Problems with the Termination of Legal Protection for Generic Trademarks: An Analysis of Criteria and Mechanisms for Implementation

The accelerated growth of trademark recognition due to its long-standing presence in the market and the successful implementation of a marketing strategy by the company poses a risk of the designation becoming a generic name (genericization). Consequently, this may result in the premature termination of the legal protection afforded to the trademark in accordance with subparagraph 6, paragraph 1 of Art. 1514 of the Civil Code of the Russian Federation. It appears that the potential for the application of this ground is currently constrained, and the understanding of its essence and purpose has not yet been established among the relevant parties (right holders and interested parties). The objective of this study is to identify the issues and peculiarities of the legal regulation and the mechanism of the termination of legal protection of commonly used trademarks in the Russian Federation. Achievement of the goal of the work is achieved by performing a number of tasks: 1) defining the concept and functions of a trademark; 2) identifying the prerequisites for genericization of a designation; 3) analysing the effectiveness and sufficiency of formal criteria for attributing trademarks to generic designations; 4) determining the main processual and procedural peculiarities of termination of legal protection in accordance with subparagraph 6, paragraph 1 of Art. 1514 of the Civil Code of the Russian Federation. The results of the research conducted in accordance with the methodological recommendations of Rospatent, together with the conclusions derived from the practice of law enforcement, have identified the most relevant criteria for the genericization process. Furthermore, recommendations are made regarding the application of subparagraph 6, paragraph 1 of Art. 1514 of the Civil Code of the Russian Federation. These recommendations include the exclusion of the indication of the narrowly special nature of the use of the trademark, a change in the subject of proof, and the making of the condition of the content of the designation in the reference fund the nature of a presumption. In addition, the main procedural aspects are addressed, including the determination of the interested party, the termination of legal protection, the applicability of individual claims within the framework of administrative proceedings, and objections to the claim of the right holder of a common trademark on violations of the exclusive right.