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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

SUGEN and PHARMACIA & UPJOHN COMPANY won infringement case in IP Court against NATIVA

On June 17, 2022 the Commercial Court of Moscow city revised its previous decision in the case of Sugen LLC and Pharmacia & Upjohn Company LLC against OOO Nativa, satisfying in part Claimants’ demands to cease the infringement and marketing of Sunitinib-native medicine.

Both claimants, being subsidiaries of Pfizer company group, co-own Eurasian patent 005996. In 2017, they filed patent infringement lawsuit against OOO Nativa, a pharmaceutical company from Moscow. Nativa did not deny the use of ’996 patent; however, raised a counterclaim based on its own Russian patent RU 2567535 granted in 2015, which Nativa considered to be dependent on EA 005996, and therefore, requested a Compulsory license.

Due to this fact, the court eventually dismissed the lawsuit in February 2019, while satisfying the counterclaim and awarding the first compulsory license in Russia. This decision was upheld in May 2019 by the Ninth Court of Appeals and in October 2019 by the IP Court of Russia.

According to the Civil Code of the Russian Federation, a patent cannot be invalidated directly at court during infringement litigation. Invalidity action can be requested by submitting opposition at The Chamber for Patent Disputes, which is the administrative board of ROSPATENT. In June 2021, the Chamber found the RU 2567535 patent to be not compliant with patentability criteria and canceled it in whole. This decision, approved by RU PTO, was appealed in the IP Court, which dismissed the suit in June 2021, and confirmed the patent to be invalid. A patent invalidation voids all national patent rights (including legal defense rights) as of the filing date.

This fact allowed the Claimants to file a plea for a revision of the case due to the new circumstances.

In March 2022, the Moscow Commercial Court reversed the initial decision, arranging for a re-trial. During the subsequent hearings, the Court found the Defendant’s actions to introduce Sunitinib-native medicine into circulation, including its official registration, to be in violation of the Claimants’ exclusive rights to EA 005996 patent and ruled to satisfy the claims in part. The Defendant was forbidden to produce, market, sell or otherwise introduce any Sunitinib-native medicine into civil circulation in Russia until August 31, 2022, when EA 005996 expires in Russia.

https://kad.arbitr.ru/Card/3a0440d1-5ba5-4049-ac4c-7be5b9edc09c

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

The Russian IP Court supports Coca-Cola claim to cancel TM registration of its mala fide competitor

The Coca-Cola Company holds and protects rights for its trademarks “FANTA” and “COCA COLA” all over the world since 60-70s. The popular drinks are sold under these trademarks in many jurisdictions and are not only well recognizable but also immiscible for its taste.

Not surprisingly, among the company’s many competitors some are trying to abuse its fame.

AquaLife (Drinks from Chernogolovka; hereinafter – Chernogolovka) is an affluent Russian company producing non-alcoholic beverages since early 2010-s. In 2019 AquaLife (Chernogolovka) registered in Russia a trademark “FANTOLA”. In 2022 “FANTOLA” has been granted protection in Russia another time with a broader list of Nice classes and in both Latin and Cyrillic. It looked like AquaLife (Chernogolovka) was successfully expanding its “FANTOLA” business. But doesn’t the word “FANTOLA” remind us of something?

Concerned by “FANTOLA”’s rapid expansion, The Coca-Cola Co. grew suspicious about the very originality of this brand. As “FANTOLA” clearly sounded like “FANTA” and “COLA” combined, The Coca-Cola Co. decided to oppose the registration referring to its prior rights for “FANTA”. After the application for registration of “FANTOLA” designation with expanded list of goods was filed by AquaLife (Chernogolovka) in 2021, The Coca-Cola Co. filed with the Russian Patent Office (Rospatent) an opposition against the initial registration. In 2022 Rospatent declined the objection stating that “FANTOLA” has more letters and syllables what makes it distinguishable from “FANTA”. Apart from that, Rospatent stated that the results of sociological research in relation to the likeness of “FANTA” and “FANTOLA” are quite controversial.

Unsatisfied by Rospatent’s decision, The Coca-Cola Company appealed the decision at the Russian IP-court. The lawsuit was filed on 15 April 2022 – it is remarkable that a month later Russian government would publish the updated Unfriendly Countries List that would include the USA. Despite the fact that the plaintiff’s origin country was the USA, the case was accepted and considered as per usual (ID: CIP-353/2022). The plaintiff explained to the court that “FANTA” and “FANTOLA” look and sound too similar, so there is a risk of confusion among customers. The Coca-Cola Co. also asked court to take into account that both the Coca Cola Company and its trademark have been widely known in Russia for many years.

The IP Court shared the plaintiff’s opinion and satisfied The Coca-Cola Co.’s claim: on 17 October 2022 Rospatent’s rejection was recognized as illegal. Rospatent was obliged to reconsider the opposition filed by The Coca-Cola Company. Patentica’s lawyers Alexander Timofeev and Yury Bondarev strongly believe this IP court decision is crucial to drive out the “FANTOLA” trademark from the Russian market. The success of the Coca-Cola case is just one bright illustration of many cases involving foreign companies that maintain and protect its intellectual property in Russia.

