Архивы Services

Wildberries is refused TM registration for its Violet Pantone 254C by Rospatent

On September 15, 2022 the IP Court dismissed a lawsuit by the Russian giant online marketplace Wildberries OOO, and upheld Rospatent refusal to register Pantone 254C as a color trademark.

In May 2020, Wildberries filed an application for registration of violet “Pantone 254C” color as a trademark with regards to services in class 35. However, the application was refused, and Appeal filed with RosPatent Chamber for Patent Disputes yielded no positive results. Rospatent has found the appealed designation to be not sufficiently distinctive to satisfy the trademark criteria and concluded that a color as such cannot be an object of registration.

To overcome this decision, Wildberries lawyers filed a lawsuit against Rospatent in the IP Court, stressing its long use of Pantone 254C violet, which, as has been confirmed by the poll results, has become associated for most of customers with the Wildberries marketplace. Further, none of the other marketplaces currently acting in Russia is using the same color as their trade dress, such as office furnishing and other commercial merchandise.

TM 758874 https://new.fips.ru/registers-doc-view/fips_servlet?DB=RUTM&DocNumber=758874&TypeFile=html * all trademarks are property of their respective owners

The Court, however, has arrived at a conclusion that no distinctiveness for the color as such has been acquired through its use by Wildberries company. Most designations, actually used by the Claimant and referred to as the evidence, do have other elements, such as words, abbreviations and figures. Moreover, these designations mostly do not exactly have Pantone 254C color background. And there were quite a few other market players which use shades of violet for their Internet trade activities. The poll survey was conducted only after the application was filed and its results were, in fact, not so convincing to confirm that for majority of the customers the color was definitely associated with the Claimant. Therefore, the Court supported the Office and dismissed the lawsuit.

https://kad.arbitr.ru/Card/71e7b0bd-5821-47a5-a058-04ff7379b4fe

* all trademarks are property of their respective owners

In a recent decision of the Russian IP Court, a lawsuit to cancel TM registrations for “Love Is…” owned by Minikim Holland B.V. has been dismissed

In the decision in November 2022, The IP Court supported the position of Minikim Holland B.V. whose TM registrations Nos 639976 and 722689 for “Love Is…” were objected by sole entrepreneur Vasily Levchenko as acts of unfair competition. The Claimant argued that the designations became known in Russia long before their priority dates and that he himself used these designations before their filing dates in Russia. In the Claimant’s opinion, the TM registrations in 2017 and 2019 were done in bad faith and not for Defendant’s commercial purposes, but solely for creating basis for infringement actions.

TM 722689 https://new.fips.ru/registers-doc-view/fips_servlet?DB=RUTM&DocNumber=722689&TypeFile=html*
all trademarks are property of their respective owners

TM 639976 https://new.fips.ru/registers-doc-view/fips_servlet?DB=RUTM&DocNumber=639976&TypeFile=html *
These registrations, in his opinion, are an obstacle for his commercial activity as a seller of clothes and souvenirs marked by disputed designation and shall be canceled.

In the decision in November 2022, The IP Court supported the position of Minikim Holland B.V. who presented evidence confirming that TMs have been actively used to this day, increasing its popularity and distinctiveness among consumers throughout the world, including Russia. Further, the Court ruled that there was no evidence of unfair competition between the Claimant and the Defendant.

As for designation in question, it became known in 1970s from a series of comics strips, whose author was a spouse of the Defendant’s founder, while the Claimant started his activity as a sole entrepreneur in 2015, later than priority of RU 639976 trademark, which rules out a possible competition as such, much less an unfair one. Therefore, the lawsuit was dismissed while the Individual Entrepreneur Mr. Levchenko and his company “Vsemarket” was obliged to pay Minikim Holland a compensation the fine in amount of 1375400 roubles.

https://kad.arbitr.ru/Card/2a22dcdb-26d4-45d5-8430-bbe109872523

* all trademarks are property of their respective owners

Hypertherm wins patent infringement case and receives 1.5 million in compensation

On November 1, 2022 the Commercial Court of St. Petersburg satisfied patent infringement lawsuit in favor of Hypertherm Inc. and awarded a compensation of 1.5 million rubles. The Court’s decision was based on the analysis of counterfeit products and expert opinion. The evidence presented to the Court confirmed infringement of three patents owned by the Claimant.

In October 2020, Hypertherm Inc., a well-known US manufacturer of cutting equipment, sent a cease-and-desist letter to Steelcut OOO domiciled in St. Petersburg, Russia, demanding to stop manufacturing and selling of shields and nozzles protected by Russian invention patent 2649860 and design patents 90899 and 91529.

