Sergey Zuykov

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

26 November 2021

The Court found no abuse of registration in the case where the very author of the images in question registered them as trademarks

The Intellectual Property Rights Court (hereinafter, the Court) decided on the case of trademark registration and usage claimed to be unfair. The claim was denied as the entrepreneur who holds the trademark is the very author of the images protected as trademarks in question and uses them in good faith. 

The company filed a claim to find an abuse of fair competition in the entrepreneur’s actions to acquire exclusive rights for trademarks ## 572840 and 631667 and their usage.  

The company referred to the common practice when several participants to the market, as well as the Company itself, used the aforementioned images in their similar activity for a long period of time and claimed that the entrepreneur’s actions to acquire exclusive rights for the trademarks in question were targeted at excluding his competitors from the market by filing numerous claims among other things.

The Court dismissed the claim; the court of cassation enforced the Court’s decision.

The Court assumed that long before the company was registered as a legal entity, the entrepreneur was the author of the images which he registered later as the trademarks and he had them made in woods for further sale.

Moreover, the Court pointed out that neither the entrepreneur's intention to reap benefits from the recognition due to his competitors' activity nor his intention to harm the Company’s business reputation and his intention to limit the Company's activity were substantiated.

The Court took into consideration the subsequent right owner's behavior, i.e. the first claim to protect exclusive rights was filed several years after filing the corresponding registration applications.

As the result, the Court found no abuse of registration in the entrepreneur's actions in trademarks registration and usage.

One of the key aspects of the case was to determine the authorship of the images.

The plaintiff mistakenly claimed that the authorship can be evidenced only by the original work with the name of the author clearly indicated. However, the court rightfully scrutinized the whole body of evidence in the case, e.g. the author's creative style was considered.

A similar approach is taken in the case between the same parties on the protection of exclusive rights for the aforementioned images. Moreover, while challenging the authorship of the images, the Company provided the court with no evidence that other persons were authors of the images.

Originally published on World Trademark Review

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