21 February 2022

Zuykov and partners obtained a refusal to satisfy the requirements for invalidating the Rospatent decision on granting legal protection of the Rinfarm trademark

On 01.02.2022, the Intellectual Property Rights Court considered case No. SIP-908/2021 on the application of individual entrepreneur Boris G. Valentinov for invalidation of the Federal Service for Intellectual Property (Rospatent) decision dated 01.06.2021, adopted after consideration of the objection received on 03.11.2020 to grant legal protection to a trademark under the certificate of the Russian Federation No. 726327, with participation in the case as a third party who does not make independent claims regarding the subject matter of the dispute, RINFARM LLC.

Zuykov and partners represented the RINFARM LLC interests, acting on the Rospatent side in the case.

The reason for the entrepreneur's application to the Court was based on the results of consideration of his objection filed against granting legal protection to the trademark under the Russian Federation certificate No. 726327. Rospatent made a decision 01.06.2021 to refuse to satisfy the objection.

In support of his application, entrepreneur B. G. Valentinov pointed out that the disputed trademark is a stylized image of an elder with a beard and a staff, identical to the copyright object created by the joint creative work of B. G. Valentinov and E. M. Naumova in 1995. Therefore the company Rinfarm trademark should not be granted legal protection based on subclause 1 of clause 9 of Article 1483 of the Civil Code of the Russian Federation. In addition, B. G. Valentinov indicated that the fact of registration by the company Rinfarm of a trademark is an act of unfair competition and abuse of rights, since the trademark is identical to the entrepreneur's trademark registered in 1999 under the Russian Federation certificate No. 175687, the legal protection of which was terminated on 28.10.2017, and also prevents the registration of its own trademark in the name of the entrepreneur under the application No. 2019743677.

Rospatent's objections boiled down to the fact that the contested decision was legitimate and justified. The entrepreneur B. G. Valentinov's arguments about the copyright existence in the contested designation and the copyright holder objections of the disputed trademark should be resolved in an independent judicial proceeding. In this case, the legality of the administrative body's decision is being considered.

In turn, Zuykov and Partners lawyers representing the Rinfarm LLC interests, after reviewing the entrepreneur arguments and the evidence presented by him. They prepared a response to the application, pointing out the B. G. Valentinov arguments’ inconsistency, and asked the Court to dismiss the claims in full because B. G. Valentinov did not provide evidence that he and E. M. Naumova were the authors of the disputed image.

To substantiate their legal position, representatives of a third party collected and submitted evidence to the case file that the images claimed by B. G. Valentinov and E. M. Naumova are not artistic and graphic works but photographs of a ceramic / porcelain figurine of the Chinese God of Longevity, Shoou Sina, which is a souvenir product, widely distributed in China and bought thereby an entrepreneur.

Moreover, Rinfarm LLC representatives presented convincing evidence to the Court that the company had a legitimate interest in registering the disputed trademark but did not take any actions to register its trademark. Accordingly, they are considered an abuse of the right or an act of unfair competition.

Based on the dispute consideration results, the panel of judges agreed with the Rinfram LLC arguments. It concluded that businessman Valentinov B.G. did not prove that the disputed trademark registration was made in violation of the provisions of subparagraph 1 of paragraph 9 of Article 1483 of the Civil Code of the Russian Federation since the case materials did not confirm the use of a work in the trademark, the exclusive rights to which belong to the entrepreneur.

In addition, the Court found reasonable arguments that the Rinpharm company had a legitimate interest in obtaining legal protection specifically for the disputed designation and its actions are not an abuse of the right.

Under such circumstances, the Intellectual Property Court decided to dismiss the claims of the individual entrepreneur Valentinov Boris Gennadievich, in connection with which the decision of Rospatent was upheld, and the legal protection of the Rinfarm LLC trademark continues to operate.

The full text of the Court's decision on Intellectual Property rights can be found here

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