Use of a Third-Party Brand in Contextual Advertising
According to Article 1229 of the Civil Code of the Russian Federation, the use of intellectual property results or means of individualization (such as a trademark) without the rights holder’s consent is prohibited. Such use is unlawful and entails liability.
Following the logic of the Civil Code of the Russian Federation, the use of a trademark as a keyword in contextual advertising may be deemed unlawful. However, courts often deny protection of rights on this basis.
The Duality of the Law
According to several court rulings, the use of a trademark as a keyword in contextual advertising does not constitute a violation under Articles 1484 and 1515 of the Civil Code of the Russian Federation. This is because such use does not serve the purpose of individualizing goods but rather fulfills technical needs—determining who will see the advertisement.
To simplify: if a store shelf displays an "alternative" product under the trademark "LEGO," then the "LEGO" trademark is being used for individualization of goods. However, if a store employee learns that you are looking for "LEGO" and suggests an alternative, this is not a means of individualization but rather a form of targeting. The same logic applies to contextual/targeted advertising: since you like or are searching for "LEGO," we advertise an "alternative" to you—this, according to courts, does not infringe on the rights to the "LEGO" trademark.
But not all courts agree…
Position of the Intellectual Property Court (IPC)
The Intellectual Property Court (IPC), a higher specialized court, has stated that the reasoning of lower courts on this matter is erroneous, as they fail to justify the permissibility of using a trademark for advertising business activities without the rights holder’s consent (Case No. A40-167611/2018).
At the same time, the IPC emphasized that the primary challenge lies in collecting evidence of the defendant’s actual use of the trademark as a keyword. For example, in Yandex.Direct, keywords could have been assigned by an algorithm rather than the advertiser. Thus, holding an infringer liable under Article 1515 of the Civil Code of the Russian Federation directly depends on whether the rights holder can prove that the defendant unlawfully used the trademark.
What to Do?
First and foremost, it is essential to document the infringement of your rights using appropriate methods of photo and video recording. It is also advisable to look for other instances where the trademark has been used for individualization purposes (e.g., if the trademark was included in the link, was part of the advertisement, etc.). This will make it easier to demand compensation from the infringer under Article 1515 of the Civil Code of the Russian Federation.
What About Fair Competition?
As we have seen, the provisions of the Civil Code of the Russian Federation on intellectual property are interpreted differently by courts when it comes to awarding compensation in cases involving contextual advertising.
But are there other laws that could help the rights holder?
Yes, the Law on Protection of Competition (Article 14.6) provides a legal basis for claiming damages caused by the unlawful use of a trademark for product promotion.
The Supreme Court of the Russian Federation has issued clarifications on this matter:
172. The use of <…> a trademark in contextual advertising on the Internet as a criterion for displaying <…> an advertisement, where the keywords <…> are identical or confusingly similar to another party’s means of individualization, may, depending on the purpose of such use, be recognized as an act of unfair competition (Article 14.6 of the Law on Protection of Competition, Article 10.bis of the Paris Convention).
The Intellectual Property Court (IPC) also supports the position of the Supreme Court of the Russian Federation.
When seeking legal protection under Article 14.6 of the Law on Protection of Competition, the following factors must be considered:
- Whether the infringer sells a product protected by the trademark alongside its own products
- Whether the trademark has gained recognition in the given territory
- Whether the use of the trademark creates an association with the infringer’s productsIf at least one of these factors is present, the court may dismiss the claim.
For a detailed discussion on indexing and ranking in search results, as well as the use of the term "analog" in product descriptions and listings, stay tuned for our upcoming updates on the MAGENTA_IP channel.
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