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Zuykov and Partners has achieved the termination of the legal protection of the trademark due to its non-use

Oct. 29, 2019

Limited Liability Company Mastkam, whose interests have been represented by Zuykov and Partners, carries out the activities for the manufacture of the products made of natural and artificial stone, which belong to the products of class 19 of the ICGS “non-metallic building materials,” as well as the activities for facing with natural stone and polishing up floors. And also, the company had organized its own production with the use of the modern equipment, what allowed manufacturing the products from granite, marble, onyx and travertine.

In order to expand the scope of the activities, LLC Mastkam filed with Rospatent an application for the registration of a trademark consisting of a combined designation with the word element “Master Stone,” in respect of the products and services of classes 19, 37 and 40 of the ICGS.

During carrying out an examination, the specialists of Rospatent found that the availability of the valid trademark “Stone Master,” which was confusingly similar to the claimed designation, hindered the registration. That means of individualization was registered in 2014 in the Register of the WIPO International Trademarks in respect of class 19 of the ICGS and it belongs to Stone Master SA. Since 2015, the protection of the trademark has also been extended over the territory of the Russian Federation.

In 2018, the representatives of Mastkam, guided by the requirements of Paragraph 1 of Article 1486 of the Civil Code of the Russian Federation, sent Stone Master SA a proposal of the interested person (a claim letter) offering to refuse from the right to the trademark or to conclude an agreement on the alienation of the exclusive right to the trademark, or to provide the interested person with a letter of consent to the registration of the disputed trademark in respect of the products of class 19 of the ICGS. However, the right holder of the international trademark stated that the information about the non-use of the trademark was not reliable. In this regard, the representatives of Zuykov and Partners, who were defending the interests of Mastkam, were forced to apply to the court with a statement of claim for the termination of the legal protection of the trademark due to its non-use.

In support of the claims lodged, the plaintiff's lawyers provided the following information:

  • The plaintiff, LLC Mastkam, is engaged in the manufacture of the products from natural and artificial stone relating to the products of class 19 of the ICGS, in particular, it carries out the activities for the manufacture of such products as: benchtops for the kitchen and bathroom, window sills, steps, fireplaces, etc.
  • The plaintiff is a person, who has a real intention to use the disputed designation in its activities and it has carried out the necessary preparatory actions for such use.
  • During the three-year period preceding the filing of this statement of claim, Stone Master SA, which is a defendant, was not using the disputed trademark “Stone Master” for marking the products of class 19 of the ICGS on the territory of the Russian Federation.
  • Taking into account the fact that the plaintiff's activities are related to the manufacture of the products and services in respect of the products of class 19 of the ICGS, the interest of Mastkam in the termination of the legal protection of the trademark of Stone Master SA is due to the homogeneity of the products in respect of which the use of the designation is planned. And as a consequence, the emergence of a principal possibility of forming a false idea with the consumer about the person providing the services for the manufacture of the stone products. This will lead to confusion and create the false associations among the consumers about the connection of the right holder of the trademark with a certain quality of the services provided under this designation and to the use of someone else's reputation.
  • All the above circumstances prove that the availability of the trademark “Stone Master,” which is owned according to the international registration by the defendant Stone Master SA, serves a hinder to the implementation by Mastkam of the economic activities using the designation.

After reviewing the case materials and listening to the opinions of the parties, the court concluded that the plaintiff's position was justified and it satisfied the claims lodged in full and decided to terminate early the legal protection of the trademark “Stone Master” according to the international registration in respect of the right holder Stone Master SA due to the non-use of the trademark on the territory of the Russian Federation in respect of all products of class 19 of the ICGS.

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Author of article

Sergey Zuykov

Sergey Zuykov

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