Nazarova
F.H.
Master of
first year Master's profile
On a
specialty "Jurisprudence"
Caspian
Public University
The problem of differentiation of the domain name and other objects of
intellectual property rights under the laws of the Republic of Kazakhstan
Annotation
Today,
ordinary Internet user, when it comes to trade names and domain names can
easily be misled, because, as practice shows, the majority of rights holders
use the name of their legal entity, or its part, as a component of the domain
name.
This
raises the question of the legality of such a phenomenon and the protection of
the brand name and other intellectual property used in the domain name.
Keywords: domain, trademark, domain name, intellectual property, right, objects.
Firm
name is the most common of all means of individualization matching to domain
names and protected by law.
Legal
protection of such means of individualization is stipulated in paragraph 1 of
Article 1020 of the Civil Code of the Republic of Kazakhstan [1], which states
that "... the legal entity has the exclusive right to use the company name
(Article 38 of this Code) on official letterhead, print media, advertising,
outdoor signs, prospects, accounts, online resources, on the products and their
packaging, and in other cases necessary for the individualization of a legal
entity".
However,
in our opinion, such an interpretation is not comprehensive and insufficient as
organizational-legal form is also part of the name of the legal entity, which
is protected by law.
Thus,
the name of the legal entity and firm name are not identical and / or
interchangeable, at the same time only the second is protected by the law as a
mean of individualization; the name of non-profit organization is not a mean of
individualization, protected by law. It should be noted that the essence of the
names of non-profit organizations is not given sufficient emphasis in the Kazakhstan
legislation, while the Russian legislation says that: "... non-profit
organizations’ exclusive right to use the registered name is acknowledged"
(paragraph 1 of Article 4 of the Federal Law "On non-profit organizations")
[2]; commercial organizations are obliged to separately indicate the name of
the legal entity and brand name in the constituent documents.
Such
confusing terms in legal acts negatively affect the uniformity the Kazakhstan
legislation.
For
example, such terms as "the full name of the legal entity" and
"abbreviated name of the legal entity" which are never used nor
determined in the Civil Code of Kazakhstan, found in many legal acts [3]. These
inconsistencies in terminology are shown in the judicial practice of
Kazakhstan, while filling claims a column "name of the legal entity"
is usually filled in, missing no less important "firm name", which,
as we had discovered in this study is unacceptable, because these definitions
are not identical.
These
gaps in the law make the protection of rights to the name, including the firm
name, almost impossible task when the "twin" companies appear in the
form of a mythical hydra, that can grow three heads when cutting off one.
Despite the different legal regimes
of the names of legal entities, firm names and domain names, in our country
they are not just compatible, but often equal, due to lack of regulation by the
legislation.
As practice shows, legal entities register their names or part thereof, as domain names, without specifying their legal forms that subsequently use basis of lawful use of a certain domain name, even if it is a protected object. Despite the fact that these delicts are not expressly stipulated in the laws of the Republic of Kazakhstan, they can be regarded as the violation of business practices as part legislation of the state.
R.A. Mametova defines business customs as "... the rules established in the exercise of entrepreneurial activity. For example, on the distribution between the seller and the buyer who are located in different countries, of the costs for the delivery of purchased goods"[4].
The rights of the owners
to the firm names are closely connected with the sphere of activity of the
organizations. According to Professor A.P. Sergeeva:
"... within the meaning of the law, the use of members of turnover of completely coinciding firm names is not ruled out,
if it does not lead to a conflict of their interests and not misleading of third
parties. In other
words, assessing the degree of similarity of the firm names and the
admissibility of appearance in the circulation under the same name, may not be
limited to simple comparison of the firm names" [5, p.572]. Regarding
the study of relations this means that the establishment of the identity and /
or similarity in the names and the domain names of subjects is not enough. The
critical role to play spheres of activity of business entities owning domain
names.
The commercial designation, is one of the means of individualization, protected by law, which should be considered more carefully.
Today, Kazakhstan's legislation contains no definition of a commercial designation, despite the fairly active use of the term. Logically these designations are the means of individualization for enterprises of the legal entities and individual enterprises. At the same time, it is possible to use commercial designations to more than one company, but not vice versa.
Commercial designations are not identical to the firm names and are not associated with them and are not reflected in the state registration, constituent documents of the legal entity or the state register.
The presence of a certain set of distinctive features, and the use of the owner of the means of identification as part of activities of the enterprise in a certain territory are essential conditions for the recognition of commercial designations as the objects protected by law.
Commercial designations are generally used in outdoor and indoor advertising, all kinds of letterheads, invoices, and in various documents, as well as packages of goods. We believe it is important to note that the rights to the commercial designations arise from the beginning of their direct use for enterprise individualization and terminate, if the copyright holder has not used it for over a year.
The right to use the commercial designation, unlike the rights to the firm names may be transferred to third parties with the consent of the owner. As a rule, similar provisions are contained in the lease agreements, concession or franchising.
