Hello, mR2 editorial office and Chief Editor Alina Vladislavleva are in touch. We continue the heading #question_jurist and today we will discuss whether it is possible to use a trademark in the name of a musical group?
Spoiler: it is possible!
The article contains examples, comments from lawyers, a detailed analysis of the legal aspect of naming groups & all that stuff.
The article was prepared with the support of Natalia Khalilova, an expert at the CIS Skolkovo, and Natalia Medik, an intellectual property lawyer.
Trademarks surround us everywhere – from the cup of coffee you buy on your way to the office in the morning, the brands you wear to the brand of the car that takes you to the airport. Therefore, it is important to answer the question of what a trademark is, where and for what it is used.
Most often register:
Verbal trademarks. This is everything related to words and phrases, names, names (surnames), combinations of letters that have a verbal character, slogans, etc. without a graphic component.
Pictorial trademarks. This includes logos, images, characters in their performance, but without the verbal part.
Combined trademarks. Such trademarks protect both the image and the inscription at the same time.
Three-dimensional trademarks. These are three-dimensional objects, shapes and combinations of lines and shapes that will represent the shape of the product. For example, a statuette on a Jaguar car, the original shape of Coca-Cola bottles 174059, 210724 or the original shape of a Chanel perfume bottle 583497
and, you won't believe it, but…
Sound trademarks. This category includes sounds, vocal or instrumental phrases, fragments of musical works, but not the works themselves, various types of noises, as well as sound screensavers (remember the sound of windows startup – 372556, welcome melody on Russian Railways trains – 428463 or elements of advertising of goods and services – 399029, 412589).
Taste trademarks. They are not successful at registration and are not popular, but nothing prevents you from making the taste a trademark.
Olfactory trademarks. This includes fragrances and aroma signatures. It is worth saying that it is quite problematic to register such trademarks, there are many publications and arguments that such registrations are quite controversial due to the specifics of fragrances, a trademark with timely renewal is valid indefinitely, and the fragrance is not able to remain unchanged for many years, nevertheless, such registrations exist – this is a "floral fragrance, resembling a rose" – was registered for tires, "a strong smell of bitter beer" – for darts arrows and "the smell of freshly mown grass" – for tennis balls.
Light trademarks. Light signals and devices are recorded, indicating the duration, sequence and intensity of the signals.
Color trademarks. Quite a popular direction, many companies both in Russia and abroad register their corporate corporate colors and colors of popular products. The designations in this case consist exclusively of one or more colors. The most well–known registrations of color trademarks on the territory of the Russian Federation are the red color of MTS PJSC 560598, green color of Sberbank of Russia PJSC 556088, blue color of PJSC Gazprom 561631, turquoise color Tiffany & Company 560852.
Changing trademarks. This is the same sign, which can change colors or video sequence under certain conditions. The most striking example is, for example, the traffic light in the Yandex navigator 526621, changing color depending on the number of points during traffic jams or the Mosfilm film company screensaver 495198, also you can watch an animation with a confectionery from Nestle 577725.
Holographic trademarks. These are holograms with alphabetic and visual images, for example, 489400, 461300, 461703.
Tactile trademarks. Any tactile-sensory designation that helps to perceive the designation by touch, for example, made in Braille or made in a certain tangible form (but not as a form of goods), 462927.
Positional trademarks. They are designations or a logo located on a specific part of the product (and only the product), for example, the facets on a Heinz bottle 537658, изображение кармана на джинсах 495165, type of converse sole 432543 or three stripes on Adidas shoes 430200.
Where are the trademarks for musicians here?
Finally we got to the main point. With such a variety of possibilities, the stage name or the name of the band is also registered as a trademark. Let's analyze the ethical and legal side of this aspect.
"What nonsense is this?! The name of the band is a recognizable element, it should be covered by copyright!"