No reply followed in due time, so the Hypertherm corporation filed a lawsuit against Steelcut, requesting to cease the infringement, remove counterfeit goods from civil circulation and pay compensation in a fixed amount of 1 million rubles for each infringement. During the litigation procedure, the Claimant submitted the samples of supposedly counterfeit products and evidence of purchase thereof from the Defendant, including notarized protocols of receipt of purchased goods.

On the Claimant’s initiative, expert opinion concerning possible use of all three patents was requested. Two Russian patent attorneys, appointed as experts by the Court, confirmed use of the patented invention and industrial designs in respective products, providing their written opinions and later testifying in court. Based on this and other evidence unauthorized use of patents (as defined in Art.1358 of the Russian Civil Code) and infringement thereof was considered as proven by the Court.

The Defendant objected to compensation claims, arguing that patent owners from non-friendly states (including USA) are now entitled to zero royalties for compulsory licenses, granted by the Russian Government for national importance purposes. However, the Court dismissed that argument, having pointed out that neither Paris Convention, nor Russian national laws deprive any foreign patent owner of their exclusive right and defense thereof. In this case there was no use of invention and designs for a national purpose, and the Government Decree on zero royalties is not applicable to infringement compensation. Hence, the Court adjudged a monetary compensation to the Claimant, just lowering it to 500 thousand rubles for each patent infringed, as the judge considered the initial claims to be excessively high.

The case is transferred to the 13^th Court of Appeals for hearing of the appeal filed by the Defendant.

https://kad.arbitr.ru/Card/7f4e0701-f6d3-4243-a604-e7d75df669d7

Creation of RU Pharmaceutical registry is underway, but slow

Recent legal changes, introduced by EA PO, allows to include national patents in the EA pharmaceutical registry (active from March 2021); however, not every member country is yet willing to submit actual information on its patents. Therefore, national registries of pharmaceutical patents are still necessary.

Russian registry is still in its prototype stage and it is expected that legal framework shall be finished soon. Yury Zubov, head of RU PTO, recently stressed a necessity of parallel registry, deriving from experience, already available in EAPO. The head of the latter, Grigory Ivliev, confirmed the EA legal base is ready and theoretically every claimant may add a national patent to EA registry. But not all national PTOs are willing to provide restricted information on the patents, so the registry is doomed to be incomplete till then.

https://rospatent.gov.ru/ru/news/pharmvestnik-21092022

Patent cancellation means retroactive complete cease of protection

On 6 April 2021 the Commercial Court of Altay region supported the patent infringement lawsuit of Uralvagonzavod, owner of RU 2200681 patent for invention, filed against Altayvagon company. More than 36 million rubles were awarded as compensation. The decision was supported by the 7^th court of appeals in September. Nevertheless, the Defendant both filed a cassation plea and started a patent cancellation with RU PTO. The latter procedure succeeded in November 2021, deeming the patent void from the date of filing. Uralvagonzavod attempted to reverse the cancellation within the IP Court, but eventually failed, managing only to stall the cassation for the main infringement case.

As the Defendant lost its exclusive right to the patented invention retrospectively, starting the date of filing (in year 2001), it meant a loss of all lawsuit basis. Following official legal opinion of the Supreme Court of Russia, the Presidium of the IP Court reversed both the first and appeal courts’ acts and dismissed the lawsuit completely

https://kad.arbitr.ru/Card/4de10cba-4d8f-456a-a897-16386796579e

Latvian firm wins a trademark infringement lawsuit

In May 2021 a Latvian company SIA Salmo filed a lawsuit with Bashkortostan Commercial Court against a sole entrepreneur Alesia Mitrofanova, requesting a compensation of 50 thousand rubles for infringement of its Cobra trademark, protected in Russia by virtue of international registration 771365 (in classes 22 and 28 of the Nice classification). As followed from the lawsuit, the defendant engaged in sales of counterfeit fishing wires, which fact was evidenced by a private controlled purchase, recorded on video and also by bill of purchase, listing the item sold and providing information on the seller. First instance court allowed all the evidence presented by the claimant and on 18 October announced its decision, awarding the requested compensation in full, as no objection was raised by the defendant concerning the amount thereof. This decision was supported by the 18th court of appeals in January 2022, despite the defendant’s arguments on procedural violations.

