, that the name of this product or a name of the character cannot be used as a trade mark for the concrete goods, as, for example, «Cafe" Pushkin ",« Restaurant "Suvorov" or "Restaurant" Hodzha Nasreddin in Khiva ». Acquisition of the exclusive right to a trade mark does not void a principle of transition of product in the public property meaning, that all interested persons can use the name of product or names of its characters for citing, reprintings, etc.

For today certain uniform rules or recipes for finding of fact of popularity of the character, real and invented, or products in Russia do not exist. And the Rospatent, being guided by value judgment of its experts, can accept at first sight

Mutually exclusive decisions. As the Russian legal system is not case. To change a situation and order use of "known names» as trade marks entering into norms GK the Russian Federation accurate criteria can only: what researches and how can define degrees of popularity of this or that object of intellectual property.

As one more example of the dispute connected with use of exclusive rights to the name of product the collision of the rights of authors of product under the name «the Encyclopedia for children» with the publishing house which has developed the encyclopaedia with the same name acts. The claimant, believing, that belongs to it the exclusive right to the specified name: «the Encyclopedia for children», has addressed in court with the requirement

About an interdiction of use practically similar, from its point of view, the name - «the Encyclopedia for children and youth» - concerning other similar product.

The arbitration court has given up in satisfaction of requirements, and its refusal was motivirovan instructions on that circumstance, that the name «the Encyclopedia for children», specifying in character and product appointment, cannot be recognised by original. Having given up to the author of the given product in the claim, the court, as a matter of fact, has fixed that fact, that the claimant does not have exclusive right to the product name as that. To the permission of questions on the exclusive right of the author of product it is impossible to consider such approach universal as, applying the specified approach in each concrete case, carrying out of an expert estimation of this or that name of product about its recognition corresponding to criterion of originality is necessary. As, as is known, legislatively established criteria of this concept concerning objects of the copyright in the domestic legislation do not exist, and besides, working out of similar criteria calls into question advantage of all product in whole or its separate parts, for the effective decision of a task in view probably use and other approach.

In this connection the reference to article 1259 GK the Russian Federation according to which the product name can be the independent object of the copyright which are coming under to a right protection, only is represented expedient in the event that this name can be, owing to the characteristics, is used independently, that is separately from product. In the resulted case it hardly is possible, as «the Encyclopedia for children» unequivocally specifies the name in concrete product and its maintenance.

However as the worthy factor in similar sorts disputes granting of proofs of that fact acts, that use by the respondent of the identical name was carried out intentionally, with a view of reception of not deserved benefit which has entailed or wide popularity of product of the claimant who has received popularity under the given name could entail. That is it is necessary for claimant to prove interrelation between popularity and popularity of product and its name, and then communication of this name with subsequent independent use, but already without dependence from product.

Thus, it is visible, that judiciary practice on the given category of affairs has developed and, despite an interdiction of registration as trade marks concerning objects of the copyright, not all such objects can be forbidden to registration. Therefore as they should meet the requirements of originality, originality and to cause strong associations with a literary work or arts. Originality is defined by the examination carrying out which results are taken into consideration by court at removal of judicial certificates.

Now copyrights of artists and writers, sculptors and composers at trade-mark registration are broken, that is an occasion to giving of statements of claim in court with the requirement of protection of the broken rights and trade-mark registration cancellations. But not in each case the court by all means will rise on protection of the rights of authors. Not settled questions in the field of collision of copyrights and the rights to a trade mark remains much, and during proceeding the important place the letter of the law which actually is absent, and will occupy not a subjective sight of the concrete judge at decided difference.

In this connection we believe expedient to use, besides the legal process, also an administrative order of protection of the broken subjective civil rights. To apply it subparagraph 1 of point 9 of article 1483 GK the Russian Federation which mentions sphere of protection of the competition, arising allows, in particular, at crossing of legal regimes of trade marks and objects of the copyright. Special norms about struggle against the unfair competition, containing in points 6 and 7 articles 1252 GK the Russian Federation, allow to define imposing sphere against each other norms of the copyright, norms about trade marks and about competition protection. At the same time it is necessary to consider that fact, that activity of Federal antimonopoly service on unfair competition suppression should be carried not to protection means, and to protection frames of the rights. In connection with stated by certificates of the given service it is impossible to regulate the specified legal relations, actions of Federal antimonopoly service on suppression of illegal use of objects of the copyright with a view of trade-mark registration by their reference to unfair competition certificates should be qualified as a way of protection of the exclusive right.

By the specified image the rights to such trade marks which simultaneously are objects of the copyright, for example, rhymed lines or drawing can be protected. It is necessary to mean, however, that the unfair competition is possible only between managing subjects, authors are physical persons, accordingly, in the given context it will be possible to consider only those objects of the copyright, exclusive rights on which belong to the legal body.

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A source: Denotkina Anna Viktorovna. the RIGHT PROTECTION of TRADE MARKS And OBJECTS of the COPYRIGHT: rather-LEGAL ANALYSIS. The dissertation on competition of a scientific degree of the master of laws. Moscow - 2016. 2016

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