Remember! The name of a musical group or the name of a musician is not subject to copyright. Even if you use an invented word in the title, an Anglicism, transcribe or combine several foreign words, it will not be considered an independent work. Registration of the right to the name takes place by registering it as a trademark in Rospatent. You can do exactly the same with any names and brands of your music project.
A trademark is used by a company or an individual entrepreneur to denote the individualization of its goods and services, i.e. the official registration of its exclusivity, uniqueness and uniqueness.
An interesting fact: until 2022, individuals without the status of an individual entrepreneur could not register a trademark in their name. But everything changed on June 28, 2022, when a law was officially published allowing individuals and the self-employed to register trademarks. It will come into force one year after publication — on June 28, 2023.
A trademark is registered for specific classes of goods or services in the International Classification of Goods and Services – abbreviated ICTU.
The MCTU contains 45 classes — 34 classes of goods (classes from 1st to 34th inclusive) and 11 classes of services (classes from 35th to 45th inclusive).
Musicians most often choose 41 class, which include services designed to entertain people or organize leisure activities. But if a musician, band or label plans to use the name as widely as possible for commercial purposes, the trademark must be registered in each class that is interesting for further activity and commercialization.
Let's look at real examples of how trademarks are used in the music industry
Problems with banned substances, themis, scandals and the struggle for a trademark. Alexey Dolmatov is better known to the audience as a Russian rap artist with the pseudonym Guf. This pseudonym appeared in 2000. Co-founder and member of the CENTR group, co-founder of the CAO Records label, founder of the ZM Nation label, winner of the RMA, Rock Alternative Music Prize and others.
Trademark "Guf"/Guf (no. 337255) was registered back in 2007. Since then, the designation has been accompanied by various lawsuits. For example, now there is a trial for 5 million rubles. His first producers "Iconmedia", who registered a trademark for the Russian division of the Warner label, are suing.
Alexey himself is engaged in the promotion of his brand of sportswear and accessories Lugano/LUGANO LUGANO AGNO LUGANG (trademark no. 647213), and also continues to fight for the opportunity to perform at concerts under his own pseudonym.
We wish him good luck!
The name of this Russian band originated thanks to the lines of a poem by the Russian poet of the Silver Age Sasha Cherny, on the basis of which the song "Under the Mute" from the band's first album was created. The company headed by the former producer of the musical group tried to prohibit the use of the designation "SPLIN". Official trademark of SPLIN (trademark no. 302752) it was registered in March 2006, but the intellectual property Rights court did not support the company's position and eventually rejected the application. The musicians of SPLEEN have retained the trademark no. 589973.
Another striking example was the Russian performer Levan Gorozia aka L'one.
Russian rap artist, former member of the Phlatline association, founder of the WDKTZ project together with DJ Pill. One, co-founder and member of the Marselle group. From April 17, 2012 to March 15, 2019, he was an artist of the label "Black Star". The owner of his own clothing line "Cosmokot", produced under the brand Black Star Wear.
In 2019, after leaving the Black Star label, he lost the right to perform under the pseudonym L'One and performed under his real name. In 2021, the label returned the artist's pseudonym L'One (trademark no. 528409).
Let's conclude: the registration of a pseudonym for a music label or producer, and not for an artist, can lead to difficulties during performances, advertising and promotion of the artist in case of termination of the artist's cooperation with these persons. The trademark owner may prohibit the use of the trademark on posters, streaming services, music distributions (usually it is in relation to such goods and services that pseudonyms are registered) to any third parties.
Reduce the risks and register the trademark directly in the name of the contractor (his sole proprietor).
“Trademark registration is also associated with many nuances and pitfalls. It will be easy to deal with a reliable partner of CIS Skolkovo"
And if you don't want to miss your brand [as we did], then you should apply for a trademark before it is launched, since there are quite a few examples when a successful brand was intercepted through trademark registration. We will tell you about brand squatting in the next article, do not switch.
Traditionally: do not forget that the best platform for maintaining a register of rights to your works, import/export reports and automated royalty calculation – MediaRights Revolution.
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