Also important is the fact that the domain name can not be the commercial designation, since the latter is a mean of individualization, and the domain is not. However, this does not deny the possibility of having a common owner of the identical or similar domains to the extent of mixing and commercial designations.
In our opinion, the Kazakh legislator should
include a definition of the term "commercial designation" in the
legal acts, because this concept today is widely used in Kazakhstan's civil
turnover. With further development of the business as fast as now, especially
in the area of Internet services, such disputes will be unavoidable, so the
regulatory framework should be explored more thoroughly to avoid a large number
of conflicts on this issue or a quick resolution thereof.
The law gives the following interpretation of the appellation of origin: "... the name of the country, settlement, locality or other geographical object used to designate a product, particular properties of which are exclusively or mainly determined by typical for this geographical object natural conditions or other factors or combination of natural conditions and these factors. Appellation of origin of goods may be a historical name of a geographic object "[1]. The term is also equated with "the indication of origin of the goods".
According to paragraph 1 of Article 7 of the Law
"On Trademarks, Service marks and appellations of origin of
goods", "... may not be registered as trademarks
the designations that are
identical or similar to the extent of mixtion thereof: with the trademarks, registered in the
Republic of Kazakhstan and protected by virtue of international agreements with
the earlier priority in favor of another
person in respect of similar goods or services or identical with trademarks of the same person in respect of the same goods
or services; with recognized in the established manner well-known in the Republic of Kazakhstan
trade marks in respect of all types of goods and services; the designations
applied for registration with an earlier priority in
favor of another person in
respect of similar goods or services or (except revoked
ones) with identical designations of
the same person in respect of the same goods or services; with the appellations
of origin, protected in the Republic of Kazakhstan in relation to any goods,
except in cases where they may be included as
unprotected element of the trademark registered in favor of the owner of the right to use the given appellation
of origin, if the trade mark registration is carried out in relation to same
goods for individualization of which appellation of origin is registered" (Clause
1 of Article 7 of the Law of the Republic of Kazakhstan) [6].
This rule prevents the appearance of
conflicts between the owners of rights to trademarks and appellations of
origin, if any of them is used as a domain name.
There were some cases in practice when the appellations of origin of goods that were identical or similar to the extent of mixtion with the firm names of companies registered at the same time with the state bodies of the Republic of Kazakhstan. The gap in the legislation, which does not recognize the appellation of origin of goods as the means of individualization does not help this conflict as well. It is worth noting that the same gap is found in the Russian legislation (Section 6 art.1252 of the CC of RK) [1].
In practice, such conflicts are usually resolved by the rule of the previous filing of the appellation of origin or a domain name. However, this practice, unfortunately, does not take into account the many nuances. Such as the "priority date", "date of filing". Consideration of the scope of activities of the enterprise, the territory in which it is carried out is often missed. All of the above leads to the restriction of rights holders of both appellation of origin, as well as domain names.
Based on the
above mentioned studies
of Kazakhstani and foreign legislation, we can conclude that
today are often registered
and thus officially protected by law the identical or similar to the extent of mixtion the trademarks,
firm names, and other objects of exclusive rights on the territory of the
Republic of Kazakhstan .
At the
same time the control over the registration of domain names in KZ
domain is almost completely absent. In consequence of which the owners of the
domain name may become persons who does not have exclusive rights to certain
objects of individualization, which inevitably leads to a clash of interests of
the number of owners.
Literature:
1. The Civil Code
of the Republic of Kazakhstan (General Part). Enacted by the Supreme Council of
the Republic of Kazakhstan dated December 27, 1994. In the edition the Law of
RK dated October 29, 2015 № 376-V // Bulletin of the Supreme Council of the
Republic of Kazakhstan. - 1994. - № 23-24 (annex).
The Civil Code of
the Republic of Kazakhstan (special part) dated 1 July 1999 № 409. In the
edition the Law of RK dated October 31, 2015 № 380-V // Bulletin of the
Parliament of the Republic of Kazakhstan. - 1999. - № 16-17. - P. 642.
2. Federal Law
"On Noncommercial Organizations" dated 12.01.1996 № 7-FZ. In edition
dated 31.01.2016) //
http://www.consultant.ru/document/cons_doc_law_8824/
3. Order of the Minister of Justice of the Republic of
Kazakhstan "On approval of the Instruction on the state registration of
legal entities and registration of branches and representative offices"
dated April 12, 2007 № 112 // Legal Newspaper. - 11 July 2007. - № 104 (1307).
4. The Civil Code of the Republic of Kazakhstan.
Book 1. Commentaries (general part) // Under the leadership of Suleimenov M.K. -
Almaty "Zhety Zhargy" 1998 - P. 3.
5. Sergeev A.P. Intellectual property rights in the
Russian Federation. 2nd ed., Revised and amended. -
M.: TK Welby, 2003. – 752
p.
6. Law of the Republic of Kazakhstan "On
Trademarks, Service Marks and Appellations of Origin of Goods" dated July
26, 1999 № 456 // Kazakhstanskaya Pravda. - 24 August 1999. - № 206-207.