Protection All Round¹ 1 (2011)
Rights to a trademark in HTML code were recognized as infringed for the first time in Russia.
Russian company Communication Engineering (plaintiff), a client of Gorodissky & Partners, addressed the Arbitration (Commercial) court of St. Petersburg and Leningrad Region with a suit against Russian firm STR (defendant), claiming that when the designation «EXPRO», which is a registered trademark (Certificate No. 294499), is typed in a search bar of the Rambler search engine (http://www. rambler.ru/), the search results page shows under No. 1 a link to a source located on the Internet at www.
The main matter in dispute was whether use of a trademark in the HTML code could constitute an infringement of the exclusive rights to such a trademark as provided in article 4(2) of the Russian Trademark Law (the latter was effective at the time of the alleged infringement) if used on the Internet, particularly, in a domain name and via other addressing modes (a similar provision is found in article 1484 of the Russian Civil Code at present).
According to the initial pleading of STR, it had not been established that they had introduced the information into the field «title» in the search engine, or when they did. In fact, as long as Rambler Internet Holding, Russia, was the owner of the Rambler search engine, it was this company that would have been responsible for putting up the information in question. The first instance court agreed with the defen- dant’s arguments and dismissed the suit. The Court Decision was not subjected to appeal proceedings, although the plaintiff filed a cassation with the Federal Arbitration (Commercial) Court of the
In its opinion for the cassation, the defendant advanced the argument that it was Rambler Internet Holding, not the defendant, that should bear responsibility for placing information on the owned resource. The defendant put forward a new thesis in support of its position:
Article 7(1) of the Russian Law «On Copyright and Neighbouring Rights» (a similar provision is found in article 1259(1) of the Russian Civil Code) states: «Copyright subject matters shall incorporate literary works (including computer programs)». Therefore, the HTML code, being a computer program, enjoys legal protection as an independent subject matter of copyright.
It follows from the foregoing that the mere mentioning of a word sign in a literary work, even if it is registered as a trademark, cannot be regarded as an infringement of exclusive rights to such a trademark.
The defendant’s representative substantiated its arguments with
However, the Federal Arbitration (Commercial) Court of the
During the new trial, the first instance court engaged as third party Rambler Internet Holding who confirmed in its testimony that the content of the «title» tag (‘metatag’) affected both search results and the
Communication Engineering company had to file another cassation. By a new judgment in this case, the Federal Arbitration (Commercial) Court of the
The court established that STR initially had committed an infringement of the rights of the plaintiff as a rightholder while developing the HTML code for its
STR argued that Rambler Internet Holding was actually responsible for the information in question, because it was they who administered the
It was found that for Russian customers, the trademark «EXPRO» was associated with a product of a specific manufacturer. Customers use search engines on the Internet and focus on gaining information about such products specifically. Consequently, the defendant used a designation, the rights to which belong to the plaintiff, in the HTML code of its