Intellectual property in sports: trademarks use features
Intellectual property in sports: trademarks use features
PhD, Associate Professor E.S. Grin'
O.E. Kutafin University (Moscow State Law Academy), Moscow
Keywords: sports, sport law, intellectual property, trademark, exclusive right.
Introduction. Currently, the issue of use and protection of the intellectual property rights in the scope of special physical culture and sports legislation is particularly relevant .
Objective of the research was to reveal the features of use of trademarks in the context of sport law.
Research methods. First of all, it is necessary to consider the issues related to the use of trademarks as primarily these pieces of intellectual property are involved in economic transactions. By trademarks we consider the symbols related to sports activities, including the official title of the event and signs associated with the promoter, registered as trademarks (e.g., the trademark of the world football championship - WORLD CUP 2014; Olympic Games in Sochi - "Sochi.ru. 2014 with Olympic rings", etc.). In addition, trademarks can be used in the development of mascots of such events, posters, identification symbols, flags, design elements, trophies and medals of the participants of events; any other symbols and objects that belong to or were developed by the promoter for official use during the event, etc. 
In particular, the Resolution of the Moscow District Federal Commercial Court established that the use of the "T" trademark (owned by ZAO Futbolny Club Torpedo Moskva) on the shirts of players of "Torpedo-ZIL" (LLC Football Club Torpedo-ZIL) without permission was illegal. There are cases of distribution of advertising with illegal use of trademarks, as in the court case concerning the placing of "SPARTAK" sign on the facade of a building without permission of the owner of related trademark .
The use of trademarks or so-called brands is an important way of modernization of economy in general and development of economic relations in sports in particular and thus the regulation of the mechanisms of disposal of exclusive rights in trademarks and the emergence of new contractual structures in this field deserve special attention.
Such issues need to be elaborated to provide legally correct use of contractual structures in practice, because these structures are the basis of economic relations related to sports.
Results and discussion. The main and most important changes within the reform of the intellectual property law were included in part four of the Civil Code of the Russian Federation according to the Federal Law dated 12 March 2014 № 35-FL "On Amendments to the First, Second and Fourth Parts of the Civil Code of the Russian Federation and Certain Legislative Acts of the Russian Federation". We focused on those changes that concerned the disposal of exclusive rights applied to trademarks.
In accordance with a new wording of the Civil Code of the Russian Federation if a piece of intellectual property is protected due to state registration, the disposal of an exclusive right within the related contract, but not the contract itself as in previous version of the Code (item 2 article 1234 of the Civil Code), is also subject to state registration .
The transfer of an exclusive right under the contract is subject to state registration in cases covered in the Civil Code (article 1232). So, the disposal and pledging of an exclusive trademark right, granting of the right to use the trademark and transfer of an exclusive trademark right without a contract are subject to state registration according to the procedure specified in the article 1232 of the Civil Code (item 2 article 1490 of the Civil Code) .
Thus, a contract on disposal of an exclusive trademark right, a license agreement and other agreements on managing the exclusive trademark rights shall be concluded in writing, however, there is no need for state registration (item 1 article 1490 of the Civil Code). The practical significance of this change lies primarily in the fact that the emergence of obligations between the parties of the contract is determined by the time they agreed on all the essential terms. However, this raises the question on the moment of transfer of exclusive rights.
As a general rule, the exclusive right in a piece of intellectual property or brand identity is transferred to a buyer at the time of contract conclusion. But since the transfer of exclusive trademark rights is subject to state registration, such exclusive right is transferred from the right holder to a buyer at the moment of state registration (item 4 article 1234 of the Civil Code).
In case of non-compliance with legislator requirements on the state registration of the transfer of an exclusive right, the transfer of the exclusive right, pledging of the exclusive right or granting of the right of use shall be deemed invalid (item 6 article 1232 of the Civil Code).
It should be noted that there are some exceptions for trademarks used in sport competitions. So, for the period of preparation and conduction of competitions the Russian Federal Agency for Intellectual Property, Patents and Trademarks set the procedures of registration of FIFA trademarks and its recognition on the territory of the Russian Federation, registration of contracts on granting the right of use for pieces of intellectual property and brand identities related to the symbols of competitions, as well as reduced term of processing for the appeals to the Russian Federal Agency for Intellectual Property, Patents and Trademarks in order to shorten and simplify these legal actions .
A license contract can also be used for disposal of trademark rights in sports. So, granting of the right to use a trademark is also subject to state registration in the procedure provided by the article 1232 of the Civil Code.
With regard to the license contract on granting of the right to use a trademark a new essential condition was introduced. Now license contract shall include the list of goods to relation of which the right of use is granted, along with the subject of the contract and ways of using the trademark (item 1.1 article 1489 of the Civil Code).
It is specified in the new item 3.1 of article 1234 of the Civil Code that the donation of exclusive rights between commercial organizations is not allowed, unless otherwise provided by the Civil Code.
The item 5 of article 1234 of the Civil Code provides a special method of protection of the rights of a previous rights holder in case of material violation on the part of the buyer of the obligation to pay the specified amount for an exclusive right in a specified period. In this situation, the previous rights holder is entitled to demand judicially the transfer of the exclusive right back and compensation for damages if the exclusive right was transferred to the buyer (paragraph 1 item 5 article 1234 of the Civil Code). If the right was not transferred to the buyer who violated the contract, the right holder can terminate the contract unilaterally and claim damages caused by the termination. In this case the contract is terminated on the expiry of thirty days from the date of receipt by the buyer of the notice of contract termination if within that period the buyer has not fulfilled the duty to pay the specified amount (paragraph 2 item 5 article 1234 of the Civil Code).
The updated item 1.1. of article 1236 of the Civil Code consolidates the discretionary rule on the prohibition for the licensor to use a piece of intellectual property in the extent to which the right of use belongs to the licensee on the terms of an exclusive license.
Conclusion. The mentioned legal regulations addressed many problems identified throughout the implementation of the rules on related contracts and were widely discussed in the scientific literature. This, in turn, is a prerequisite for the effective use of trademarks as an important component of modern economic relationship in sports.
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Abstract. The article is focused on various aspects of the use of trademarks in the field of sports considering the changes in the law on disposing of exclusive trademark rights due to the reform of the Civil Code of the Russian Federation. Objective of the study was to reveal the peculiarities of using trademarks in the context of sport law.
The article analyzes a number of issues on disposing of exclusive rights to use the trademark in the field of sport taking into account the established practice in applying the law.
The author studies legislation that can resolve the problematic situations in sport law and create prerequisites for the effective use of trademarks as an important component of modern economic relationship in sports.