Court Declares No Trademark Infringement Using Doctrine of Exhaustion of Exclusive Right to the Trademark
The owner of the “Экономпанель” /econompanel/ trademark No. 177030 applied to the
arbitration court with a claim for compensation for infringement of the exclusive right due to the
fact that the infringer’s website offered for sale goods containing the word “econompanel”,
which is the English for the Russian “экономпанель”. The relevant offers for sale were also
placed on the aggregator site with a link to the infringer’s website.
Justifying the legitimacy of the use of the designation, the infringer referred to its use in relation
to the goods commercialized by the trademark owneritself.
The court of first instance did not find the defendant’s argument convincing and found the
evidence of the use of the designation on the website sufficient to grant a judgement to plaintiff,
but all the courts of superior jurisdiction did not uphold the decision (the case went through two
circles of instances, ending with a dismissal of the lawsuit).
At the same time, the defendant has properly proved the compliance of circumstances in question
with Article 1487 of the Civil Code of the Russian Federation, as the disputed goods were
produced by the plaintiff and delivered to the defendant by a third-party intermediary. Thus,
there was no violation of the exclusive rights to the trademark in this case.
The Doctrine of Exhaustion of the Exclusive Right means that the trademark owner
cannot prevent its use in relation to the goods commercialized by it or with its consent.
Otherwise, the trademark owner would exercise the exclusive right twice in relation to
the same goods that are in the market. Notably, the Civil Code of the Russian Federation
supports exactly the national variant of the Doctrine of Exhaustion of the Exclusive
Rightmeaning the goods must be commercialized in Russia, including those imported
with the statement of the customs-approvedtreatment or use of goods, assuming the use
in the civiltransactions on the territory of the Russian Federation).
Sometimes, in practice the Doctrine of Exhaustion of the Exclusive Right is not obvious.
Forexample, incaseNo.A51-30569/2017, the court found that exhaustion took place, despite the
fact that the imported goods were unclaimed after. The goods were considered Res Nullius, but
this did not prevent the application of Article 1487 of the Civil Code of the Russian Federation.