How to dispute a trademark?

Question

Law in IT

Good evening. There was an unpleasant situation.
The site has a section with a specific name, often used in everyday life. The section was created at the end of 2010. With the same name, there are dozens of sites in Runet.
Today I received a "letter of happiness" about copyright infringement. One of these sites has registered this phrase as a trademark. The trademark was registered in May 2011. The meaning of this registration was only one - to remove all competitors.
The letter demands to remove any mention from the site. For two years, efforts and money have been invested, every file of the site is saturated with the phrase, so not everything is so simple.
There is a desire to challenge this trademark, because. This phrase is often used in everyday life. Has anyone encountered a similar situation?
PS: Trademark No. 437044
Information can be found here

Answer 1

Disclaimer: I am not a lawyer.
Such types of use of a trademark are not subject to control by the right holder, such as:
- mentioning it for non-advertising purposes;
- use on goods that have already been put into circulation by the copyright holder himself or with his consent (for example, when using a purchased product that depicts a trademark or when reselling such a product);
- use for personal purposes;
- other types of use not related to the introduction of goods (services) into civil circulation
Unfortunately, Article 1484 of the Civil Code of the Russian Federation on the exclusive right to a trademark, paragraphs. 5, paragraph 2, as always, is vague: “on the Internet, including in a domain name and with other addressing methods.”
From all this, common sense tells me the following conclusions:
1) If your site is not called "Crafts Fair" and does not use this in the domain name, ignore the letter
2) If you do not provide services and do not sell goods on the site, ignore the letter
3) If your site is not in the zone ru, su or rf, ignore the letter

Answer 2

> The section was created at the end of 2010.
> Application date: 07/30/2010
so they are the first

Answer 3

for some reason this TK is not on the site

Answer 4

Unfortunately, you probably won't be able to do anything. Because competitors 1st registered a trademark. But there are ways to "jump" from responsibility.

Answer 5

Kaluzhanin is right. Legally, everything can be described as follows:
The exclusive right to a trademark can be exercised to individualize goods, works or services ... by placing a trademark on the Internet, including in a domain name and with other addressing methods (subparagraph 5 of paragraph 2 of Article 1484 of the Civil Code RF).
In the jurisprudence on disputes on the use of TK on the Internet, other addressing methods other than the domain name (for example, the use of phrases in the titles of sections in the full path of a web page) are not yet mentioned.
No one has the right to use, without the permission of the right holder, designations similar to his trademark in relation to goods for the individualization of which the trademark is registered, or similar goods, if as a result of such use there is a possibility of confusion (paragraph 3 of Article 1484 of the Civil Code of the Russian Federation).
When considering domain disputes, courts also take into account Art. 10bis of the Paris Convention containing the prohibition of unfair competition. To be recognized as an act of unfair competition, actions must damage business reputation, reduce the commercial value and individualizing ability of a trademark.
The use of verbal TK in the title of a section of the site is unlikely to cause damage to the copyright holder.
If the domain is still registered:
Based on judicial practice, a domain name registration may be canceled according to the following criteria: the domain name is identical or confusingly similar to a third party's trademark; the domain name owner does not have any legal rights and interests in relation to the domain name; the domain name has been registered and is being used in bad faith. The court, evaluating the actions of the domain administrator for the presence of an act of unfair competition in his actions, checks the presence or absence of three criteria in the aggregate.
There are cases when it was forbidden to use a domain name that was registered even earlier as a trademark. The court proceeded from the fact that the impossibility of the trademark owner to register such a domain for himself entails the impossibility of using his trademark via the Internet. At the same time, the owner of the TK proved that he was using the TK, and not registered, for example, specifically for making claims against the domain administrator (there are also such cases).
The criterion of common use of a phrase for the court, apparently, does not matter when it comes to the use of TK for goods/services of the same class. This is confirmed by the recent decision of the Presidium of the Supreme Arbitration Court of the Russian Federation, according to which McDonald's LLC was forbidden to use the phrase "From the heat, from the heat" registered as a trademark on the packaging.