Zuykov and Partners Defended REMIT Meat Processing Plant Against False Allegations of Illegal Use of Trademark

Ibatullin A.V., a plaintiff, was ready to conclude a settlement agreement under which REMIT Meat

Processing Plant would pay him compensation in the amount of one million rubles, which the defendant

refused. According to the court decision, REMIT was not found guilty. 

BusinessInvestGroup Holding sent to "REMIT " a cease-and-desist letter to stop allegedly illegal use of the

trademarks "ДЕРЕВЕНСКАЯ” under certificate number 551003 and "ДЕРЕВЕНСКИЙ” under certificate

number 619444. The REMIT Meat Processing Plant did not agree that it performed actions of illegal use of

the trademarks and refused to fulfill the demands. Having received a refusal to satisfy cease-and-desist letter

demand, A.V. Ibatullin, the director of the BusinessInvestGroup Holding, decided to appeal to the

Arbitration Court of the Moscow Region. 

In order to protect the right to a trademark, it is necessary to prove “the fact that the plaintiff owns the said

right and the fact of its infringement by the defendant through the use of a trademark or designation similar

to the point of confusion in respect of goods (services), for individualization of which the trademark is

registered, or similar goods (services), one of the ways provided for in clause 2 of Article 1484 of the Civil

Code”.

Ibatullin A.V. based his claims on the printouts from the website remit.ru website, presented below:

In particular, he noted that REMIT Meat Processing Plant labels its food products with designations similar

to the trademarks to which the plaintiff has an exclusive right. As it turned out, first of all, Ibatullin A.V.

chose the wrong defendant for this case. The administrator of the domain is responsible for the content of

the website, because it is impossible to use the resources of the website without his control. The plaintiff did

not provide evidence that REMIT Meat Processing Plant owns of the site located at remit.ru. Thus, the

plaintiff failed to prove that it was the defendant who illegally used the trademarks.

Even if the materials of the case contained evidence of the placement of the disputed designations by the

REMIT Meat Processing Plant, the plaintiff would also need to prove the likelihood of confusion of the

disputed designations with the marks of the plaintiff. In this case, “The conclusion of confusingly similar

designations is made on the basis of perception not of individual elements, but of the overall impression that

this designation and the trademark as a whole make on the average consumer of the goods or services

concerned”.

The defendant, denying allegations, responded that “the compared designations are not confusingly similar

because they cannot be perceived by ordinary consumers as the plaintiff’s trademarks”. Moreover, refuting

BusinessInvestGroup Holding's arguments about the likelihood of confusion, the defendant noted that the

main place in the images of goods presented by the plaintiff are the designations “REMIT”, which are the

plaintiff’s trademarks. At the same time, products under the REMIT designation have been on the market for

a long time and are known to the consumer, so this designation has a high degree of distinctiveness in

relation to goods in Class 29 of the Nice Classification.

At the same time, the designations “Деревенская” and “Деревенский” occupy insignificant space in the

images of packages presented by the plaintiff and have a weak distinctiveness, which is confirmed by

numerous court practices, in connection with which there is no possibility of confusion of the disputed

designations and trademarks in the eyes of consumers.

Moreover, before the start of the trial, A.V. Ibatullin, being confident that his lawsuit will be granted,

offered the defendant Alternative dispute resolution, i.e., without litigating in court, on terms of

compensation of one million rubles. The administration of the REMIT Meat Processing Plant, unafraid of

threats from the right holder, refused to conclude the deal and eventually obtained a court decision in its

favor, being represented by the Zuykov and Partners lawyers.