Zuykov and partners defended interests the Alphard Group Rus in a dispute over early termination of the legal protection of a trademark

The Intellectual Property Rights Court reviewed case No. SIP-55/2021 on the limited liability company "Alphard Group Rus" claim for early termination of the legal protection of the trademark «ALPHARD» under international registration No. 859857 in connection with its non-use in the territory of the Russian Federation. Alphard Group Rus LLC was represented in this dispute by Zuykov and partners LLC.

Plaintiff, Alphard LLC Rus Group, together with ZENITH GLOBAL MANAGEMENT LLC, produces and introduces products of the 9th class of MKTU (acoustic systems) into civil circulation in the territory of the Russian Federation. Due to the companies' high quality of products and pricing policy, today Alphard Group Rus LLC, together with ZENITH GLOBAL MANAGEMENT LLC, is one of the leaders in the production and supply of automotive acoustics and accessories.

Wanting to expand the product line, ZENITH GLOBAL MANAGEMENT LLC applied to Rospatent with application No. 2020713203 for the word designation «ALPHARD». The existence of the trademark «ALPHARD» under certificate No. 859857 hindered the free conduct of commercial activities of the Plaintiff to expand the product line on the territory of the Russian Federation, since it did not allow the Plaintiff's business partner, ZENITH GLOBAL MANAGEMENT LLC, to register the designation «ALPHARD» as a trademark.

The trademark «ALPHARD» according to the international registration certificate is registered in the name of the copyright holder Norbert Modlinski. At the same time, Plaintiff did not have any information about the use of the trademark by Defendant under an international certificate on the territory of the Russian Federation. According to paragraph 1 of Article 1486 of the Civil Code of the Russian Federation "The legal protection of a trademark may be terminated prematurely in respect of all goods or part of the goods for the individualization of which the trademark is registered, as a result of non-use of the trademark continuously for three years."

When applying to the court with a statement of claim, the plaintiff drew the court's attention to his interest in early termination of the legal protection of the trademark.

In particular, the plaintiff provided sufficient evidence of his intention to use a designation identical to the designation granted legal protection by the disputed trademark. So, the plaintiff was provided with contracts with foreign manufacturers, customs declarations, and a number of contracts for the supply of products similar to the goods in respect of which the respondent's trademark is registered. Presenting the above-mentioned evidence, the lawyers of Zuykov and partners drew the court's attention to the fact that in order to confirm their interest in the early termination of the legal protection of a trademark, the plaintiff does not need to independently produce similar goods, in respect of which the disputed trademark is registered.

In addition, the plaintiff drew the court's attention to the fact that it operates under the brand name "Alphard Group Rus," which is confusingly similar to the disputed trademark of the defendant.

However, a person interested in terminating the legal protection of a trademark (service mark) may be recognized as a person whose rights and legitimate interests are affected by the fact that the relevant trademark has legal protection (service mark). The plaintiff stated that after receiving the proposal of the interested party from the plaintiff, the defendant sent a request to stop the illegal use of the Trademark, including in the plaintiff's brand name. In the text of the claim, the Respondent also indicated its intention to apply to the court with a claim for compensation for the Plaintiff's illegal use of the Trademark. Thus, as a bona fide participant in civil legal relations, the Plaintiff had the risk of filing claims against him on the fact of allegedly illegal use of the Trademark in his business activities, which affected the rights and legitimate interests of the Plaintiff.

The above, together with the documents submitted, indicated that A plaintiff is a person interested in terminating the legal protection of a trademark according to international registration No. 859857.

Having evaluated the submitted evidence in accordance with the rules of Article 71 of the Arbitration Procedure Code of the Russian Federation in their totality and mutual connection, the court concluded that the plaintiff is engaged in activities to offer for sale goods similar to those for which the disputed trademark is registered, and also carried out preparatory actions for the use of a designation confusingly similar to the trademark owned by the company.

At the same time, the court noted that the arguments presented in the respondent's response to the statement of claim regarding the presence of signs of bad faith in the plaintiff's actions when applying to the court with the statement of claim were not documented and were unsubstantiated. At the same time, according to the provisions of Article 1486 of the Civil Code of the Russian Federation, the trademark owner must confirm the use of the trademark in the three-year period preceding the submission of the claim to the court. However, the respondent did not provide any documents confirming such use.

Having studied the positions of the parties in the case, as well as being guided by articles 110, 167-170, 176, 180 of the Arbitration Procedure Code of the Russian Federation, the Intellectual Property Rights Court decided to satisfy the claims of Alphard Group Rus LLC in full:

• Prematurely terminate the legal protection of the trademark under international registration No. 859857 in respect of goods of Class 09 of the International Classification of Goods and Services for Registration of Signs "loudspeakers, microphones" ("loudspeakers, microphones") in the territory of the Russian Federation. loudspeakers, microphones") due to its non-use.
• Collect from a foreign person Norbert Modlinski in favor of Alphard Group Rus LLC, 6000 (six thousand) rubles in compensation for court costs related to the payment of the state fee for filing a claim.