Sometimes an initiative that benefits entrepreneurship runs into the risks of revitalizing an abusive business. This is the position of the bill submitted to the government on the registration of trademarks by citizens who do not have the status of an individual entrepreneur (IE). Now only legal entities and individual entrepreneurs have such an opportunity – the innovation should equalize the rights of Russian citizens with foreign ones, whose applications Rospatent registers.
With the emergence of self-employed citizens in Russia, the idea looks quite logical. But her prospects are darkened by the so-called patent trolls. They register in their own name as many trademarks as possible without having their own production facilities and without providing any services, and then demand compensation in the courts for illegal use. At a recent meeting of the Council for the Codification of Civil Legislation, businesses expressed concerns that the possibility of citizens registering trademarks could exacerbate the problem – despite the fact that individuals need them in a very narrow segment. As Dmitry Fadeev, chairman of the CCI’s Council on Intellectual Property, explains, we are talking about four to five classes of the international classifier of goods and services. According to him, it is not clear how a legal entity will be able to prove that citizens, registering a mark for thousands of goods, do not use it later for the early termination of an exclusive right.
The Ministry of Economy does not share such fears, however, pointing out that it was not difficult for unscrupulous citizens who decided to make money on this to register a legal entity or individual entrepreneur for such purposes. To combat trolling, there is, for example, the obligation of the copyright holder to use the trademark – otherwise the rights to it can be challenged. They see no reason for concern in Rospatent either: registration requires payment of a fee of 25 thousand rubles, all applications are published and an interested person can file a protest.
But, says Sergei Zuikov, managing partner of Zuikov & Partners, patent trolling is gaining momentum – the problem needs to be addressed, including by persuading the courts to apply the provisions of the Civil Code more rigorously, which makes it possible to deny trolls protection of their rights to marks. It is difficult to say whether the innovation from the Ministry of Economy will affect the activity of trolls, says Olga Kriveelskaya, managing partner of Card Patent. Although the registration of trademarks for individuals is widespread in Europe, in the USA, China, it will be difficult to regulate it in the Russian Federation, she said, due to the lag in the field of intellectual property. So, apparently, taking into account the growth in the number of copyright holders, the authorities will still have to spell out the rules of the game more clearly.