Lawyers of Zuykov & Partners procured early partial cancellation of legal protection of LUXOR trademark
Russian Company Bulgari Commerce LLC and Bulgarian Company Solvex represented by the lawyers of Zuykov & Partners applied to Intellectual Property Protection court with a lawsuit against Cyprian Company Xoperus Limited. They applied for an early partial cancellation of legal protection of LUXOR trademark due to its non-use in regard of some services for which it has been registered namely: education, education process assurance and medical, hygienic and cosmetic treatments.
In plaintiffs’ opinion the registered trademark has not been used for these categories. This trademark was used only as the service mark for the well-known cinema chain Luxor.
The plaintiffs are interested in early termination of legal protection of the disputed trademark. Bulgari Commerce and Solvex have joint-cooperation in the production and sales of perfume and beauty products under LUXOR, LUXOR BARBER trademarks registered for Bulgari Commerce in regard to class 03. The products are manufactured in Bulgaria and are sold on the territory of the Russian Federation. The plaintiffs are determined to open in Russian Federation beauty salons under the name of LUXOR, and render educational services, services of trainings, medical and cosmetic treatments using so-named own-produced perfume and beauty. Bulgari Commerce has prepared for the use of LUXOR name for the individualization of cosmetic and hygienic services: has rented non-residential premises for opening an office and for trainings of hairdressers, technologists and stylists; has ordered blank certificates for the corresponding trainings, has purchased technical equipment and expendable materials necessary for salon opening.
Bulgari Commerce filed an application to Rospatent on registration of LUXOR trademark in regard of goods in class 03, services in classes 35, 41, 44 of the International Classification of Goods and Services (cosmetics, perfumery, medical, cosmetic treatments, and pedagogic and educational services, etc.). The existence of disputed trademark prevented plaintiffs from economic activity and could be the grounds for dismissal of registration of new trademark for the name of plaintiff.
In consideration of fact in evidence the Intellectual Property Protection court recognized the plaintiffs as the party interested in early termination of legal protection of the disputed trademark and concluded that the defendant has not provided proof that under the disputed trademark he rendered services for which claims under the lawsuit were filed and that the defendant uses the disputed trademark only in regard to “entertainment, organization of sport and cultural and educational events”. It is important to note that the court did not accept as well-pleaded the defendant’s submission that the films character (historical, topical, children’s films) can be regarded as proof of the use of the disputed trademark in regard of the services of the 41 class “education, education process assurance” since the character of the shown films per se cannot be used as a proof of rendering the above mentioned services.
Summarizing the results of the case the court concluded to satisfy in full plaintiffs’ claim and regulated the early partial cancellation of legal protection of LUXOR verbal trademark.