IP Court Presidium Confirms Coexistence of “CORTES” and “Hernan Cortes” / “Don Cortez” Trademarks

The Presidium of the Intellectual Property Court upheld the decision of the court of first instance in case No. SIP-946/2024, which had declared invalid Rospatent’s decision of May 17, 2024, to cancel the legal protection of the “CORTES” trademark.

Earlier, Aleksandrovy Pogreba LLC, the owner of the “Hernan Cortes” and “Don Cortez” trademarks (Nice Classes 32 and 33), had succeeded before Rospatent in invalidating the grant of legal protection to the “CORTES” mark. However, Van Pur S.A. and Oasis LLC challenged that decision before the Intellectual Property Court.

In its decision of December 3, 2025, the court of first instance granted the applicants’ claims, finding that Rospatent’s conclusions did not comply with subparagraph 2 of paragraph 6 of Article 1483 of the Civil Code of the Russian Federation. The interests of Oasis LLC and Alfa-M LLC were represented by the lawyers of Zuykov and partners, who demonstrated the unlawfulness of Rospatent’s decision regarding the CORTES trademark.

Disagreeing with this ruling, Rospatent and Aleksandrovy Pogreba LLC filed cassation appeals with the Presidium of the Intellectual Property Court. However, the Presidium supported the findings of the lower court, noting the correct application of the methodology for assessing the likelihood of confusion and the proper reasoning of the judicial act.

Particular importance in this case was attached to the assessment of the degree of recognition and distinctiveness of the trademarks. The Presidium confirmed its previously established legal position that this factor does not have a one-sided effect. Depending on the circumstances, the reputation of the earlier mark may either increase or, conversely, decrease the likelihood of confusion.

The court also noted that, where there is some similarity between the signs, their actual coexistence in the marketplace becomes significant. In this case, products bearing both the contested and the cited trademarks had already been present in commercial circulation in the Russian Federation. This circumstance was taken into account in concluding that there was no likelihood of confusion.

Thus, the Presidium found no grounds to reassess the conclusions of the court of first instance and upheld its decision, dismissing the cassation appeals. The position presented by Zuykov and partners was fully supported by the court.