Zuykov and partners defended the interests of the EFKO-Kaskad in the case of invalidating the decision of Rospatent to object to the grant of a patent of the Russian Federation

Company Blago LLC applied to the Intellectual Property Court with an application for invalidation of the decision of the Federal Service for Intellectual Property of 18.03.2021, adopted as a result of consideration of the objection to the issue of the patent of the Russian Federation No. 121827 for the industrial design "Bottle". Blago LLC believes that the Board of the Chamber for Patent Disputes misinterpreted subclause 2, clause 5 of art.1352 of the Civil Code of the Russian Federation, did not apply the recommendations developed by practice and did not take into account the nuances of analyzing the general audience impression associated with the type of product being compared under the contested patent and the opposed three-dimensional trademark under the certificate of the Russian Federation No. 626482.

EFKO-Kaskad Coordinating Distribution Center Limited Liability Company, which is the right holder of Russian Patent No. 121827, is involved in the case as third parties that do not make independent claims regarding the subject matter of the dispute.

EFKO-Kaskad LLC was represented in this dispute by Zuykov & Partners LLC.

The arguments of the application submitted to the Intellectual Property Rights Court are reduced to the disagreement of the Company Blago LLC with the decision taken by Rospatent regarding the recognition of an industrial design under the disputed patent by a decision that can mislead the user of products in relation to the manufacturer of goods on the basis of subitem 2 of item 5 of Article 1352 of the Civil Code of the Russian Federation.

Third parties justify their position as follows.

First of all, the court was presented with evidence that was not the subject of research by Rospatent during the administrative review of the dispute.

During the consideration of the present case in court, the copyright holder presented new evidence, but it is aimed at confirming the independence of the development of the appearance of the contested industrial design, and not at refuting the arguments of the objector about its non-compliance with the conditions of patentability. In particular, the Conclusion of the Association "NP "OKYUR" was provided, in which experts noted that "Products have a similar packaging form, <...> however, it should be noted that the following similar elements are present, which may indicate a similarity (including to the point of confusion) of the bottle of vegetable oil "Almador" with the specified industrial design and trademark".

Since this document was not submitted to Rospatent by Company Blago LLC, and it was not given a legal assessment when considering the objection of third parties, it cannot indicate the illegality of the contested decision of Rospatent. Moreover, the specified document existed long before the objection was filed by third parties. The applicant's claim that the evidence “were received after the administrative review of the present case” may indicate an unfair exercise of civil rights by the applicant (abuse of the right).

Secondly, regarding the applicant's initiative to call a specialist, the third party believes that there is no need to call a specialist. In accordance with clause 1 of Article 55.1 of the Agribusiness Code of the Russian Federation "A specialist in an arbitration court is a person who has the necessary knowledge in the relevant specialty and provides advice on issues related to the case under consideration". At the same time, in accordance with paragraph 13 of the Information Letter of the Presidium of the Supreme Arbitration Court of the Russian Federation No. 122 dated 13.12.2007 "Review of the practice of arbitration courts considering cases related to the application of intellectual property legislation" "the question of similarity to the degree of confusion of designations is a matter of fact and, as a general rule, can be resolved by a court without appointing an expert examination." In addition, a dissenting opinion was submitted by Rospatent to the materials of the court case. Thus, there is no need to call a specialist and, accordingly, to satisfy such a request of the applicant.

The Intellectual Property Rights Court recognized as reasonable the conclusion of Rospatent that the industrial design under the contested patent contains an image confusingly similar to the opposed trademark under the certificate of the Russian Federation No. 626482 (priority – 06.07.2011), registered on 01.08.2012 in the name of the person who filed the objection, earlier than the priority date of the contested industrial design (04.02.2020). The purpose of a product protected by the contested industrial design patent "Bottle" may be recognized as similar to the goods of the 29th class of the ICTU the opposite trademark, since they coincide in type (capacity), belong to the same generic group (volume bottle), can be used in the same field, have the same circle of consumers, as well as the same sales conditions in the case of introducing an industrial design under a contested patent into civil circulation. Thus, the probability of mixing the bottle under the contested patent and the opposing trademark is increased due to the coinciding purpose.

In these circumstances, the Intellectual Property Court considers that Rospatent's decision of 18.03.2021 declaring Russian patent No. 121827 for an industrial design invalid because its registration did not meet the requirements of subparagraph 2 of paragraph 5 of Article 1352 of the Civil Code of the Russian Federation is based on the norms of current legislation, whereas the applicant's arguments only indicate his disagreement with the contested decision and are not supported by the legal provisions under investigation.

Thus, by the decision of the Intellectual Property Rights Court of 19.11.2021, the requirements of Company Blago LLC were not satisfied.