Earlier, the Intellectual Property Court's decision dated July 5, 2024, in case number IPC-43/2023, left the claims of LLC "Vladimir Standard" and LLC "VLADFISH" to recognize JSC "Biznestrust" 's actions in registering the trademark under Russian Federation Certificate No. 272428 as an act of unfair competition unsatisfied.

Zuykov and Partners represented the respondent, JSC "Biznestrust," in this case.

LLC "Vladimir Standard," disagreeing with the IP Court's decision, appealed to the Presidium of the Intellectual Property Court with a cassation appeal to overturn the lower court's decision and to issue a new judicial act on the case.

By a resolution dated November 1, 2024, the Presidium of the IPC dismissed the cassation appeal of LLC "Vladimir Standard," which challenged the decision of the first-instance court.

Case details

When filing the cassation appeal, LLC "Vladimir Standard" argued that the conclusions of the first-instance court, including regarding the non-use of the "Vladimir Standard" designation before the priority date of the disputed trademark, did not correspond to the actual circumstances of the case. Additionally, the appellant believed that the decision was made in violation of substantive and procedural law, particularly due to the unlawful imposition on LLC "Vladimir Standard" (plaintiff) and LLC "VLADFISH" (co-plaintiff) of the burden of proving widespread use of the "Vladimir Standard" designation before the priority date of the disputed trademark.

Thus, according to the plaintiffs, the designation “Vladimir Standard” became known to consumers before the priority date of the disputed trademark due to its use of such designation.

Meanwhile, the Presidium of the IPC agreed with the findings of the court of first instance that the documents submitted by the plaintiffs do not allow the court to conclude that they or persons associated with them actively used the disputed designation before the date of the defendant’s application to register this designation as a disputed trademark, as a result of which it became known among consumers. The defendant could not have been unaware of this fact.

In connection with the above, the court of first instance came to the correct conclusion that in the absence of evidence of actions taken by the plaintiffs or persons affiliated (interrelated) with them to introduce into civil circulation goods of class 30 of the International Classification of Goods and Services under the designation "Vladimir Standard" before the priority date of the disputed trademark, the court has no grounds to establish the facts of competitive relations between the plaintiffs and the defendant, the defendant's awareness of their use of the disputed designation, the intent and the very fact of harm caused by the defendant to the plaintiffs or persons associated with them.

The Presidium of the IPC also rejected as unfounded the argument of the Vladimir Standard company regarding the illegal imposition of the burden of proof of widespread use of the designation prior to the priority date of the disputed trademark.

Thus, the court of cassation indicated that when checking the presence of the fact of bad faith behavior and abuse of rights on the part of the applicant, in such cases the court must also take into account the purpose of registering a trademark or acquiring an exclusive right to a trademark, the real intention of the right holder to use it, the reasons for non-use. If a person files an application for state registration as a trademark of a designation used by other persons, the following are subject to assessment, among other things, the fame, reputation of the designation, and the probability of the coincidence being accidental. It is worth remembering that the more widely a designation is used by a particular person, the more likely it is that the alleged infringer knows about such use.

Consequently, since the court of first instance did not find direct evidence of the defendant’s awareness of the use of the designation by the applicant of the cassation appeal before the priority date of the disputed trademark, Vladimir Standard had to prove not just the use of the disputed designation, but its widespread use, which could presume the defendant’s knowledge that the designation was being used by other persons.

Finally, the Presidium of the IPC noted that in the absence of evidence of bad faith on the part of the defendant, at the stage of acquiring the exclusive right to the disputed trademark, the exercise of the right to protect the means of individualization is not in itself bad faith. In the opinion of the Presidium of the IPC, the contested court decision is based on the correct application of the rules of substantive and procedural law and was adopted taking into account a comprehensive examination of the evidence available in the case materials.

Thus, the Presidium of the Intellectual Property Court upheld the IP Court's decision of July 5, 2024, in case number IPC-43/2023, leaving it unchanged, and the cassation appeal of LLC "Vladimir Standard" was dismissed.