On August 13, 2020, the Intellectual Property Court of Russia ruled in favor of the plaintiffs in a case in which Sunecho ltd and Mareven Food Holdings Limited asked to invalidate the decision of Rospatent, which refused to recognize Rollton as a well-known trademark.
At the end of 2018, Sunecho ltd applied to Rospatent with a request to recognize Rollton trademark belonging to it as well-known in Russia in relation to the classes that relate to broths, compositions for their preparation, mash, noodles and macaron.
The company provided data for 2008-2016, when it sold in Russia about 9.2 billion packages of noodles, mash and instant broths under the Rollton TM, for a total amount of over 77 billion rubles.
Also, in 2017, a survey was conducted in 25 Russian cities – 100% of respondents knew the corresponding TM. 96% of respondents associated this brand with noodles, 83% – with instant broths, 81% – with compositions for making mash.
However, in 2019 Rospatent refused to recognize Rollton as a well-known trademark. The Office agreed with the brand’s popularity in Russia, but noted that consumers do not associate the brand with Sunecho ltd, but with Mareven Food Central.
The fact is that Sunecho ltd assigned the exclusive rights to use the Rollton trademarks to Mareven Food Central LLC. The companies have a common owner – Mareven Food Holdings Limited. However, the affiliation of these persons can be traced no earlier than the end of 2010.
Sunecho ltd appealed the decision of Rospatent in court and the IP Court ruled to invalidate the decision of the Office completely.
The court reiterated that the consumer does not need to associate a brand with a specific legal entity, but there must be one source and this could be a group of affiliated companies.