A person has the right to a name, which allows the bearer of the name both to use it himself and to prohibit the use of others (Article 19 of the Civil Code).
Naming rights have three aspects that are important to consider when creating a brand.
Name concept
The name includes the surname, proper name, and patronymic (if any). In addition, a person has the right to use a pseudonym (fictitious name) in creative activities. A name and an alias are different entities, but they have similar rights.
There may be "competition" between the nickname and the name. An illustration is the court case of "Razumovsky" (Determination of the Investigative Committee for civil cases of the Supreme Court of the Russian Federation dated August 15, 2017 No. 5-KG17-102).
Historian and journalist Felix Velievich Razumovsky discovered that books in the “fantasy” genre were being published under his name, which he never wrote. It turned out that science fiction writer Evgeny Rubyazhev took the pseudonym Felix Razumovsky and used it to publish science fiction books. Felix Velievich believed that people were mistaken about the authorship of the books and filed a lawsuit against Evgeniy Rubyazhev, demanding a ban on the use of his name.
All courts rejected the claim, the case reached the Supreme Court of the Russian Federation. The court overturned the decisions of the lower courts, indicating that it is prohibited to acquire rights and obligations under the name of another person “with the disorientation of an indefinite circle of persons regarding the identity of citizens.”
The right to a name is personal
This means that a person’s name is inextricably linked with him and the right to the name cannot be transferred (alienated) to another person. However, a person may give permission to another person to use his name, provided that such use does not mislead the public as to the identity of the persons. In other words, society should not confuse the bearer of a name and the person using that name.
There is not and cannot be a monopoly on the name
The name may be duplicated, so there may be a competitor who is a namesake or namesake. An illustration is the court case of the "Dolgalevs" (Decision of the Arbitration Court of the Stavropol Territory dated August 20, 2020 in case No. A63-13309/2019).
Two competitors have appeared on the dental services market: dentist Dolgalev Alexander Alexandrovich (hereinafter referred to as doctor) and dentist, professor Dolgalev Alexander Anatolyevich (hereinafter referred to as professor). Competitors used their last names when doing business.
In 2017, the doctor registered in his name a combined trademark No. 665029 with the verbal element “Dolgalev dental clinic.”
The doctor applied to the Federal Antimonopoly Service of Russia with a request to recognize the professor’s use of a logo that included the verbal element of his trademark (in other words, the surname “Dolgalev”) as unfair competition. The Antimonopoly Service recognized the fact of unfair competition.
The professor challenged the decision of the antimonopoly service in the arbitration court. The court found the following.
The decision of the FAS Russia is based on the fact that both competitors used the word “Dolgaleva”, which is also their surname. The doctor and the professor, by coincidence, are namesakes and have the same initials.
The court further concluded that since both competitors began dental activities long before the registration of the trademark (professor since 1996, and doctor since 1993) and the use of the surname of the leading doctor in the name of the clinic is a common practice, then the use of the surname “Dolgalev” in the professor’s sign cannot be qualified as unfair competition.
The arbitration court overturned the decision of the antimonopoly service.
In what ways is it possible to design a personal brand?
The name can receive legal protection for various means of individualization. A means of individualization is a type of intellectual property to which an exclusive right arises (Art. 1226 Civil Code of the Russian Federation). Means of individualization include, for example, trademarks, trade names or commercial designations (Art. 1225 Civil Code of the Russian Federation).
Name as trade name
A company name is the name of a commercial organization, which is recorded in the constituent document of a legal entity, registered and displayed in the unified register of legal entities.
The name may be registered as a business name. For example, in the Dolgalevs case, the professor registered his name as the trade name of his clinic.
A brand name helps prevent the emergence of a competitor with the same or similar name. According tot. 1474 Civil Code of the Russian Federation The copyright holder of a brand name, provided that he registered the brand name before a competitor, has the right to demand that the competitor eliminate the violation by renaming or ceasing to carry out activities similar to the types of activities of the copyright holder. In this case, the choice of the way to eliminate the violation belongs to the violator (defendant).
Name as a commercial designation
The name may be included as part of a commercial designation. It acts as a symbol that individualizes the enterprise (according to art. 132 Civil Code of the Russian Federation an enterprise is a property complex used in business activities).
According to art. 1539 Civil Code of the Russian Federation The exclusive right to a commercial designation implies the ability to block the appearance of a confusingly similar commercial designation.
Name as a trademark
A trademark is the most common form of brand protection. As is clear from the Dolgalev case, a name can be registered as a trademark, but this registration has several subtleties. B witht. 1483 Civil Code of the Russian Federation the grounds for refusal to register a trademark have been established. We are interested in the items 1, 3 and 9.
Clause 1 of Art. 1483 Civil Code of the Russian Federation involves refusal of state registration of a designation as a trademark if the designation does not have distinctiveness. Simply put, distinctiveness can be defined as the ability of a sign to distinguish a manufacturer's products from those of its competitors.
Clause 3 of Art. 1483 Civil Code of the Russian Federation involves refusal of state registration of a designation as a trademark if the designation is capable of misleading regarding the manufacturer.
Misconception is possible if the name of the applicant does not correspond to the name included in the trademark. At the same time, providing in writing the will of the name bearer to register a trademark makes registration of the designation possible.
The following example is illustrative.
The designation "MOTHER TERESA" was applied for registration in the name of the organization "Missionaries of Charity" (India). The declared designation was recognized as reproducing the name of a famous person - Mother Teresa, and therefore misleading the consumer about the manufacturer. Representatives of the Missionaries of Charity organization presented copies of Mother Teresa's will, on the basis of which Mother Teresa's will was established regarding the use of her name by her successor in the person of the head of the Missionaries of Charity organization.
Based on the documents presented, Rospatent decided to grant legal protection to the designation “MOTHER TERESA” as a trademark (international registration number 1241155).
Clause 9 of Art. 1483 Civil Code of the Russian Federation involves refusal of state registration of a designation as a trademark if the designation reproduces the name of a person well-known in Russia.
It is important that Rospatent cannot apply this clause independently. To apply it, it is necessary for a person well-known in Russia to declare the application of the clause, and it is important that the signatory of the document is the person whose name reproduces the designation.
An excellent illustration is the Dolgaev-2 case. In this case, the court, refusing to apply the clause in question, indicated that the objection was filed not on behalf of Alexander Anatolyevich Dolgalev or his heirs, but on behalf of the clinic. Taking into account the above, the court came to the conclusion that the rights of the clinic are not violated by the circumstances specified in clause 9 of Art. 1483 Civil Code of the Russian Federation.
Milyukov Sergey
Source: GUARANTOR
