Zuykov and partners defended the interests of R-Climate in the court of cassation

The Presidium of the IP Court considered the cassation appeal of the foreign entity Telefonaktiebolaget LM Ericsson against the decision of the Intellectual Property Court dated 30.10.2024 in case No SIP-334/2024 on the claim of R-Climate LLC for early termination of the legal protection of trademarks under the certificates of the Russian Federation No 205234, No 207822, No 253069 and under the international registration No 1024858 in the territory of the Russian Federation due to their non-use.

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

Earlier, Zuykov and partners achieved early termination of the legal protection of ERICSSON trademarks for all goods of the 11th class of the Nice Classification in the territory of the Russian Federation due to their non-use.

Objections of the defendant

The defendant believes that when resolving this dispute, the court of first instance erroneously did not apply the provisions of the Chisinau Convention, which establish the obligation to recognize decisions of foreign courts in civil cases, which include economic disputes. Thus, the decisions of the Specialized Inter-District Economic Court of Astana dated 03.05.2024 in case No 7119-24-00-2/3736 and dated 13.05.2024 in case No 7119-24-00-2/3695, adopted in cases of early termination of legal protection of similar and/or identical trademarks due to their non-use, with the participation of the same plaintiff and defendant, established the circumstances of the use by the right holder of means of individualization for goods in which there is a fan (ventilation equipment), and the presence of signs of abuse of right in the actions of the company was established.

Also, according to the defendant, the court of first instance did not apply the Treaty on the Eurasian Economic Union, did not take into account the regional principle of exhaustion of rights and did not recognize the fact of the use of trademarks in the territory of the Republic of Kazakhstan as significant for the present case. According to the company, the lawful introduction into civil circulation in the territory of the Republic of Kazakhstan of the relevant goods marked with designations similar to the disputed trademarks is equivalent to their use in the territory of the Russian Federation.

Opinion of the Presidium of the Intellectual Property Rights Court

From the point of view of the Presidium of the Intellectual Property Court, none of the norms of the Chisinau Convention referred to by the defendant should be applied in the consideration of the present case. In this case, the defendant had the burden of refuting the plaintiff's interest in early termination of the legal protection of the disputed trademarks and the burden of proving their use for the individualization of goods of the 11th class of the Nice Classification in the period from 18.01.2021 to 17.01.2024, as well as confirming its arguments about the presence of signs of abuse of right in the actions of the plaintiff. The court of first instance found that the plaintiff had proved his interest, and the defendant did not dispute this conclusion of the court in the text of the cassation appeal.

As for the provisions of the EAEU Treaty, they granted the right to determine the procedure and grounds for early termination of the legal protection of trademarks to each member state independently. And the Russian legislator unequivocally proceeds from the fact that in order to preserve the legal protection of a trademark in the territory of the Russian Federation, it is necessary to use it exclusively within the borders of the Russian Federation. Thus, the introduction into civil circulation in the territory of the Republic of Kazakhstan of the relevant goods marked with designations similar to the disputed trademarks does not exempt from proving the use of these trademarks in the territory of Russia.

The Presidium of the Intellectual Property Court upheld the decision of the court of first instance that the company did not prove the import into the territory of the Russian Federation of those goods that belong to the 11th class of the Nice Classification "devices for heating, cooling and ventilation", and, as a result, did not confirm the use of the disputed trademarks during the three-year period for the individualization of these goods.

Thus, the Presidium of the Intellectual Property Court concluded that there were no grounds to satisfy the cassation appeal of Ericsson.

As a result of the consideration of the case, the interests of the Russian company R-Climate, which was represented in court by Zuykov and partners, were protected.