IPR Court Reviewed Federal Antimonopoly Service Refusal to Prosecute Unfair Acquisition and Use of Trademark
The Court for Intellectual Property Rights (hereinafter the IPR Court) upheld the denial of the Federal
Antimonopoly Service of Russia to initiate antimonopoly case to recognize as an act of unfair competition
the acquisition by a company of the exclusive right to a trademark similar to the applicant’s mark and the
use of such a mark. The reasoning for the refusal was the absence of a combination of arguments and
evidence confirming the necessary signs of unfair competition.
The entrepreneur challenged the refusal of the Federal Antimonopoly Service to initiate a case for violation
of antimonopoly legislation by a company. The entrepreneur owned the trademark No. 654624 in relation to confectionery, while the company owned the trademark No. 716761, also in relation to confectionery.
The applicant argued that the trademarks were confusingly similar and that the company had acquired the
exclusive right to the trademark and used it in bad faith. The Federal Antimonopoly Service of Russia
denied the application due to the failure to provide a body of evidence sufficient to qualify the company’s
actions as an act of unfair competition.
At three judicial levels, the complaint to challenge the decision of the Federal Antimonopoly Service of
Russia was rejected.
The courts noted there was no similarity between the designations, and also took into account the mismatch
in the type of production (manual and industrial), the range of goods, the place of sale of goods, which, in
turn, indicated the lack of purpose of the company to use the prominent designation of an entrepreneur.
Sergey Zuykov, the Managing Partner of Zuykov & Partners, Russian Patent Attorney and Eurasian Patent
Attorney commented that this case raised less obvious procedural issues related to initiating antimonopoly
cases at the Federal Antimonopoly Service of Russia.
In accordance with Article 44 of the Law on Protection of Competition, 2 when considering applications, the
Federal Antimonopoly Service of Russia establishes the presence of signs of violation of antimonopoly
legislation, determines the applicable rules and decides to reject antimonopoly case, including if such signs
are absent. It is important that the assessment of evidence on the merits at this stage is not performed.
At the stage of institution of proceedings, the presence of the arguments about the signs of violation in the
application and whether the evidence to which the applicant refers as supporting these arguments is attached.
The applicant cited the following arguments: the trademarks were confusingly similar; the decision to
register the company’s mark was made during the consideration of the entrepreneur’s claim against the
company for protection of the exclusive right to its trademark; the company’s actions were aimed at using
the mark awareness, which has been formed over a long period of time.
The application was accompanied by documents confirming the production and sale of products under the
The courts found that these arguments and evidence did not constitute grounds for initiating a corresponding
case. The Entrepreneur did not submit to the Federal Antimonopoly Service of Russia evidence of the actual
implementation of competitive activities by entities and individuals in the same geographical market, or the
intentional acquisition of the exclusive right, or a mixing of the disputed designations, including surveys and
opinions of consumers, or expert opinions.