On December 13, 2023, a hearing was held in the Intellectual Rights Court in case No. SIP-386/2023 on the claim of SPZ-4 LLC to recognize the actions of Samara Bearing Plant 4 LLC in registering a trademark under Certificate No. 753920 and its use as abuse law and act of unfair competition.
Zuykov and partners in this case represented the interests of the defendant - Samara Bearing Plant 4 LLC.
Let us note that the requirement to recognize as an act of unfair competition the actions of a person to acquire and use an exclusive right, filed in the arbitration court, is considered in the order of claim proceedings, and the right to appeal arises only from the plaintiff whose rights and legitimate interests are violated by such actions (Article 4, Arbitration Procedure Code of the Russian Federation). At the same time, the burden of proving the circumstances on which the plaintiff bases his claims rests with him.
However, in the materials of case No. SIP-386/2023 there is no evidence of widespread use of the disputed designation by the plaintiff before the date the defendant filed an application to register this designation as a trademark, as well as evidence of the designation becoming well-known among consumers as a result of its use. In violation of the provisions of Article 64 of the Arbitration Procedure Code of the Russian Federation, the plaintiff did not provide in the case materials a sufficient body of evidence indicating the widespread use of the disputed designation, the receipt of such designation among consumers, as well as the defendant’s intention to take advantage of the established reputation.
In addition, there is no information that, when acquiring the exclusive right to the disputed trademark, the defendant intended to take advantage of the recognition of the designation. Even establishing the knowledge of the right holder about the use by other persons of an identical or confusingly similar designation before the priority date of the trademark is not enough to conclude that the person acted in bad faith when acquiring the exclusive right to the trademark.
The defendant also drew the court’s attention to the lack of evidence that trademark No. 753920 is used to make demands on other persons, including the plaintiff, to ban or stop using similar designations. Under such circumstances, there is no basis to assert that the defendant acquired the exclusive right to a trademark for an dishonest purpose, namely: misleading the consumer about the product and its manufacturer, obtaining unjustified benefits by registering and using the disputed trademark.
Guided by articles 110, 167 – 170, 176, 180 of the Arbitration Procedure Code of the Russian Federation, following the results of the consideration of the case, the court decided to refuse to satisfy the claim of SPZ-4 LLC.