Currently, the importance of a trademark for the successful development of companies in the business sector is widely known - a trademark allows one to distinguish the goods or services provided by one company from the goods and services of another, which increases their recognition among consumers, distinguishes the company from competitors and protects them from counterfeiting.
As a rule, designations are widely used not only on goods, packaging, when advertising services, but also on official letterheads, signs, when displaying exhibits at exhibitions, fairs, etc.
It should be noted that if a trademark evokes strong associations among buyers with the company’s goods or services and becomes widely known in the market, then it can become its brand. In this case, we can say that a brand is a well-promoted, widely known trademark.
However, the more famous a company is, the more often it becomes a target for unscrupulous competitors who try to invalidate the trademark in full or in relation to part of the goods/services.
In practice, there are more often cases when legal disputes arise due to the illegal use by competitors of a trademark that is not registered in a timely manner, which can even lead to loss of business.
What are the risks when creating a trademark?
In judicial practice, claims of competitors against owners of a trademark who have not used it continuously for three years after state registration are often considered.
But the risk of cancellation of a registered trademark may arise for another reason. Thus, recently there has been an increase in the number of claims received by copyright holders from the authors of images and fonts that are freely available on the Internet.
Thus, the fact that the owner has an exclusive right to a designation may not mean that he has exclusive rights to the image (logo) that is included in the trademark, or to the font used in the word, since the image and font may be objects of intellectual property (IP) of another author.
It is not always possible to track copyright, since its objects are not subject to state registration (with the exception of computer programs and databases, which can be registered at the request of the copyright holder). For this reason, there is an increased likelihood of receiving claims about the exclusive right to an image or font, and challenging authorship in court is quite difficult.
Font as an object of copyright
Fonts are classified as IP objects, since they are graphic works made on a tangible medium and are not registered with Rospatent. The author has the right to dispose of the fonts he creates at his own discretion. It is enough for him to simply declare his authorship.
Another situation is possible when the trademark developer used a font that is in the public domain, but did not check the availability of a license for it. In such cases, the registered trademark is the property of its owner, but its elements (for example, fonts) may be subject to copyright owned by another person.
Especially often, a conflict of interest arises when a former employee took part in the development of a font or logo. If he files a claim, it is possible to resolve the controversial situation, since according to Russian legislation and established judicial practice, IP objects were developed in the service and were part of the duties of the former employee. In this case, he will be denied satisfaction of the requirements. The filing of such a claim is actually aimed at taking away the right to use a trademark that belongs to him, guaranteed by the legislation of the Russian Federation. To avoid such situations, it is important to initially enter into an agreement with the author of the font or image that provides for such conflicts and regulates intellectual property rights.
That is, in order to avoid litigation, it is important, even at the designation development stage, to enter into an agreement with employees on the distribution of rights to the created intellectual property objects.
Regarding the use of images and fonts that are in the public domain, when creating a trademark at the development stage, it is necessary to ask the authors for consent to use them and/or enter into a written license agreement. Otherwise, a lawsuit may be filed for the illegal use of someone else's intellectual property, which may result in the withdrawal of a large number of products from circulation and cause real damage to the company, which will lead to additional costs.
In conclusion, I would like to note that it is extremely important to promptly resolve all issues related to the distribution of rights to intellectual property objects at the stage of their development and obtaining legal protection for these objects. The costs of this approach will be much less than the monetary compensation awarded by the court for the illegal use of an intellectual property item belonging to a third party.