The above described case developments in the Russian IP-Court clearly demonstrate that the IP legal system in Russia supports the brand owners with no regards of their country of origin contrary to some of the press materials dedicated to the issue of foreign brands in today’s Russia’s legal environment. For example, some journalists claimed that “courts show little sympathy for firms that depart” and that companies face “flip-flopping court rulings”. They also claimed, “Coca-Cola has so far largely failed to have a Russian judge take its side in cases against … competitors with nearly identical names, such as “Fantola”. Well, keeping in mind the results of the case CIP-353/2022, we may definitely say, the legal system in Russia stands firm and fair for international brand owners and their trademarks.

As professional IP attorneys we at Patentica will monitor and keep you posted on the very recent court practice in Russia and the Eurasian region to provide you with a trustable and reliable information.

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

Parallel import is NOT for counterfeit goods, stated the Head of Rospatent and proved the recent Court decisions in Russia

When interviewed by a newspaper Izvestia, Mr. Yury Zubov, the head of Rospatent, has stressed the importance of ensuring legal protection of trademarks belonging to foreign holders. According to Mr. Zubov, protecting trademarks of foreign companies lies within the interests of Russian consumers and Russian market. He emphasized that without such protection counterfeit goods from various sources and of inferior quality would fill in the market and for some categories of goods, such as household appliances or electronics, it could lead to even dangerous consequences (www.iz.ru).

Recent Court decisions in Russia demonstrated the same approach both in civil and administrative proceedings.

The Decision of the Arbitration Court of the Novosibirskaya Oblast dated May 21, 2022 in the case No. А45-1063/2022 has recognized infringement of rights to trademark LOL SURPRISE and works of art representing images of dolls belonging to MGA Entertainment Inc. by a domestic individual entrepreneur and has awarded a compensation to the right holder. In the Decision the court has made the following important conclusion: the Decree of the President of the Russian Federation of February 28, 2022 N 79, as well as the Government Decree N 430-r do not provide for such enforcement measures that would allow the trademark rights violators an exemption from liability in relation to right holders from unfriendly countries. The court has also refused to apply the normative acts regulating parallel import to the case, because the goods under consideration were not original goods (parallel import is the import into the territory of the Russian Federation without the consent of the copyright holders of original foreign goods that have been introduced into civil circulation abroad).

Similar statements have been made in a decision of the Arbitration Court of the Tambov Region dated July 26, 2022 in the case No. А64-9894/2021 on infringement of rights to trademark ROBOCAR POLY and works of art portraying the cartoon characters of ROI VISUAL CO. LTD. The defendant has not provided evidence confirming the legitimacy of using the trademark and works of art belonging to ROI VISUAL CO. LTD., whereas the court has concluded that the registration of the plaintiff in an unfriendly state does not indicate bad faith of the plaintiff and, accordingly, does not give grounds to refuse protection of rights.

Applicability of the parallel import provisions is also determined in the Ruling of the Court for Intellectual Property Rights dated April 27, 2022 N C01-533/2022 in the case N A40-84838/2021 where the defendant has claimed a release from liability on the grounds of the Decree of the Government of the Russian Federation of March 29, 2022 N 506 allowing parallel import of goods labelled with trademarks owned by parties from unfriendly countries. The court has pointed out that the disputed goods have been recognized as counterfeit (not original), since they were not produced and labeled by the trademark owner, which excludes the possibility of applying the legislation regulating parallel import in this case.

The resolution of the Second Arbitration Court of Appeal dated July 26, 2022 N 02AP-5391/2022 in the case N A17-8645/2021 has shown that the court has also disregarded arguments based on parallel import provisions due to the way the disputed trademark has been used by the defendant – in a domain name.

Over the past 6 months courts in various regions of the Russian Federation have completed numerous administrative proceedings launched by executive bodies against parties importing or selling counterfeit goods featuring famous brands such as NIKE, ADIDAS, DIOR, GIVENCHY and many others, which in most cases ended by administrative fines to the infringers and destruction of the counterfeit. Engagement of customs bodies and law enforcement in such administrative actions is an additional evidence of the practical value of IP rights in Russia and possibility of their enforcement despite the instability brought by the political situation.

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/

Patentica’s Managing Partner to speak at the Panel during London IP Week in September 2022

Ms. Maria Nilova (Managing Partner; Eurasian and Russian Patent attorney), Ms. Elena Dmitrenko (Partner, Russian and Eurasian Patent attorney) and Ms. Julia Malinina (Russian and Eurasian Patent expert) are excited to join their colleagues during London IP Week – a three-day intellectual property summit.

Ms. Nilova is also delighted to be among speakers in a discussion on how digitizing IP management or IP services can lower costs and increase value. Participate in the conversation that will take place on September, 20 by visiting the Panel “It’s not bragging if it is true”. If you have any other questions, please feel free to schedule a meeting with Ms. Nilova, Ms. Dmitrenko and Ms. Malinina on 19-21 September 2022 by sending an email to info@patentica.com.

IP week is a great opportunity to discuss the most topical IP trends and meet with the IP professionals from all over the world in London.

Maria Nilova, Managing Partner of Patentica, will be attending AIPPI World Congress in San Francisco, September 10-13, 2022

Patentica’s Managing Partner, Maria Nilova (Eurasian and Russian Patent Attorney) will be attending the AIPPI World Congress in San Francisco, September 10-13, 2022 and is looking forward to meet in person colleagues and friends and use the opportunity to discuss the latest IP news in various jurisdictions.

If you have any questions related to IP or if you wish to schedule a meeting with Ms. Nilova on the dates from 9 to 13 September 2022 in San Francisco, please contact us by email at info@patentica.com