Court denied claims against the “Zdorovye” firm in compensation recovery cases

By decisions of 07/09/2024 in cases No. A40-240759/2021, A40-218003/2021 Arbitration Court of Moscow refused to satisfy the claims of MAXIMUS LLC for the application of liability measures against Firm “Zdorovye” LLC for violation of exclusive rights to a trademark under Russian Federation Certificate No. 527696.

In case No. A40-240759/2021, the plaintiffs - MAXIMUS LLC and Forianelli Trading - filed a claim against Firm Zdorovye LLC for the recovery of 2,000,000 rubles in damages, based on the value of the violated exclusive right to the Bayu-Bai trademark under certificate No. 527696 for methods of production, sale, offers for sale on the Internet of the product children's herbal tea “Bayushki-Bayu”. In case A40-218003/2021, similar demands were made against Firm Zdorovye for the recovery of 2,000,000 rubles in damages.

Zuykov and partners represented the interests of the defendant, Firm "Zdorovye," in these cases.

To justify the losses, the plaintiff referred to the fact that between Kurortmedservice LLC (Sublicensor) and Rassvet LLC (Sublicensee) a sublicense agreement No. 30/10-19 dated October 30, 2019 was concluded, according to which the Sublicensor for a fee of 2,000,000 rubles for each trademark provides the Sublicensee with a non-exclusive license to use trademarks No. 527696, 526293.

At the same time, earlier by the decision of the Moscow Arbitration Court dated May 21, 2021 in case No. A40-210216/2020, the plaintiff’s claims in the said case against Kurortmedservis LLC for the recovery of compensation in the amount of double the cost of all shipments of counterfeit goods submitted by the plaintiff for the illegal use of each trademark "Bayushki-Bayu" produced in the period 2017-2020 were fully satisfied.

In the case under consideration, the plaintiff appealed to protect the rights to the same designation “Bayu-Bai”, demanding to recover damages from the company Firm “Zdorovye” for the use of the trademark on the same batch of counterfeit goods for the same period of violation. The Maximus society believes that in this case the established factual circumstances and judicial acts adopted in the framework of case No. A40-210216/2020 should not be taken into account, since another copyright holder (the Kurortmedservice society) applied for protection of rights and in defense of other trademarks (certificates No. 338019 and 183422).

However, the references of the Maximus company in legal positions about the impossibility of taking into account in this case the factual circumstances established in the framework of case No. A40-210216/2020, due to the participation in it of another copyright holder protecting other, but legally identical trademarks, are unfounded and subject to deviation. According to the legal position of the Supreme Court of the Russian Federation, set out in the ruling of June 15, 2016 No. 308-ES16-1475, proving the fact of community of economic interests is permissible not only through confirmation of legal affiliation (in particular, the belonging of persons to the same group of companies through corporate participation), but also actual. Previously, this legal position of Firm "Zdoroviye" was supported by the Constitutional Court of the Russian Federation’s conclusions, set out in the ruling of 14.12.2023 No. 57-P in case No. A40-215387/2021. More details

Thus, by decisions dated 07/09/2024 in cases No. A40-240759/2021, A40-218003/2021, the Moscow Arbitration Court refused to satisfy the claims of MAXIMUS LLC for the application of liability measures to Firm Zdorovye LLC for violation of an exclusive right for a trademark under Russian Federation Certificate No. 527696.

In addition, the 9th Arbitration Court of Appeal considered case No. A40-216736/2021 according to the rules established by the Arbitration Procedure Code of the Russian Federation for consideration of the case in the court of first instance, according to the claim of Maximus LLC against Firm "Zdorovye" for the recovery of 4,000,000 rubles (taking into account amendments) for infringement of the exclusive right to the trademark "Bayu-Bai."

On 07/05/2024, the Ninth Arbitration Court of Appeal in case No. A40-216736/2021 received a statement from the plaintiff to waive the claims against Firm “Zdorovye” LLC.

As a result, by resolution dated July 10, 2024, the Ninth Arbitration Court of Appeal accepted the refusal of the claim and terminated the proceedings No. A40-216736/2021.

Finally, the Ninth Arbitration Court of Appeal, by a ruling dated 07/08/2024 in case No. A40-220643/2021 refused to satisfy the claims of MAXIMUS LLC for compensation in the amount of 4,000,000 rubles for violation of the exclusive right to the Bayu-Bai trademark under Certificate No. 527696, based on the double value of the right to use such a trademark.

Consequently, the violation recognized as proven in relation to Firma Zdorovye LLC in case No. A40-210216/20, and for which the sanctions provided for by law have already been established, fully covers the claims brought by the plaintiff in this case.

According to the position of the Plenum of the Supreme Court of the Russian Federation, set out in paragraph 154 of Resolution No. 10, the court has the right to refuse to protect a person’s right to a trademark on the basis of Article 10 of the Civil Code of the Russian Federation, if, according to the case materials, actions to acquire the corresponding trademark or actions to apply specific protective measures may be qualified as an abuse of right.

Furthermore, the appellate court indicated that the absence of potential or actual use by Forianelli Trading Limited or MAXIMUS LLC of the disputed trademark in their business activities, as well as the lack of evidence of actual performance of the license agreement or the assignment agreement No. 23/08-21 dated 23.08.2021, indicates a lack of legal interest in protecting violated rights and only an intention by the named parties to gain financial benefits by filing numerous lawsuits and seeking large compensations, considering the restoration of rights in the previously reviewed case No. A40-210216/20.

As a result, the appellate court concluded that the plaintiff’s and rights holder’s actions in filing the present claims constituted an abuse of rights, which are not subject to legal protection. Given the above, the arbitration appellate court ruled that the claims of MAXIMUS LLC for imposing liability measures against Firm "Zdorovye" are not subject to satisfaction.