“Zuykov & partners” LLC saved 2,7 million rubles for their client “Kanonfarma production”
The Court of appeal overturned the decision of Arbitration court of the Moscow region, which banned the CJSC "Kanonfarma production" to use the trademark "SILIMAR" and collected compensation in the amount of 2 709 608 RUB.
CJSC "Kanonfarma production", interests of which were represented by lawyers of the company "Zuykov and partners", is a manufacturer of more than 180 names of drugs for almost all areas of medicine, most of which are included in the list of vital and essential medicinal products and the list of preferential provision of the population, and some of these products are not only lack of domestic equivalent, but also included in the list of high priority drugs for production in the Russian Federation.
The Defendant in particular is a drug manufacturer of "Fosfontciale", which includes auxiliary substance of Silimar what is mentioned on the packaging and in the instruction.
The Plaintiff believed that Defendant violated his exclusive rights to a trademark, and he as the manufacturer of the medicinal product Solimar has the right to appeal to the court demanding to ban the use of the trademark "SILIMAR” and recovery of compensation in the amount of 27 097 080 RUB.
The court of first instance satisfied the claim partially, denying withdrawal and destruction of counterfeit goods and reducing the amount of exacted compensation up to 2 709 608 RUB.
In accordance with the Civil code of the Russian Federation only a person having the exclusive right to means of individualization, may at his discretion permit or prohibit other persons to use means of individualization. In addition, to prevent others from using the means of individualization may also a person with a right under the contract of the exclusive license.
Within the framework of the proceedings in the Court of Appeal the Defendant, whose interests were represented by lawyers of the company "Zuykov and partners", succeeded to prove that the Plaintiff had no legal grounds for filing a lawsuit in court, because the Plaintiff is not the right holder of the trademark. The Plaintiff under the contract of a simple non-exclusive license was granted the right to use the trademark, however, he is not allowed to take legal actions with such demands.
In addition, the court found no intention of the Defendant to use the designation "Silimar" for the individualization of the medicine, therefore there is no possibility of confusion of consumers.
The Appeal Court evaluated all the evidence of the parties and took the decision to cancel the decision of the court of first instance and to deny the claims.