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Author
Sergey Zuykov

Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney

12 September 2022

IP Court explained the practical features of the qualification of abuse of the right

In most cases, trademark owners do not assume that by filing a claim for the protection of an exclusive right, it would seem that it is completely indisputable, they are legally crossing the line separating a legal claim from an abuse of the right.


For example, in case No. A74-12361 / 2020, the entrepreneur-owner of the trademark No. 309546 "Sladkarnitsa" filed a lawsuit against the Sladkarnitsa confectionery house with a demand to recognize the use of the trademark and confusingly similar designations as illegal, as well as the obligation to stop such use and eliminate the results of the offense (remove at their own expense signboards with the appropriate designations, withdraw from circulation and destroy at their own expense counterfeit goods, labels, packaging of goods on which a trademark or a confusingly similar designation is placed).


Prior to filing the lawsuit, the legal protection of the trademark of the plaintiff was prematurely terminated in part in relation to some goods and services, in connection with which the court of first instance dismissed the lawsuit, referring to the fact that the plaintiff asks to stop the infringement in respect of those goods and services for which the trademark no longer distributed, i.e. the plaintiff's actions to protect the exclusive right to a trademark constitute an abuse of the right. This conclusion was upheld by the Court of Appeal.


Supporting the dismissal of the claim, the Intellectual Property Rights Court noted that the subtlety of the case lies not in whether there is an abuse of the right by the plaintiff or not, but in what exactly to substantiate its presence. In this connection, he emphasized that he agreed with the outcome of the case, but not with the rationale given by the lower courts.


The IP Court noted that the operative part of the relevant decision on termination of legal protection was announced on November 25, 2020, and the statement of claim was filed on November 27, 2020, on the same day as the decision on early termination of the legal protection of the mark was dated. This gave grounds for the lower courts to come to the conclusion that at the date of filing a claim against the defendant, the plaintiff not only knew about the existence of legal claims in relation to the trademark, but also had information that the legal protection of the disputed trademark was terminated in part.


The IP Court noted that the abuse in this case is confirmed not only by the existence of an appropriate judicial act on the partial early termination of legal protection, but by the real non-use of the trademark by the copyright holder for all, not only “discontinued” goods and services, and the direction of the requirements for future termination of use trademark, including in relation to goods and services for which the legal protection of the trademark has already been terminated.

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