Trademark unlawful use disputes comprise a significant part of cases related to the protection of trademark rights.
Proof of infringement
A dispute about an infringement of IP rights to a trademark requires that the following legal facts be proven:
With regard to the similarity of the used designation and the registered trademark, the perception of consumers plays a key role. Consumers can be misled as a result of the identity and similarity of the means of individualization of products (services).
The main criteria for determining the similarity of signs and the definition of homogeneous goods are fixed in the “Methodological recommendations for determining the homogeneity of goods and services in the examination of applications for state registration of trademarks and service marks.”
How to enforce TM rights
If there is evidence of an infringement of IP rights to a trademark, the issue can be resolved either in a pretrial procedure (sending a claim to the infringer) or in court in the framework of administrative (Article 14.10 of the Code of Administrative Offenses), civil (Paragraph 3 of Article 1229 (1) of the Civil Code of the Russian Federation), or criminal law (Article 180 of the Criminal Code) procedures.
According to Russian law, a lawsuit related to unauthorized trademark use is to be filed with a local arbitration court. The court’s decision is appealable in the same locality to the appeal court, whose ruling can be further appealed to the Intellectual Property Court as a cassation instance.
In cases where an infringement of IP rights to a trademark is recognized as unfair competition, protection of the infringed IP rights may be carried out both by the remedies provided for in the Civil Code of the Russian Federation and in accordance with antitrust laws (the Russian Federal Law of July 26, 2006, No. 135-FZ, “On Protection of Competition”).
The rights holder may demand the following from the infringer:
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