In March 2022 Ms. Mitrofanova filed a cassation plea with the Intellectual property Court, arguing, among other, that the claimant is incorporated in Latvia, which country is listed among unfriendly states in the Decree of the Russian Government No 430-r, and its actions constitute misuse of exclusive right, as the fishing wire is not listed in the trademark registration. The panel of judges, however, disagreed with the defendant, pointing out that the fishing wire is uniform with other goods in 28th class. Also the claimant’s actions to defend its exclusive right could not be regarded as misuse of this right and justify the infringement in question. No retorsion measures against Latvian companies were introduced in Russian legislation yet – and even if they were, they could not be applied retrospectively.

Therefore, the cassation court supported the acts of both first instance and appeal courts, dismissing the cassation plea. The second cassation plea, filed to the Supreme court of Russia, was returned on 13 September due to non-payment of court fees.

https://kad.arbitr.ru/Card/15a1097a-0d87-4431-96d9-1140fcfc4127

Forthcoming Civil Code Amendments aimed to bring the Russian legislation into accordance with the international one via Civil Code amendments

Amendments to the Russian Civil code in parts relevant to international protection of intellectual property assets is currently discussed in State Duma. The bill intends to clarify certain procedures for granting a protection in Russia for inventions, designs, geographic designations and designation of origin. Recently Russia joined both the Hague agreement and the Lisbon agreement in their latest revisions, but to this day there was no laws or bylaws explaining how to effect these regulations on a national level.

It is expected that the law shall allow publication of international invention and design applications within 18 months from the date of filing (on par with national applications) and expressly extend national patentability criteria to their expertise. Rules for approving or refusing protection to geographic designations and designation of origin, as well as protection periods are also proposed. The law is supposed to come into force till the end of this year, but it is not very likely to be approved that soon; much less are the necessary bylaws and regulations for RU PTO. For geographic designations and designation of origin, though, the Government has already approved the expertise, grant and prolongation fees, which are 10800, 16000 and 20000 rubles accordingly.

http://council.gov.ru/activity/legislation/members_initiatives/49359/

Amendments to trademark registration rules are to come into force in May 2023

Recent amendments into the Russian Civil Code, introduced by Federal Law No.143-FZ are aimed to prevent registration as trademarks any designations, which could be confused with places of manufacture. Previously only a confusion with a manufacturer itself was a ground for refusal.

Furthermore, the law puts a ban to register as trademarks designations which include, copy or imitate geographic designations (which have been introduced in Russia just 3 years ago) or protected designations of origin, or applications thereof, if these were registered or filed before priority date. Exclusions are made for applicants that own the right to use a corresponding geographic designation or designation of origin.

Another limitation concerns designations including, copying or imitating geographic designations or protected designations of origin if the use of a registered trademark could possibly result in associating with above designation(s) and negatively affecting their user(s). Respectively, Article 1537 of the Code bans circulation of goods illegally labeled by designations, including, copying or imitating geographic designations or designations of origin.

Amendments shall come into force on 29 May 2023.
http://publication.pravo.gov.ru/Document/View/0001202205280007

Patentica attorneys are among WIPR Leaders 2022!

We are extremely proud that our attorneys, Eduard Shablin, Vadim Chagin and Olga Gribanova have been listed among leading trademark, patent and copyright practitioners.
World IP Review has recently released a new guide of the top IP lawyers – WIPR Leaders 2022. The nomination period lasted four months, during which the research team selected over 1,700 best lawyers in the field out of 12,000 nominees.
For choosing this year’s leaders, WIPR studied candidates’ practice history, notable cases, level of expertise and extra activities in the field, such as published articles and educational initiatives, and Patentica’s nominees have lived up to these standards.
Patentica’s dedication to clients, high rate of successful cases and professionalism have been rewarded by positive assessment from WIPR.
You can see the new rating at:
https://newtonmedia.foleon.com/wipr-le…22/russia/

Patentica’s Delegates at AIPPI 125th Anniversary Celebration Conference in Brussels, May 13, 2022

The delegates from Patentica, Ms. Olga Gribanova (Partner, Head of the Trademark Department, Trademark Attorney) and Mr. Eduard Shablin (Partner, Head of the Moscow Division, Patent Attorney) are very pleased to have attended AIPPI 125th Anniversary Celebration Conference in Brussels, which took place on May 13, 2022.
We thank our colleagues, partners and friends for fruitful and long-awaited meetings. Please feel free to contact us for any questions related to intellectual property by sending an email to info@patentica.com or by writing directly to Olga (olga.gribanova@patentica.com) or Eduard (Eduard.shablin@patentica.com).
We look forward to new offline events and cooperation!