Vladimir Biriulin, Partner at Gorodissky & Partners, Russia, shares insights into recent trademark cases in Russia that reflect the evolving approach of courts and patent offices. This blog delves into how Russian authorities assess trademarks, even when the rights holder has no local presence, and the implications for intellectual property (IP) protection.
The SORMEC Case A Russian company, Salitaco Ltd., filed a trademark application for “SORMEC,” a name associated with an Italian maritime equipment manufacturer. The Russian patent office rejected the application, citing potential confusion among consumers. Despite the Italian company’s lack of trademark registration or local presence in Russia, the patent office and subsequent IP court ruled in favour of protecting the name due to its recognition among Russian consumers.
Key Takeaways:
Consumer Awareness: Even without local operations, a trademark known internationally can be protected if Russian consumers are familiar with it.
Unfair Competition: Using such trademarks without proper rights may constitute unfair competition and abuse of rights.
An entrepreneur sought to cancel a Spanish company’s trademark for non-use in relation to certain goods in Class 28 (toys). The IP court ruled in favour of the trademark holder, citing evidence of use for specific goods and its reputation within the market. The court extended protection to similar goods within the same class, reinforcing the value of partial use.
Key Takeaways:
Famous Trademarks: Protection can extend to similar goods if a trademark is deemed famous for specific items.
Flexibility in Non-Use Cases: Courts consider the broader context and evidence of use rather than rigidly adhering to non-use rules.
These cases demonstrate the increasing sophistication of Russian trademark practices:
Courts are prioritising consumer perception and market realities over technicalities.
Trademark owners must remain vigilant about protecting their rights, as Russian authorities may act even without their direct involvement.
Conclusion
The evolving trademark practices in Russia reflect a flexible yet robust approach to IP protection. By considering consumer awareness and market impact, courts are ensuring fair competition and safeguarding brand equity.
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