Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney
The representatives of the company “Zuykov and Partners” protected the interests of LLC «Masterkhold» in the Arbitration Court of the City Moscow
In October 2018, the Arbitration Court of the City of Moscow admitted and satisfied the lawyers’ claimsof the company “Zuykov and Partners,” who represented the interests of LLC «Masterkhold» with respectto the designations “MasterHold.”The company “Masterkhold” has been forced to turn to the judicial authorities with a statement of claimfor protection of the exclusive rights to a company name, trademark and a commercial designation againstthe illegal use by individual entrepreneur D. N. Kornev.The plaintiff is a right holder of a company name – Limited Liability Company “Masterkhold” and of anabbreviated company name – LLC “Masterkhold”, and it was registered as a legal entity in August 24,2006. The company’s business activities involve the sale of cash-register equipment, its maintenance, aswell as comprehensive automated trading. On August 10, 2016, Rospatent registered a trademark with averbal element “MasterHold” (Certificate No. 583580, the priority date is August 11, 2015) in the nameof LLC “Masterkhold” in respect of the products and services of the ICGS classes: 9, 35 and 37. Startingfrom 2011 and up to the present, the company has been continuously using the commercial designation“MasterHold.” From August 1, 2007 up to September 20, 2014, the company was an administrator of adomain name “masterhold.ru.”In support of the asserted claims, the plaintiff has referred to the following circumstances. DmitriyNikolaevich Kornev was an employee of LLC “Masterkhold” during the period from 2012 up to 2014.The defendant's was responsible for ensuring the functioning of the company IT-service. Under thepretext of improving the optimization of the website work, D. N. Kornev reissued the administration ofthe domain name “masterhold.ru” for himself. Later, in 2014, the defendant was registered as anindividual entrepreneur. A year later, D.N. Kornev began to carry out the business activities similar to theactivities of the company “Masterkhold” using the said website.LLC “Masterkhold” submitted in evidence a notarial inspection protocol of a webpage of“masterhold.ru,” a reply to the lawyer’s request and an extract from the Unified State Register ofIndividual Entrepreneurs. It follows from the said documents that individual entrepreneur DmitriyNikolaevich Kornev is an administrator of the domain name “masterhold.ru” and a person carrying outhis activities via the said website.Guided by the above said facts and the evidence obtained, the plaintiff came to a conclusion that thedefendant applied intentionally the designations, which were confusingly similar to the means ofindividualization of LLC “Masterkhold,” thus using the popularity and a positive business reputation ofthe company. In this case, D. N. Kornev is carrying out his business activities with the use of the domainname “masterhold.ru” in the absence of an appropriate permission from the Limited Liability Company inthe similar field of activity. These actions infringe upon the legal rights and interests of the plaintiff, inconnection with which the company representatives turned to the court.The defendant, individual entrepreneur Dmitriy Nikolaevich Kornev, objected to the satisfaction of theasserted claims, and he stated about that in a written reply submitted by them.Considering the circumstances of the dispute, the court established the following: the plaintiff was theright holder of the trademark “MasterHold,” using the company name and the commercial designation“Masterkhold.” The defendant uses the verbal designation “masterhold.ru” in the name of theadministered domain name, as well as on the pages of the website. It is obvious, that the designations areconfusingly similar according to a sound, graphic and semantic criterion. At the same time, LLC“Masterkhold” has not given a consent to D. N. Kornev to use of the verbal designation “masterhold.ru.”The fact of the use of the disputed subject matters has not been challenged by the defendant.
Both subjects are carrying out their activities within the Moscow region. Determining the similarity of theservices rendered by the plaintiff and the defendant, the Court stated that it was recognized by fact, if theproducts (services) could be attributed by the consumers to the same source of origin due to their natureor purpose. Thus, the activities of the individual entrepreneur, associated with rendering services, offeringfor sale and the sale of products can be considered as similar with the services of the 35 th class of theICGS in respect of which the designation of the company “Masterkhold” has been registered (thedemonstration of the products; marketing; the renewal of advertising materials; the presentation of theproducts in all media means with the purpose of retail sale; the promotion of the products for the benefitof third parties, etc.).The notarial inspection protocol of the website “masterhold.ru” contains the information about the use byD. N. Kornev of the reputation of the company “Masterkhold” by placing the certificates indicating thatthey have been issued in the name of LLC “Masterkhold” and by mentioning the activities joint with theplaintiff.Having examined in detail the materials of the case, the judicial instance came to the followingconclusions. The plaintiff's claims are justified, taking into account the notoriety among the customers ofthe following things claimed in respect of “Masterkhold”: the means of individualization, the priority dateof the trademark registered by the company, as well as the chronology of the plaintiff’s creation as a legalentity and the creation of the defendant as an individual entrepreneur.Taking into account the arguments and evidence submitted by the lawyers of the company “Zuykov andPartners,” the court admitted the asserted claims and decided to prohibit the defendant to use thedesignations “MasterHold,” “Masterkhold” and the website “masterhold.ru” in any manner in respect ofthe services similar to the services rendered by the plaintiff. To bind D. N. Kornev to transfer to LLC“Masterkhold” the right to administer the domain name “masterhold.ru” within 14 calendar days from thedate, when the court decision comes into force. To recover from the individual entrepreneur in favor ofthe plaintiff the costs for paying the state fee in the amount of 18,000 rubles.