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Court Distinguished Types of Unfair Competition Arising from Confusingly Similar Packaging of Goods

21 Apr 2021 (updated at 08 Jul 2021)

The Court for Intellectual Property Rights (hereinafter the IPR Court) considered a claim of unfair

competition for acquiring the exclusive right to a trademark and using it to create sameness or similarity

in order to confuse theconsumers. The trademark is a graphic design of the packaging, which is

confusingly similar to the packaging of a competitor, which was used by the latter for a long time. The

court did not find unfairness in the form of imitation of packaging, but recognized the filing of an

application for registration of such a mark as unfair.

Earlier, a combined trademark No. 601902 had already been registered in the name of the right holder.

The competing company filed a lawsuit with the IPR for the admission of the fact of

unfair competition for the acquisition of the exclusive right to this particular mark and its further use,

including for the imitation of the competing company’s packaging.

The court in two instances found the packaging of goods to be confusingly similar, but pointed out that it

did not see any imitation and, as a consequence, no unfairness in the form of creating confusion.The

Court stressed that, according to Paragraph 2 of Article 14.6 of Federal Law No 135-ФЗ, unfair

competition is prohibited in the form of actions that might cause confusion with the activities of a

competitor or with their products commercialized in the Russian Federation, including the imitation of

appearance or packaging of goods. But the unfairness is established only when there is an intent to

create confusion with the competitor’s goods. In this case, it is the basic elements of the packaging which

are traditional for goods of this type that are similar.

At the same time, the similarity of the packaging allowed the court to ascertain the fact of unfair

competition in another form, which is related to the acquisition and use of the exclusive right to a

trademark, as provided for in Article 14.4 of Federal Law No. 135-ФЗ. The court noted that the key to

resolving this issue is the evaluation of the right holder’s intention when filing a trademarkapplication and

its subsequent behavior.

The references of packaging which were examined in the court had been used by a competitor for a long

time and had become generally known to consumers. However, the defendant applied to the

antimonopoly authority for recognition of the sale of identical goods in this packaging as unfair. During

the consideration of the antitrust dispute, it also applied for registration of the respective trademark with

the Russian patent office.

Upon the registration of the trademark, the right holder sent a claim to the competitor to stop selling the

goods in the disputed packaging, which, according to the court, indicated the unfair purpose of acquiring

the exclusive right to the mark, namely, only to gain a competitive advantage.

Sergey Zuykov, the Managing Partnerof Zuykov& Partners,

RussianPatentAttorneyandEurasianPatentAttorneycomments:the intent to create confusion with a

competitor’s activities or products is one of the most ambiguous circumstances that must be established in

order for actions to be considered unfair.

In bad faith, the intent is aimed at causing harm to a competitor, attempting to putit out of the commodity

market. But if some components are characteristic for the packaging of goods of this or that kind (an ice

cream conein this case), the court may recognize the mixing as accidental, establishing that the actions of

using similar packaging correspond to the behavior, which in such cases can be expected from any

manufacturer, which does not go beyond the exercise of civil rights and fair business practice.