07 November 2022
#Visual Identity Usage

Russian IP Court upholds finding of confusion in product mixing case

In a long-running case that has now gone through several rounds, the IP Court has held that the introduction by a plant of products that are capable of causing confusion with the applicant’s products is contrary to Article 14.6(2) of the Competition Law (2006/N 135-FZ).

The manufacturer of Reagents KSSB-2M and the owner of trademarks N 499798 and N 687694, brought an infringement claim against a competitor that had introduced into the market identical goods under the same name.

Considering the similarity of the marks, and the fact that this infringement took advantage of its mark, the plaintiff applied to the antimonopoly regulator – the Federal Antimonopoly Service for the Republic of Bashkortostan. At first, the service refused to hear the application but the plaintiff challenged this.

The court of first instance – the Arbitration Court of the Republic of Bashkortostan – also initially refused to hear the claim on the basis that the abbreviation KSSB means ‘condensed sulfite-alcohol stillage’, a type of product produced by both the plaintiff and the defendant. The 18th Arbitration Court of Appeal upheld this finding.

However, the IP Court (court of cassation) considered it premature for these two courts to conclude that the designation KSSB-2M is not distinctive in the minds of consumers of oil and gas products, and ordered a retrial.

The court of first instance reconsidered its ruling and satisfied the application, concluding that the defendant’s product was capable of causing confusion, contrary to Article 14.6(2) of the Federal Competition Law. The courts of appeal and cassation recognised these conclusions as lawful.

In 1997 (before the founding of the competitor), the applicant developed the technical specifications for Reagent KSSB-2M and began manufacturing and selling it under that name. In 2017, the plant received a safety-data sheet for chemical products for the substance and a certificate of conformity, the catalogue sheets of products were also registered. Thus, in the opinion of the antimonopoly authority, parallel production was made visible.

The IP Court noted that for a long time, only the plaintiff was producing KSSB-2M. Further, while the product name KSSB-2 is commonly used, KSSB-2M is not. Thus, copying the name in this case cannot be due solely to functional use.

The court unequivocally recognised the high likelihood of confusion between the two parties’ marks due to the identical name of the goods (despite different packaging designs), similar consumer base, and, a wide and long-term recognition of the original product. The court emphasised that the infringement would result in loss of business for the legitimate product at the hands of the infringer.

Originally published in World Trademark Review

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