Bayer OY has protected its brand from being used in a Russian domain

The Arbitration Court in the Krasnodar Krai has banned a resident of Krasnodar from using the "Mirena" designation in the name of the website. The plaintiff in this case is the owner of the Mirena trademark, a pharmaceutical company based in Finland, Bayer OY.

The domain name, "mirenaspiral.ru", was registered in the Russian Federation in 2018 and is managed by Anna Nikisheva. According to the court's ruling, the administrator of the domain determines how it is used and is responsible for any violations of third parties' rights. They also bear the risk of any losses associated with these violations.

The court concluded that the word "spiral" in the domain name is used descriptively and one of the indications for using the drug "Mirena" is for contraception. Therefore, according to the court's findings, the word formation "Mirenaspiral" can be understood as a reference to the well-known "Mirena" drug. In addition, although the copyright holder had a trademark registered on the website, Bayer OY had not entered into a licensing agreement with Anna Nikisheva or granted her permission to use the trademark.

The case record notes that the copyright owner refused to seek compensation from the defendant in the amount of 500,000 rubles for the unauthorized use of the "Mirena" designation.

The refusal of a material claim does not allow Bayer OY to file another claim for the same infringement, according to Sergey Zuykov, a patent attorney and managing partner at Zuykov and partners. He comments on the case, saying that the company can only claim compensation if the defendant commits another infringement. According to Zuykov's experience, in recent years the courts have not changed their approach to protecting intellectual property rights held by companies from "unfriendly countries". However, it has become more challenging for such organizations to prove infringement of their rights regarding trademark use in Russia. This makes it difficult to justify large compensation amounts for violators. Perhaps the reason for Bayer's refusal to pursue compensation is the difficulty in proving sales of products with the disputed mark in the Russian Federation, Zuykov concludes.

The price of the Mirena contraceptive system in pharmacies ranges from 12,000 to 20,000 rubles and is available to Russian consumers, despite a reduction in the pharmaceutical company's presence on the Russian market.

Source: Kommersant