Zuykov and partners lawyers defended the termination of trademark protection in cassation

The Presidium of the Intellectual Property Court dismissed the cassation appeal of Synergetic LLC, which appealed against the decision of the court of first instance to satisfy the claims of Nefis Cosmetics JSC for early termination of the legal protection of the trademark No 300295 "Tender Care" in relation to part of the goods of the 3rd class of the Nice Classification.

In these cases, Zuykov and partners represented the interests of the plaintiff, Nefis Cosmetics JSC.

The plaintiff considered the defendant's arguments in the cassation appeal to be unfounded. Among other things, the plaintiff supported his position with the following arguments:

1. The interest of a person in the early termination of the legal protection of a trademark is established by the court as a result of an assessment of the totality of legal facts existing in his respect as of the date of sending the proposal of the interested party. Having studied the evidence presented, the court took into account that they "reliably confirm the implementation by the co-plaintiffs of preparatory actions for the use of the designation "Tender Care". Thus, the court of first instance correctly interpreted Article 1486 of the Civil Code of the Russian Federation, taking into account paragraph 165 of Resolution No 10, correctly established the interest of the co-plaintiffs in their real intention to use a designation confusingly similar to the disputed trademark.
2. Filing a claim for early termination of the legal protection of a trademark cannot in itself indicate an abuse of the right, since it is aimed at protecting the plaintiff's subjective right.
3. The acquisition of the exclusive right to the means of individualization of goods and services that were not actually used by the right holder in civil circulation is a risk of the acquirer's entrepreneurial activity (Clause 1 of Article 2 of the Civil Code). Thus, the change of the right holder through the alienation of a trademark does not change the calculation of the three-year period provided for by Article 1486 of the Civil Code, and in itself is not a circumstance indicating the impossibility use of the trademark for reasons beyond the control of the right holder.
4. The court gave a proper assessment of the evidence submitted to the case file regarding the use of the disputed trademark by the right holder, where the defendant's arguments to the contrary are aimed at reassessing the evidence available in the case materials and the circumstances established by the court of first instance.

The Presidium of the Intellectual Property Court, having discussed the arguments set forth in the cassation appeal and in the response to it, concluded that there were no grounds for satisfying the cassation appeal. Thus, the Presidium of the IP Court decided to leave the decision of the IP Court dated 04.04.2025 in the case No IPC-1440/2024 unchanged, and the cassation appeal of Synergetic LLC was dismissed. The court's decision enshrines the approach in which formal possession of a trademark without its use does not provide protection to the right holder and may lead to the termination of legal protection.