The lawyers of the company “Zuykov and Partners” defended the right to the trademark “Domznak” in the Ninth Arbitration Court of Appeal
In February 2019, the Court of Appeal considered the dispute between plaintiff Individual Entrepreneur Andrienko V.Y., who was represented by “Zuykov and Partners,” and defendants Individual Entrepreneur Eremenko M.V. and LLC “Prime Media” (the founder and the general director is Eremenko M.V.). The court hearing was initiated by the defendants, who had challenged the decision of the first-instance court.
Individual Entrepreneur Andrienko V.Y. appealed to the Arbitration Court of the City of Moscow with the claims to prohibit Eremenko M.V. and “Prime Media” to use the designation domznaki in the domain name and on the pages of the web-site http://domznaki.ru and on the recovery from Eremenko M.V. compensation in the amount of 300,000 roubles for the violation of the exclusive rights to the trademark.
Since 2007, the plaintiff has been engaged in the manufacture and the sale of address plaques, house signs, street plaques and the like under the designation “Domznak,” including the sales via the Internet. In 2008, Andrienko V.Y. registered the domain name domznak.ru and became its administrator. In February 2014, the Individual Entrepreneur received certificate No. 505981 for the trademark “Domznak” (the priority date is of November 9, 2012). The protection was granted with respect to the 6th, the 9th and the 35th classes of the ICGS containing a broad range of products, including: “mechanical signs; luminous signs; guiding plaques.” Since 2010, Individual Entrepreneur Eremenko M.V. has owned the domain name www.domznaki.ru and he has carried out its administration. The said domain address is used for the sale via the Internet of such products as: house signs, street plaques, signs for houses and the like. The plaintiff believes that the word designation domznaki.ru used in the domain name is confusingly similar to the trademark “Domznak,” which right holder he is. In this case, Andrienko V.Y. has not given a permission to use that means of individualization, considering such actions as an infringement upon his legitimate rights and interests, and he appealed to the court seeking protection. The defendant objected to the satisfaction of the statement of claim with respect to the arguments specified in the written counter reply.
In support of the declared position, the plaintiff submitted a notarial report of the examination of the web-site http://domznaki.ru/, which contained the offers for sale of the products belonging to various street and house designations (address plaques, luminous signs, etc.). Andrienko V.Y. also made a sample purchase confirming that the defendant was engaged in the sale of those products by using the domain www.domznaki.ru. Eremenko M.V. did not challenge the fact of using the disputable designation, but he believed that the declared claims were unjustified. In the submitted written counter reply, the defendant questioned the protectability of the trademark registered with respect to the plaintiff. As the arguments, he indicated to the fact that the designation “Domznak” was a complex abridgement and included 2 bases: a “dom” (the basis of an adjective “domovoy”) and a “znak,” which indicated to the products being sold. Thus, the designation “Domznak,” in fact, indicates to the kind of the products, what makes the trademark non-protectable in accordance with Subparagraph 3 of Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation.
Having reviewed the positions of the parties, and also having studied the case materials, the court drew attention to a number of circumstances. Individual Entrepreneur Eremenko M.V. and LLC “Prime Media,” using the domain name domznaki.ru, sell house signs, street plaques, luminous signs and the like. The defendant (Eremenko M.V.) is the domain administrator and he is responsible for the choice and the use of the domain name. When comparing the designations domznaki and “Domznak,” the issue on a confusing similarity is a matter of fact and, according to a general rule, it shall be resolved by the court without appointing an examination. As a result of the conducted comparative analysis, the judicial instance came to a conclusion that there was the similarity of the designations according to sound, graphic and semantic criteria. Consequently, the trademark “Domznak” and the designation domznaki are confusingly similar. The products sold by the plaintiff and the defendant are also homogeneous. The said circumstances indicate the possibility of confusing the consumers with respect to the legal subjects manufacturing and selling the products. In support of the justification of the claims for compensation, the plaintiff submitted evidence of the fact of the existence of the exclusive right to the trademark and the fact of the illegal use of the said subject matter by the defendant. The defendant’s argument on non-protectability of the designation shall be rejected for the reason that: “...the person to whose name the trademark is registered can not be refused in protecting it till the moment, when the grant of the legal protection to such trademark is recognized invalid in accordance with the procedure stipulated in Article 1512 of the Civil Code of the Russian Federation, or the termination of the legal protection of the trademark by the way established by Article 1514 of the Code.”
Having studied the materials of the case and having heard the opinions of the parties, the court decided to satisfy the plaintiff’s claims in full, namely:
- to prohibit Eremenko M.V. the use of the designation “domznaki” in the domain name and on the pages of the web-site http://domznaki.ru;
- to recover from Eremenko M.V. 300,000 roubles of compensation for the violation of the exclusive right to the trademark “Domznak”;
- to prohibit LLC “Prime Media” from using the designation “domznaki” by the use as a domain name in the Internet.
Subsequently, the defendant challenged the court decision by filing an appeal petition. As a result of the consideration of the case, the Ninth Arbitration Court of Appeal determined to uphold the decision of the Arbitration Court of the City of Moscow of December 20, 2018 in case No. A40-173311/2018 unchanged and to dismiss the appeal petition.