FAQ: Exclusive rights, If you received a cease and desist letter | Brandmonitor
FAQ: Exclusive rights, If you received a cease and desist letter | Brandmonitor
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Exclusive rights

What is an exclusive right?

Exclusive right is a «legal monopoly», i. e. a right that belongs strictly and solely to one person or entity. Exclusive rights are somewhat similar to proprietary rights, but extend not to items, but to intellectual property i. e. the economically relevant inner informational subject matter of an object.

Exclusive rights have a territorial nature and are protected separately in each country. The government guarantees the rightholders’ ability to prohibit any and all third parties from using their intellectual property without due authorization.

What powers are included in the exclusive right to a trademark?

Article 1484 of the CCRF contains a non-exhaustive list of forms of trademark use that are included in the exclusive right:

  • placement of trademarks on goods, which are being produced, imported, sold or otherwise commercialized in the Russian Federation;
  • placement of trademarks in any form in regard to provision of services or performance of works;
  • placement of trademarks on documentation related to commercial activities;
  • placement of trademarks in sale offers;
  • placement of trademarks online, including in domain names and other forms of addressing.
No one but the trademark holder is entitled to use the trademark in the above listed ways.

What does exhaustion of exclusive rights mean?

To balance the interests of the rightholders and third parties, the mechanism of exhaustion of exclusive rights (otherwise known as the «first sale doctrine») is introduced.

Exhaustion of rights means that from the moment a product is sold by the rightholder (or by his authorization) on the territory of a country, it can be individualized by the trademarks, by which it is marked, and such use of trademarks will not constitute infringement of the rightholder’s exclusive right.

Such limitation allows third parties to re-sell genuine and legally acquired goods.

However, exhaustion of rights does not apply to instances of trademarks being used in isolation from specific products, initial commercialization of which has caused the rights to be exhausted (including in domain names and in advertising related to the seller and not the products). In any way, use of trademarks must not create false impression of connection between the vendor and the rightholder.

If you received a cease and desist letter

Prove your rights

Due to the presumption of illegality of unauthorized use of intellectual property, burden of proof lies upon the person, who executes the non-contractual use of trademarks.

If you have received a cease and desist letter regarding illegal use of trademarks while you do have the rightholder’s authorization to use his intellectual property, provide proof of such authorization to clear the misunderstanding.

In absence of a licensing agreement, you can prove your rights to use a trademark by demonstrating that the goods that you are commercializing are genuine and were acquired legally.

The following documents can be presented as proof:

  • dealership or distribution agreements;
  • agreements with official distributors for purchase of goods;
  • consignment notes, tax invoices, bank transfer orders etc.

Be reminded that in absence of proof of legality of trademark use, sanctions aimed at suppression of infringements and collection of compensation may legally be imposed on your business.

Remedy the infringements

For this, the trademarks will have to be removed from:

  • website’s domain name, URLs of all of the website’s pages, and from other forms of addressing;
  • all product offers;
  • all forms of advertising;
and use of the Rightholder’s copyrighted materials will have to be ceased.

Please note that not only selling but any other form of commercialization of goods will be considered to be infringing on trademark rights. Placement of product offers online (with or without actual intent to sell any goods) does constitute infringement in and of itself.

Apply for authorization

If you wish to continue selling the goods in question, contact one of the rightholder’s official distributor in the Russian Federation for obtainment of authorization to use the rightholder’s intellectual property in your business.

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