30.12.2020

The head of the Federal Service for Intellectual Rights (Rospatent), Grigory Ivliev, appealed to the Chief Justice of the Supreme Court Vyacheslav Lebedev with a request to form a good in law practice on disputes around well-known trademarks.

Rospatent notes that the recognition of a trademark as well-known occurs only if the brand has become widely known among consumers, who at the same time associate the product with a specific manufacturer. The owners of such brands receive competitive advantages, including the ability to restrict the activities of companies engaged in the production of goods and services in markets that are not the same as the TM owner. In addition, the rights to well-known trademarks are protected indefinitely.

However, large foreign companies often shy away from listing their names on products and advertisements in an attempt to avoid the risks associated with the circulation of substandard goods.

As an illustrative example, Ariel and Persil washing powders are cited. In 2020, the Federal Antimonopoly Service of Russia revealed that these washing powders sold in Russia are inferior in quality from products under the same brand in the European markets. As a result, the manufacturer agreed to indicate on the packaging that the powder was adapted to the requirements of the Eurasian Economic Union (EAEU).

Rospatent also mentioned the Service’s disputes with Paldo Co., Ltd (Doshirak brand) and Sunecho Ltd (Rollton brand). Rospatent refused to recognize the brands as well-known to the companies, as the applicants could not prove that consumers associate trademarks with their manufacturers.

After that, the companies applied to the Intellectual Property Rights Court, which declared Rospatent’s refusal to be illegal. The court considered the applicant’s legal connection with the manufactured goods sufficient. Rospatent decided to challenge this decision in the Supreme Court.