01.12.2020

The Judicial Collegium for Economic Disputes of the Supreme Court of Russia in the dispute between Rospatent and an entrepreneur on the “double” registration of trademarks took the side of the state body and completely canceled the registration of a similar mark.

Individual entrepreneur Azamat Ibatullin in 2016 received registration in relation to the verbal trademark “THREE SPRINGS” («ТРИ КЛЮЧА» in Russian) for goods in classes 32, 33 and services in 43. At the same time, in 2005 he already received protection for the trademark «Three springs» in respect of the same classes.

In 2018, Istok LLC filed with Rospatent an objection to the granting of legal protection to the THREE SPRINGS trademark, arguing that registering the second designation differs from the first only slightly and this contradicts the “nature of the exclusive right”.

At the same time, Istok LLC for a long time could not get registration for its mark ” THREE SPRINGS” for goods of class 32.

Rospatent supported the objection and canceled the protection of the “duplicate” mark of an individual entrepreneur – in respect of all declared classes.

The entrepreneur challenged this decision in court, arguing that Istok LLC was only interested in the termination of protection for class 32, and not all at once.

The Intellectual Property Court upheld the entrepreneur’s claim and partially reversed Rospatent’s decision. This decision was contested by Rospatent in the cassation instance of a specialized court and eventually came to the Supreme Court for consideration.

The Supreme Court noted that the legislation does not specify the concept of “interested party” and at the same time does not contain restrictions on the types of interest. In the opinion of the Judicial Collegium, the concept of interest in relation to challenging the granting of legal protection to a trademark on the basis of a conflict with public interests should be interpreted as broadly as possible, since the grounds for challenge in question are intended to protect the interests of society, and not the private interest of a particular person, and prohibit an unjustified monopoly on trademarks.

Consequently, taking into account the grounds for challenging the granting of legal protection to the “THREE SPRINGS” trademark, recognition by Rospatent of Istok LLC as interested in filing an objection and accepting the objection for consideration, the scope of the recognition of the granting of legal protection to the trademark as invalid could not be made by the courts dependent on confirmation by a person who filed an objection, personal (actual) interest in specific goods and services. Otherwise, it will lead to the preservation of the existence of the exclusive right to two identical marks in relation to the rest of the list of goods and services, which is contrary to the nature of the exclusive right, and, accordingly, to the public interest.