For decades, bad faith and abuse of rights have been challenging legal grounds for trademark enforcement in Russia. While these grounds are envisaged in the law, courts have required strong evidence, making these claims difficult to prove.
The situation may change after the publication on November 15, 2023 of a document, “Digest of case law related to the assessment of actions of trademark owners,” by the Presidium of the Supreme Court. The Digest focuses on court cases where bad faith or abuse of rights were identified in the actions of trademark owners enforcing their rights.
While Russia is not a common law country and there is no system of precedents, digests on case law prepared and published by the Presidium usually serve as guidelines for courts of lower instance (both commercial courts and courts of general jurisdiction).
In what follows we give some examples from the new Digest, which demonstrate that unfair advantage identified in the actions of trademark owners may serve as a valid reason for a court to reject their claims.
The trademark owner will not have protection in court if their trademark was registered for the sole purpose of trademark enforcement
A business owner filed a lawsuit against another company, alleging infringement of their "ПЛАНЕТА" (PLANETA) trademark. The claim was based on the defendant's use of a similar designation for a shopping center, causing confusion with the registered trademark.
Despite recognizing the business owner's exclusive rights to the trademark, the court rejected the claim, citing an abuse of legal process in acquiring these rights.
The court found that the plaintiff, despite owning multiple trademarks, engaged in a pattern of acquiring rights solely for the purpose of initiating lawsuits against legitimate businesses and not for the purpose of identification of goods or services. The lack of any bona fide objectives in the acquisition of rights showed an intent to cause harm, constituting abuse of rights.
The court highlighted that the plaintiff failed to associate the disputed trademark with their business, and the plaintiff’s intent to initiate lawsuits against fair businesses was seen as evidence of an abusive strategy.
Opposition to trademark registration may not be upheld if the claim was filed for the sole purpose of causing difficulties for the owner of the challenged trademark
The claimant filed a post-registration opposition against the TOP GEAR trademark on the ground of confusing similarity with the claimant’s prior trademark. In further court instances it was established that the challenged trademark had obtained immense recognition and popularity in Russia. Consumers associated the challenged trademark only with the trademark owner.
The claimant obtained rights to the prior trademark via the assignment procedure and the trademark had not been in use. During the opposition procedures the claimant did not demonstrate use of the trademark or plans to make use of it. The claimant did not have an intention to protect their exclusive rights. In these circumstances, the court concluded that the purpose of filing the opposition was to create obstacles to the legitimate business of the trademark owner, inflicting damages and losses through invalidation of a trademark. As a result, the claimant’s actions were qualified as abuse of rights and the opposition was rejected.
Trademark registration where an element of the mark represents a strong, distinctive and recognizable trademark of a 3rd party is an abuse of rights
A company objected to the registration of a trademark that included a famous element similar to its own.
The courts of first and cassation instances deemed the trademark registration to be invalid under Article 1512(6) of the Civil Code of the Russian Federation due to abuse of rights by the owner of the challenged trademark during the registration process.
The plaintiff company, its products, and a series of designations featuring a distinctive element (resembling animal claw marks) were widely known. The court acknowledged the familiarity and high recognition of the element among consumers. The trademark owner was found to be aware of this series of designations and their wide popularity at the time of trademark registration.
The court invalidated the trademark, emphasizing the wide recognition of and strong consumer association with the element. The court found the registrant's actions to be non-standard business practices that violated the rights of the plaintiff company. Use of the trademark could have misled consumers as to the origin of the relevant products, and the court considered it a breach of legal provisions on fair competition.
Evaluation by the court of good faith in trademark registration considers both the registration process and subsequent behavior of the trademark owner
Multiple parties complained to the antimonopoly authority, alleging that a company's acquisition and use of exclusive rights to trademarks constituted an act of unfair competition.
The antimonopoly authority concluded that the company's actions did not breach active use provisions but found a violation in the registration as such.
The court overturned the authority's decision, asserting that evaluation of good faith in trademark registration should consider both the registration process and subsequent behavior by the registrant. This helps to establish the registrant's intent, and in this case, the court found grounds for considering the registration as potentially violating fair competition norms.
Maria Aronikova
Anastasia Ivanova
Semenov & Pevzner Law Firm
