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

disputed mark.

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.