Injunction measures in non-use cancellation cases against trademarks.
Ekaterina Shekhtman, IP attorney, Managing partner INCO ltd., Novosibirsk, RUSSIA, INTA Bulletin Committee, Europe subcommitee
Maria Usova, Senior lawyer, INCO ltd., Novosibirsk, RUSSIA
One of a good instrument for overcome a provisional refusal for TM application in Russia is non-use cancellation process against opposed similar trademarks which are not used by its right holder more than 3 years from the date of registration. It means that the applicant should initiate the non-use cancellation process against opposed similar trademarks and file the claim to the Court for Intellectual Property Rights (hereafter – IPR Court).
For such cases it is important to understand, that court process for non-use cancellation, especially court process with foreign defendant, takes a long time in Russia. However, the term of registration of TM applications, is shorter. Therefore, it is a necessity for plaintiff to stop the registration procedure in Russian Patent Office until the court decision will be issued. The Russian legislation offers the legal instrument which can be really useful in mentioned situations. It is injunction measures which means that under the court decision Russian Patent Office is not allowed to make final decision for TM application until the court decision for the non-use cancellation for opposed TM will be issued.
The bright example of using injunction measures in lawsuits regarding non-use cancellation claims of trademarks is following.
InMusic Brands, Inc., USA (hereafter – InMusic Brands)., has the intend to register its brands "AKAI PROFESSIONAL" and "AKAI PROFESSIONAL MPC" in Russia, that are already registered for professional music equipment all over the world. Because of the existence of TMs «AKAI», which belongs to AUIL Company from Hong Kong (AUIL) that was the distributor of the AKAI brand commodity products a long time ago, there were provisional refusals for InMusic Brands`s TM applications. The company decided to overcome that problem by initiating the non-use cancellation process against TMs «AKAI».
InMusic Brands needed to keep its TM applications, because the term for substantial responses for them were expiring soon. Another reason, why it needed to keep them was a new TM application "AKAI PROFESSIONAL" which was filed in bad faith by AUIL.
Before filling the lawsuit in 2019 InMusic Brands had filed the request for preliminary injunction measures for 2 TM applications "AKAI PROFESSIONAL" and "AKAI PROFESSIONAL MPC" № 2018723619, № 2018721287 and explained that the non-use cancellation would be useless for it if AUIL obtains the new registration during the court process. Unfortunately, it wasn`t accepted by IPR Court, because it said that the request is not contained with the subject-matter of the claim. InMusic Brands filled the appeal to the Presidium of the Court of Intellectual Rights. However, there was a refusal because the court said that as it has already filled the lawsuit №SIP-607/2019, there cannot be any preliminary injunction measures. Nevertheless, the cassation court wrote that the request has a chance to be obtained if it is filed in the frame of lawsuit, because it contains with the subject-matter of the claim.
Using that motivated decision of the cassation court InMusic Brands filed the request for injunction measures in the frame of lawsuit. This time the court agreed with the legal position of the Presidium of the Court of Intellectual Rights, however, the was a refusal again because by the moment of hearing there were provisional refusals for both TM applications "AKAI PROFESSIONAL" and "AKAI PROFESSIONAL MPC" № 2018723619, № 2018721287.
Fortunately, InMusic Brands still has 3 other TM applications "AKAI PROFESSIONAL" №2019719851, №2019735719 and "AKAI PROFESSIONAL MPC" №2019735720, one of them has a date of priority, which is earlier than the AUIL`s TM application. Now the last chance was to stop the prosecution process for the mentioned TM applications till the end of the lawsuit.
However, the third attempt to convince the court to accept the request for injunction measures were not successful. This time the reason for refusal was that these 3 TM applications were not mentioned in the lawsuit.
Finally, InMusic Brands filled new lawsuit №SIP-412/2020 together with the request for injunction measures regarding 3 TM applications which were accepted by the court (Decision dated June 03, 2020). The court was provided with the whole history of attempts to obtain these measures, showed the legal position of Presidium of the Court of Intellectual Rights and as conclusion the court satisfied the petition.
As a result, TM applications of InMusic Brands will not be refused until the court decision for the non-use cancellation claim will be issued. That case is still ongoing.
This precedent opens for foreign applicants in Russian courts and Russian Patent Office the new instrument in order to overcome the abuse of rights of the right holders of non-used trademarks.