Zuykov and partners achieved the early termination of the legal protection of the GLOBUS trademarks of a well-known Hungarian canned food manufacturer

The Court of Intellectual Rights considered the claim of Globus Holding GmbH & Co. KG (Germany) against GLOBUS Konzervipari Zartkörüen Müködö Részvénytársaság (Hungary) for the early termination of the legal protection of trademarks under certificates No. 557639 and 557640 of the Russian Federation and trademarks under international registrations No. 535997 and 619784 due to their non-use.

Zuykov and partners defended the interests of the plaintiff, Globus Holding GmbH & Co. KG., which owns one of the largest hypermarket chains in Russia and sells various types of goods, including food and pet products. At the same time, the client is the owner of a series of trademarks containing the word element "GLOBUS" / "GLOBUS" and registered in relation to a wide range of goods and services. Wishing to expand the series of trademarks, Globus Holding GmbH & Co. KG applied to Rospatent with an application for registration of the trademark "GLOBUS", however, the office opposed the trademarks of GLOBUS Konzervipari, which served as an obstacle to the registration of the client's trademark in relation to the goods and services of interest to him.

Rospatent opposed the trademarks of the well-known Hungarian manufacturer of canned vegetables - the company GLOBUS Konzervipari, namely the trademark "GLOBUS", according to the certificate of the Russian Federation No. 557639, the trademark "GLOBUS", according to the certificate of the Russian Federation No. 557640, as well as two trademarks according to international registration (№ 535997 и № 619784) protected for the list of goods related to food.

The specialists of Zuykov and partners, having delved into the circumstances of the case, found a solution for the client that helped to remove obstacles to registering his trademark. Such a decision was the early termination of the opposing trademarks due to their non-use. According to market analysis, GLOBUS products Konzervipari, marked with the GLOBUS trademarks, have not been on the Russian food market for more than three years, which, by virtue of Article 1486 of the Civil Code of the Russian Federation, gives interested parties the right to seek the termination of such trademarks in court.

Having considered the claim of Globus Holding GmbH & Co. KG, the court concluded that there were grounds for satisfying the claims in full due to the following.

First, after evaluating the evidence presented by the plaintiff, the court came to the conclusion that the plaintiff is a person who has a real intention to use in civil circulation when carrying out activities, designations that are confusingly similar to the disputed trademark. It should be noted that the presence of documented interest of the plaintiff in terminating the legal protection of the disputed trademark is a necessary condition in this category of cases. At the same time, having compared the disputed trademarks and the designation in application No. 2019719546 dated April 24, 2019, filed by the plaintiff with Rospatent, the court concluded that the claimed designation "GLOBUS" is confusingly similar to the disputed trademarks, the right holder of which is the defendant. The similarity of the trademark of the defendant and the designation according to the application of the plaintiff is obvious, due to the high degree of phonetic and semantic similarity of their verbal elements.

Secondly, having considered the issue of the use of trademarks by the defendant during the three years preceding the submission by the plaintiff of the proposal of the interested person, the court came to the conclusion that such evidence company GLOBUS Konzervipari did not submit. At the same time, the court also assessed the correspondence between the representatives of the plaintiff and the representative of the defendant, presented in the case file, from which it follows that GLOBUS Konzervipari is not interested in using the disputed trademarks on the territory of the Russian Federation, which was qualified by the court as a recognition of factual circumstances in accordance with part 3.1 of article 70 of the APC of the Russian Federation.

Taking into account the above circumstances, by the decision of the Court for Intellectual Property Rights dated October 31, 2022 in case No. SIP-973/2021, the claims of Globus Holding GmbH & Co. KG to GLOBUS Konzervipari Zartkoruen Mukodo Részvénytársaság were fully satisfied, which terminates ahead of schedule the legal protection of trademarks under certificates No. 557639, No. 557640 in the territory of the Russian Federation, as well as trademarks under international registrations No. 535997, No. 619784 due to their non-use in relation to all goods for which they were granted legal protection.

The decision of the court