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12 January 2023

Zuykov and partners achieved a review of the case concerning the legal protection of the trademark of Firm "Zdorovye" in IP Court

On 12/08/2022, the Intellectual Property Rights Court considered the cassation complaint of Firm Zdorovye LLC filed against the decision of the Arbitration Court of the Krasnodar Territory dated 03/16/2022 in case No. A32-31266/2021 and the decision of the Fifteenth Arbitration Court of Appeal dated 08/05/2022 on the same case on the statement of claim of LLC Firma "Zdorovye" against LLC "Agroberes" on the obligation to stop using the trademark and on the recovery of compensation in the amount of 5,000,000 rubles.


The interests of Firma Zdorovye LLC in this dispute were represented by Zuykov and Partners.


The subject of this dispute was the trademark "Sladkiy Son" (“Sweet dream”) according to the certificate of the Russian Federation No. 277176 in relation to the product "tea drink". The cassator believes that the courts of first and appeal instances incorrectly applied the norms for assessing the similarity of the compared designation and trademark, as well as the homogeneity of goods, and, as a result, incorrectly stated the absence of the likelihood of their confusion in civil circulation.


Thus, the plaintiff notes that the defendant violated the exclusive right of the Firm Zdorovye company to the trademark due to the coincidence of the verbal element “Sweet dream”, which carries the main individualizing load, while the courts of first and appeal examined the packaging design. In addition, the applicant of the cassation complaint draws attention to the fact that he and the defendant sell goods that match in type, purpose and material (composition - tea collection).


The plaintiff alleges that the company "Agroberes" uses the specified trademark through production, offering for sale, advertising, including on the Internet. The court of first instance stated that the company "Agroberes" produces tea drinks in accordance with the TU 9198-001-3659223-02 developed by the company. The range of tea drinks includes the sweet dream tea drink. The court of first instance, based on the general visual impression, type of font, came to the conclusion that there is no visual similarity between the image of the trademark of the plaintiff and the verbal designation used by the defendant, and having a sound and semantic similarity - the coincidence of individual verbal elements, taking into account graphic differences, does not lead to confusion images with the trademark of the plaintiff from the point of view of the consumer. In addition, the trial court did not establish the homogeneity of the compared goods.


The Court of Appeal agreed with the findings of the Court of First Instance and upheld its decision.


In its decision, the Intellectual Property Rights Court drew attention to the fact that the competence of the court of cassation includes checking not the results of the assessment of factual circumstances, but the compliance by the court of first instance with the methodology for establishing the similarity of designations, the homogeneity of goods, the likelihood of confusion of designations in civil circulation (ruling of the Supreme Court of the Russian Federation dated 02.02.2017 No. 309-ES16-15153 in case No. A60-44547/2015). By canceling the judicial acts of the court of first and appellate instances and sending the case back for a new trial, the Intellectual Property Rights Court indicated that the relevant methodology for establishing the similarity, homogeneity of goods by the courts of first and appellate instances when comparing the trademark of the plaintiff and the designation used by the defendant was violated.


The Intellectual Property Court pointed out that the establishment of similarity is carried out by the court based on the results of a comparison of the trademark and designation. According to clause 42 of Regulation No. 482, “The similarity of verbal designations is evaluated by sound (phonetic), graphic (visual) and semantic (semantic) features.” At the same time, special knowledge is not required to establish the degree of similarity of designations and homogeneity of goods, according to the explanations set out in paragraph 162 of Resolution No. 10. Despite the fact that the compared designations, as the cashier correctly notes, are identical in phonetic and semantic meaning, the court of first instance, relying on some differences in relation to the graphic criterion, as well as with reference to other elements of the packaging, came to the conclusion that there is no possibility of mixing the applied on the goods of the defendant designation with the trademark of the plaintiff from the point of view of the consumer.


Moreover, as seen from the judicial acts, the issue of homogeneity of goods has not been properly investigated, the methodological approaches set out in paragraph 162 of Decree No. 10, according to which the homogeneity of goods is established on the basis of the possibility the emergence of an ordinary consumer's idea that these goods belong to one manufacturer. At the same time, the court takes into account the type (kind) of goods, their purpose, the type of material from which they are made, the conditions for the sale of goods, the circle of consumers, complementarity or interchangeability, and other circumstances. To establish the fact of infringement, danger is enough, and not a real confusion of a trademark and a controversial designation by ordinary consumers of goods.


Thus, having heard the positions of the parties in the case, the Intellectual Property Rights Court decided to satisfy the cassation complaint of Firm Zdorovye LLC , the decision of the Arbitration Court of the Krasnodar Territory dated March 16, 2022 in case No. A32-31266 / 2021 and the decision of the Fifteenth Arbitration Court of Appeal dated August 05, 2022 cancel in the same case. The case was sent for a new trial to the Arbitration Court of the Krasnodar Territory.

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