Ufaoil Seeks to Prohibit a Gas Station Chain from Using the Name "Ufaoil"

JSC Company Ufaoil has filed a lawsuit with the Arbitration Court of the Republic of Bashkortostan seeking to prohibit the use of the name Ufaoil by a regional gas station chain. The claim has been brought against three Ufa-based companies: PIK LLC, Azimut LLC, and Fortuna LLC.

According to the claimant, the three companies have, for an unspecified period of time, used the name Ufaoil (the Latin transliteration of "Уфаойл") in the branding of their filling stations. The oil trader states that Fortuna and Azimut are affiliated with PIK, which has owned a trademark containing the unprotected element Ufaoil since April 2018. Meanwhile, the claimant has used a trademark containing the unprotected element Ufaoil since September 2002. Company Ufaoil argues that its exclusive right to its corporate name predates the defendant's trademark registration and therefore enjoys chronological priority.

Kirill Gorbunov, Director of PIK LLC, stated that the company has been using its registered trademark for approximately ten years and that he was unaware of the lawsuit filed by Company Ufaoil.

According to Sergey Zuykov, a patent attorney and Managing Partner of Zuykov and partners, the claimant has little chance of succeeding because the Civil Code of the Russian Federation clearly distinguishes between the legal protection afforded to a corporate name and that of a trademark.

"A corporate name may only be prohibited from being used as part of another company's corporate name. The use of a disputed designation can only be prohibited on the basis of trademark rights. However, in the claimant's trademark, the word Ufaoil is expressly excluded from legal protection. This means that the trademark protects only its graphical design, not the word Ufaoil itself. Furthermore, the defendant owns its own trademark containing the unprotected word 'Ufaoil.' The existence of a valid and unchallenged trademark owned by the defendant constitutes grounds for dismissing the claim. I believe the claimant would have had a stronger case if it had filed a lawsuit alleging unfair competition. It is possible that such a claim may be brought at a later stage," the expert commented.

Source: RBC Ufa