Zuykov and partners defended the interests of EFKO-Kaskad in the case of invalidating the actions of Rospatent to amend the State Register of Trademarks and Service Marks of the Russian Federation

Company Blago LLC applied to the Intellectual Property Rights Court with a statement declaring illegal the actions of the Federal Service for Intellectual Property (Rospatent) to make changes to the State Register of Trademarks and Service Marks of the Russian Federation on 27.04.2021 in relation to the trademark under the certificate of the Russian Federation No. 771102, expressed in indicating it as a volume, justifying the claim by the fact that Rospatent is not authorized to make changes to the State Register without the application of the copyright holder.

EFKO-Kaskad Coordinating Distribution Center Limited Liability Company, which is the right holder of a similar trademark under the certificate of the Russian Federation No. 626482 and an industrial design under the patent of the Russian Federation No. 47169, is involved in the case as third parties who do not make independent claims regarding the subject matter of the dispute.

EFKO-Kaskad LLC was represented in this dispute by Zuykov & Partners LLC.

Rospatent argues its position by saying that 09.03.2021 the Company Blago LLC was notified in advance of the correction of technical errors, and Rospatent, based on the powers granted to it by the current legislation of the Russian Federation, on its own initiative 27.04.2021 made a correction and published in Bulletin No. 9 information regarding the indication that the trademark according to the certificate of the Russian Federation No. 771102 is voluminous.

The Company Blago Company justifies its claim by saying that the corrections made are not a correction of an obvious error or typo, but radically change the scope of legal protection and the essence of the trademark under the certificate of the Russian Federation No. 771102 in relation to the decision on registration of the claimed designation as a trademark dated 08.07.2020, in which there is no indication in the descriptive part that the trademark is voluminous. The applicant believes that by making the contested changes, the administrative body not only exceeded the limits of its powers but also changed the essence of the trademark. according to the certificate of the Russian Federation No. 771102 from combined to three-dimensional, which grossly violated the current legislation.

Third parties, after analyzing the arguments of the application and the documents attached to it, believe that the actions carried out by Rospatent to correct obvious and technical errors are legitimate and justified, and the application of the Company Blago LLC is not subject to the satisfaction on the following grounds.

First of all, the applicant's arguments that changes to the State Register can only be made at the request of the copyright holder are untenable.

In accordance with paragraph 105 of Administrative Regulation No. 119 "Rospatent can correct typos and errors made in the documents issued as a result of the provision of public services on your own initiative". Taking into account the fact that the Company Blago was previously notified of the correction of obvious and technical errors, as evidenced by the referral of an application to Rospatent from 11.03.2021 Rospatent has made a correction regarding the indication of the volume trademark under the certificate of the Russian Federation No. 771102 without going beyond the powers granted to it by the current legislation of the Russian Federation.

Secondly, the applicant's arguments that the changes made are not a correction of an obvious and technical error or typo are untenable.

The decision on state registration of a trademark dated 08.07.2020 states that the form of the bottle is unguarded on the basis of paragraph 1 of Article 1483 of the Civil Code of the Russian Federation. Accordingly, the shape of the bottle in all its projections presented by the Company Blago is an unprotected element in the trademark according to the certificate of the Russian Federation No. 771102. In accordance with paragraph 2.7. of the Manual "Thus, unguarded elements are elements that are part of a trademark that do not have independent legal protection. Such elements may be used by others without the possibility of prohibiting such use.».

Accordingly, according to the certificate of the Russian Federation No. 771102, a trademark is protected in the form in which it is registered, therefore, a set of elements of a three-dimensional designation registered by Rospatent as a trademark is subject to legal protection, including unprotected elements, which include the shape of the bottle in all its projections, which are additionally presented by the Company Blago. In connection with the above, Rospatent has reasonably corrected an obvious and technical error regarding the indication that the trademark according to the certificate of the Russian Federation No. 771102 is voluminous.

Third, there are no grounds for declaring Rospatent's actions illegal.

According to Part 3 of Article 201 of the Agribusiness Code of the Russian Federation, if the commercial court finds that the contested non-normative legal act, decisions, and actions (inaction) of bodies exercising public powers, officials comply with the law or other normative legal act and do not violate the rights and legitimate interests of the applicant, the court decides to refuse to satisfy the claimed claim.

Within the meaning of Articles 65 and 198 of the APC RF, the applicant is not exempt from proving the fact of violation of the contested act, decision, actions (inaction) of their rights and legitimate interests, or presenting relevant evidence.

The applicant considers the actions of Rospatent illegal, but at the same time notes that the changes made by Rospatent to the trademark information under the certificate of the Russian Federation No. 771102, taking into account the argument of the objection of third parties, may significantly affect the decision of the Chamber for Patent Disputes based on the results of consideration of the objection. In turn, the recognition of the amendments made in the present case as illegal and the return of the combined status of the trademark under the certificate of the Russian Federation No. 771102, in the applicant's opinion, entails the impossibility of contrasting the applicant's trademark. three-dimensional sign and industrial design of LLC "KRTS" EFKO-Kaskad and EFKO FOODS PLS.

Taking into account the provisions of subparagraph 2 of paragraph 6 of Article 1483 of the Civil Code of the Russian Federation and subparagraph 2 of paragraph 9 of Article 1483 of the Civil Code of the Russian Federation, any trademark status under the certificate of the Russian Federation No. 771102 does not entail the impossibility of contrasting a three-dimensional trademark under the certificate of the Russian Federation No. 626482 and an industrial design protected by the patent of the Russian Federation No. 47169, the rights holders of which are third parties.

Moreover, the judicial panel noted that the trademark according to the certificate of the Russian Federation No. 771102 includes a three-dimensional element – the shape of a bottle, it is subject to comparison with the opposed three-dimensional trademark according to the certificate of the Russian Federation No. 626482, regardless of its registration as a three-dimensional or combined one.

Finally, there is a deliberately unfair exercise of civil rights by the applicant (abuse of the right).

As part of the consideration by the Arbitration Court of the Voronezh Region of case No. A14-12866/2020, the Blago-Yug LLC in its response dated 07.10.2020 and in written explanations dated 14.12.2020 stated that The appearance of the bottle was registered as a volume trademark under the certificate of the Russian Federation No. 771102. The same position is also reflected in the response of the Company Blago LLC dated 05.02.2021 to the objection against granting legal protection to the trademark under the certificate of the Russian Federation No. 771102. At the same time, third parties believe that the applicant's position that the trademark according to the certificate of the Russian Federation No. 771102 is a combined one contradicts the statement made by him earlier in the framework of consideration of case No. A14-12866/2020 in the Arbitration Court of the Voronezh Region, and thus violates the general legal principle of estoppel. Based on the above, third parties indicated the grounds for recognition as justified arguments about the presence of signs of abuse of the right in the actions of the company "Company Blago".

The court of the first instance refused to satisfy the claims of Company Blago LLC, the decision of the court of cassation instance left the decision of the first instance unchanged, and the cassation complaint of Company Blago LLC remained unsatisfied.