IPR Court Clarified Specifics of Determining Interest in Early Termination of Trademark

The Court for Intellectual Property resolved a case of early termination of trademark. The plaintiff was

found to be an interested party despite the lack of evidence of actual production of certain categories of

goods in respect of which early termination of legal protection was sought.

A food manufacturer filed a lawsuit with the Court for Intellectual Property Rights (hereinafter the IPR

Court) for early termination of legal protection of the trademark N 485492 which was registered for a

wide list of food products and which was not used by the right holder.

Following the pre-trial procedure of dispute settlement, the manufacturer previously sent

an offer to the right holder to voluntarily relinquish the exclusive rights to the mark or to

conclude an agreement on the alienation of the exclusive right to it.

In support of its interest in the claim, the manufacturer pointed out that the legal

protection of the mark creates barriers to the use of confusingly similar packaging, so as

it gives rise to sanctions against the manufacturer who intends to use this packaging for a

wider range of its products.

The IPR Court agreed that the plaintiff had an interest in filing a lawsuit with respect to the goods

produced and the goods similar to them, and emphasized that proof of actual use of a similar designation

with respect to all of the disputed goods was not required to prove an interest. The court pointed out that

the manufacturer could not use the packaging for all of the goods for which it requests the termination of

legal protection of the mark without running the risk of liability, and would only be able to expand the

range of products produced if the claim is satisfied.

Having analyzed the evidence of the right holder’s use of the trademark, the IPR Court partially upheld

the claim, terminating the legal protection of the trademark in relation to certain food products. Not all of

the goods covered by the trademark were actually produced under the mark, so the court upheld the

trademark only in relation to the goods actually used and those similar to them.

Sergey Zuykov, the Managing Partner of Zuykov & Partners, Russian Patent Attorney and Eurasian

Patent Attorney comments as follows. Based on Article 1486 of the Civil Code of the Russian

Federation, a claim for early termination of the legal protection of a trademark due to its non-use may be

claimed only by an interested person. However, the law does not define this concept, in connection with

which it is advisable to refer to judicial practice.

It is explained in paragraph 165 of the Resolution of the Plenum of the Supreme Court of the Russian

Federation of April 23, 2019 No. 10 that for the recognition of interest, it is necessary that the totality of

the circumstances of the case indicates that the focus of interest is the subsequent use in respect of similar

goods identical or similar to the extent of confusion with the disputed trademark designation. It does not

matter whether the plaintiff intends to register such a trademark itself.

Earlier in the Review of Practice, approved by the Presidium of the Supreme Court of the Russian

Federation on September 23, 2015, the category of legitimate interest as a determining interest was also

indicated.