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Zuykov and Partners Succeeded in Maintaining RINPHARM License Agreement in Full Force and Effect

March 30, 2021

Boris Valentinov, an individual, enjoyed the ownership of the “БЕЗОРНИЛ” /Bezornil/ trademark, registered for class 05 of the Nice Classification of Goods and Services, since 2000. In September 2019, Rospatent registered a license agreement concluded on May 14, 2019 between RINPHARM LLC (Licensee) and Valentinov B.G. (Licensor) for the use of the above-mentioned trademark. The agreement was executed as a non-exclusive license for the term of the exclusive right to the trademark in the territory of the Russian Federation.

In December 2019, Boris Valentinov concluded an assignment agreement with RINPHARM LLC, and the exclusive rights to the “БЕЗОРНИЛ” /Bezornil/ trademark were transferred to the latter.

As of March 21, 2020 the new right holder of the trademark sent to RINPHARM LLC a proposal to terminate the license agreement dated May 14, 2019. In the proposal, PHARMCOMM LLC company indicated a material breach of the terms of the agreement committed by the licensee. The representatives of RINPHARM LLC considered the claims of the right holder illegal and unreasonable and delivered a reasoned response, offering the right holder to continue the joint use of the disputed designation.

PHARMCOMM LLC repeatedly proposed to terminate the license agreement and then went to court with the requirement to do so. The main arguments of the plaintiff were that the defendant, as a licensee, has not fulfilled the conditions of the agreement and the obligation to report on the use of the trademark, and the trademark was used by the licensee otherwise than in the form in which it is registered.

However, Zuykov and Partners, representing the interests of RINPHARM LLC, involved as a defendant, had a different opinion and delivered a legal response to the statement of claim. The trademark attorneys pointed out that, contrary to the arguments of the plaintiff, RINPHARM LLC, not having the form of the report agreed between the right holder and the licensee, reported to the right holder on the use of the trademark, responding to the requirements of the right holder in letters dated April 6, 2020 and April 15, 2020.

In this regard, the company’s representatives believe that there has been no violation of the terms of the license agreement to report on the use of the trademark by the defendant. The RINPHARM LLC took all possible measures to fulfill the conditions of the license agreement, faithfully performed the obligations under the license agreement and allowed no violations in the use of the trademark. For these reasons, the defendant requested that the licensing agreement remain in force.

On March 15, 2021, having considered the dispute during the court hearing, the Moscow Arbitration Court dismissed the plaintiff’ claims against PHARMCOMM LLC. Thus, Zuykov and Partners safeguarded the client’s interests and secured the retention of the licensing agreement for the use of the “БЕЗОРНИЛ” /Bezornil/ trademark.

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Author of article

Sergey Zuykov

Sergey Zuykov

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