The Moscow Arbitration Court partially satisfied the claim of the Moscow Metro against Zaryad! LLC – prohibited the use of designations confusingly similar to the plaintiff’s trademarks.
In 2018, a service for the provision of chargers for rent (Power Banks) entered the Moscow market. In 2019, the Moscow Metro filed a lawsuit claiming that the service uses an arc-shaped element in its logo, reminiscent of the metro’s emblem.
After receiving the claim, Zaryad! LLC stopped using the controversial designation. Despite this, the metro went to court demanding to recover compensation from the company for the illegal use of the registered mark.
The metro announced compensation in the amount of 5.5 million rubles (100 rubles per day from one point of sale).
The trial court dismissed the claim. The court noted that the metro and the defendant provide fundamentally different services: the first carries out the transportation of people, the second provides chargers for rent in cafes, restaurants, business centers, offices.
The court also took into account that the defendant voluntarily removed the arc from his logo and dismissed the claim to the metro.
The Court of Appeal upheld this decision.
The Moscow Metro went to the Intellectual Property Court, which overturned the decisions of the courts and sent the case for a new trial. In particular, the IP Court noted that the defendant in its logo used an element (open circle) identical to that contained in the plaintiff’s trademarks and noted that the courts had not established the degree of similarity of the compared designations. In addition, the metro’s trademarks are well known and recognizable.
Also, the IP Court noted that the fact of voluntary termination of the use of the controversial designation does not preclude the satisfaction of the claim to recover compensation for violation of exclusive rights.
As a result of the re-examination, the court of the first instance partially satisfied the claim – forbade Zaryad! use symbols similar to the Moscow Metro logo on their websites, as well as on self-service machines and chargers. Also, the court collected 4.5 million rubles from the defendant. compensation instead of 5.5 million rubles declared by the metro.