On October 23, 2024, the Intellectual Property Court held a hearing on case No. SIP-334/2024 to consider the claim of R-Climate against Telefonaktiebolaget LM Ericsson (Sweden) on the early termination of the legal protection of trademarks under Russian Federation certificates No. 205234, No. 207822, No. 253069 and international registration No. 1024858, containing the designation "ERICSSON / ERIKSSON", on the territory of the Russian Federation about goods of class 11 of the Nice Classification due to their non-use.

In this case, Zuykov and partners represented the interests of the plaintiff, the company R-Climate.

Following the consideration of the case, the court decided to satisfy the claims of R-Climate in full and to prematurely terminate the legal protection of trademarks under Russian Federation certificates No. 205234, No. 207822, No. 253069, and international registration No. 1024858 on the territory of Russia in relation to goods of class 11 of the ICGS for which they are registered.

Case details

R-Climate is part of the trade and production holding Rusclimat, specializing in the development, production, and import of climate control equipment, and has been operating since 1996. At present, the plaintiff is the leader of the Russian climate control market and the largest importer in Europe and the CIS.

Intending to expand the range of its trademarks under which heating, cooling, and ventilation devices are produced, R-Climate filed application No. 2023774727 to register the designation "ERICSSON" for goods of class 11 of the ICGS. At the same time, believing that Rospatent may oppose the trademarks of Telefonaktiebolaget LM Ericsson during the examination, R-Climate approached the copyright holder with a pre-trial proposal to conclude an agreement on the alienation of exclusive rights to the disputed trademarks in favor of the plaintiff or to file a statement of voluntary renunciation of the right to them.

However, having not received consent from the copyright holder, the plaintiff, after the expiration of the two-month period established by paragraph 1 of Article 1486 of the Civil Code of the Russian Federation, filed a claim with the Intellectual Property Court.

In support of the stated claims, the company R-Climate indicated that it is an interested party, and the defendant, during the three-year period preceding the submission of the interested party's proposal, did not use its trademarks in relation to goods of class 11 of the ICGS ("heating, cooling, and ventilation devices").

Having examined the totality of the evidence presented by the plaintiff, the court agreed with the plaintiff's arguments regarding his interest in the early termination of the above-mentioned trademarks to the disputed goods, noting that the plaintiff has been carrying out (organizing) activities for the introduction of heating, cooling and ventilation devices into civil circulation for a long period, concluding contracts with legal entities that have the necessary permits and has carried out the necessary preparatory actions for the use of the disputed designation.

Further, having compared the designation submitted for registration as a trademark and the defendant's trademarks, the panel of judges came to the conclusion about a high degree of their similarity due to verbal elements, as well as about the homogeneity of the goods produced by the plaintiff with the goods in relation to which the legal protection of trademarks is being contested. These circumstances were not contested by the defendant.

However, the defendant claimed that the plaintiff's actions had signs of unfair competition, since, in the defendant's opinion, the contested designations were widely known. At the same time, given that the defendant did not use the disputed trademarks about the disputed goods, and the plaintiff duly proved his interest in filing a lawsuit using the legal mechanism established by the legislator, the panel of judges did not find unfair behavior on the part of the plaintiff.

As for the use of the disputed trademarks, by paragraph 3 of Article 1486 of the Civil Code of the Russian Federation, the burden of proof lies with the copyright holder. Having assessed the evidence presented, the panel of judges found that: the defendant did not submit documents confirming the latter's use of trademarks for the individualization of goods of class 11 of the International Classification of Goods and Services during the disputed three-year period. The subject of the submitted documents is telecommunications equipment.

Despite the copyright holder’s arguments that they were supplying cooling and ventilation devices, the court found no grounds to agree with them, pointing out that the documents presented confirm the supply of telecommunications equipment, divided into several components, for subsequent use exclusively in assembly on the territory of the Russian Federation by third parties.

At the same time, in response to the court’s clarifying question to name the procedural documents that would confirm that the goods listed by the defendant above can be used independently and perform the same function (be independent devices for heating, cooling and ventilation), the defendant’s representative explained that such documents were not presented in the case materials.

In this regard, the Intellectual Property Court ruled to satisfy the claims of R-Climate and to terminate early the legal protection of goods of class 11 of the International Classification of Goods and Services for the registration of trademarks under Russian Federation certificates No. 205234, No. 207822, No. 253069, and international registration No. 1024858, on the territory of the Russian Federation due to their non-use.