The Chelyabinsk company sued trademarks from the German manufacturer of car spare parts

The IP court granted the claim of Import Parts LLC, which operates the Trucksun car center network in Chelyabinsk, to the German automobile company ZF Friedrichshafen AG for the early termination of legal protection of two trademarks of the organization in Russia (Trakson and Traxon). They were used to name automobile gearboxes, and transmission parts, as well as to designate transmission maintenance and repair services for vehicles of the 12th and 37th classes of the ICGS.

According to court documents, in 2023, the Chelyabinsk company tried to register the Trucksun trademark for the name of its network of car centers. However, Rospatent considered that it is confusingly similar to the designations and the rights that belong to ZF Friedrichshafen AG.

One of the arguments of Import Parts for the cancellation of legal protection was the fact that ZF Friedrichshafen no longer operates in Russia and has not used controversial designations for 3 years. In turn, the plaintiff has been engaged in the sale of automobile spare parts and parts since 2019 and provides car service and car repair services, which reflects his interest in using the trademark.

According to experts, the origin of the company or the territory where it operates is not a key argument for the court. Alexander Khaminsky, head of the Law Enforcement Center in Moscow and the Moscow Region, notes that the key grounds that influenced the court's decision were the defendant's non-use of the trademark for three years, as well as ignoring the plaintiff's proposals for voluntary renunciation of trademark rights.

Sergey Zuykov, Managing Partner of Zuykov and partners, notes that the cancellation of legal protection of a trademark due to its non-use does not mean that it will be automatically registered to the plaintiff. "Rospatent may refuse registration due to the risks of misleading the consumer and the reputation of a trademark previously owned by a foreign company," said Sergey Zuykov. The expert also noted that today filing lawsuits for the cancellation of trademarks of companies that have left the Russian market is a common practice. In this regard, foreign organizations often apply for re-registration of their designations.

Source: Kommersant