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On 17 April the RU PTO approved a decision of the Chamber for Patent Disputes (Administrative board of RU PTO) which has satisfied a request of Afisha company, subsidiary of Rambler Group, for a partial cancellation of legal protection of “Yandex Afisha” word trademark, owned by OOO Yandex (limited liability company) and registered in August 2019 under No. 724232.

Being the owner of “Afisha” word trademark (with a priority dating back to year 1998) the Claimant believed the disputed trademark to be confusingly similar to it, as well as to several other trademarks owned by the Claimant and having Afisha designation in different forms. As a company mainly engaging in selling tickets and providing mobile applications for entertainment activities, the Claimant had a legal interest in partial nullification of “Yandex Afisha”, registered in relation to goods and services in classes 09, 16, 35, 38, 39, 41, 42 and 45 of the Nice Classification.

The trademark owner challenged the position of the Claimant insisting that the disputed trademark is a combined one, having Yandex designation as a “strong” component. Due to extensive use of “Afisha” designation by many businesses, it must be regarded as a weaker component, so its presence cannot make a designation to be confusingly similar with the Claimant’s trademark. “Yandex Afisha” designation, to the opinion of Yandex attorneys, was always associated with OOO Yandex. There was never any threat of confusion or customers’ misleading, as Yandex designation has been long used by Yandex company which has three well-known trademarks based on this designation in different forms.

Having considered the case, the Chamber decided that the disputed trademark is indeed similar phonetically and semantically to the Claimant’s trademark, having the latter one included in full as its part. As “Yandex Afisha” was registered with a priority for homogenous goods and services, its registration formally constituted a breach of provisions of Article 1483 (10) of the Civil Code.

Therefore the Chamber ruled in the favor of Afisha company, fully satisfying its request and cancelling the trademark in part requested.

For more details, see https://www1.fips.ru/ofpstorage/Doc/PPS/2020/18.04.2020/2020%D0%9201567.pdf.