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Court Considered Particulars of Proving Use of Marks in Case for Early Termination of Their Protection

Senior Partner / Trademark Attorney

A foreign company filed a lawsuit with the Intellectual Property Rights Court (hereinafter the IPR Court) for termination of the legal protection of trademarks No. 574124 CIPRIANI, No. 562922 CIPRIANI, No.554252 HOTEL CIPRIANI in respect of services of class 43 under the Nice Classification because of non-use of the marks.

The plaintiff substantiated its interest, in the first place, by arguing that the main activities of the group of companies to which it belongs and whose name resembles the trademarks are restaurant and hotel business, food supply, marketing, and market research services in relation to various types of goods and services, advertising, etc. The plaintiff also pointed to a series of trademarks, united by the CIPRIANI verbal element, the right holder of which it was, and confirmed the intention of the group of companies to do business in Russia.

Moreover, Rospatent refused to register three trademarks similar to the disputed ones for the same class of services: GIUSEPPE CIPRIANI PRESENTS DOWNTOWN, GIUSEPPE CIPRIANI, CIPRIANI.

The court found the interest confirmed in relation to all services of class 43 under the Nice Classification, for individualization of which the disputed marks were registered. The right holder should have confirmed the use of the marks within 3 years from the date of the plaintiff’s proposal to the interested party, but the court found the use of all marks only in respect of several services and therefore satisfied the claim partially.

Sergey Zuykov, the Managing Partner of Zuykov & Partners, Russian Patent Attorney and Eurasian Patent Attorney comments as follows. Based on the legal position of paragraph 166 of the Resolution of the Plenum of the Supreme Court of the Russian Federation of April 23, 2019 No. 10, to maintain the mark, the right holder must prove its actual use for the introduction of each product, for which the mark is registered and for which the plaintiff has proved its interest. Homogeneity, in this case, is not taken into account. However, there is an exception when it is proved that such a mark is notorious (well-known). Not until then, the protection will remain in force and in respect of goods similar to those for individualization of which the trademark is used and is well-known to Russian consumers.

The widespread popularity of a trademark may be confirmed by long and intensive use of the marks, extensive geography of use, substantial costs of advertising goods and services, and high market value of the marks. However, in the case at hand, the defendant was unable to convince the court that its designations were well-known.

Originally published in World Trademark Review.

Senior Partner / Trademark Attorney