21 June 2021

IPR Court Resolved Case on Prohibition of Use of Company Name

The Rodent company filed a lawsuit against the Radent-SK company for prohibition to use the company name without permission when dental practicing.

The plaintiff company was incorporated 16 years earlier than the defendant, and the core business of the parties is identical. The plaintiff and the defendant had previously litigated over the same claim, as a result of which the defendant changed its company name from Radent-SK to Rodent-SK.

Believing that the defendant still violated the plaintiff’s exclusive right to the company name, the company appealed to the court again. However, the courts of three instances dismissed the claim. 

The reasoning for the dismissal was based on the fact that the plaintiff had not practiced dentistry for a long time. 

In 2016, the plaintiff company was divided between the spouses as jointly acquired. The share pertaining to the spouse who was the head dentist of this clinic was 50%. Subsequently, he registered the defendant company, which at that time was named Rodent-SK. 

In 2017, the plaintiff submitted application to the Ministry of Health of the Russian Federation for the suspension of his medical license. In 2018, the plaintiff’s CEO incorporated a different legal entity, which instead of the plaintiff’s company, operated a dental practice at a different address.

The courts concluded that there was no evidence that the Rodent company was engaged in the types of activities for which it was registered. 

The courts also emphasized that if the problem was the impossibility of carrying out activities at the previous address, the plaintiff was not deprived of the right to amend the license in terms of the Rodent’s location. However, no such action was taken.

According to paragraph 152 of the Resolution of the Plenum of the Supreme Court of the Russian Federation of April 23, 2019 No. 10, the court must establish that the plaintiff and the defendant are actually engaged in specific similar activities. In practice, that can really lead to a confusion of different manufacturers and suppliers of goods or services in the eyes of the consumer.

As to the factual and legal narrative by the Court for Intellectual Property Rights (hereinafter the IPR Court), the plaintiff must provide evidence of the implementation of specific activities, including those specified in its articles of incorporation. In relation to the defendant, it may provide data on both actual activities and the activities specified in the constituent documents. In the latter case, the implementation of these activities is presumed, unless the defendant proves otherwise.

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