Injunction measures
in non-use cancellation cases against trademarks.
Contributors:
Ekaterina Shekhtman,
IP attorney, Managing partner INCO ltd., Novosibirsk, RUSSIA, INTA Bulletin
Committee, Europe subcommitee
Maria Usova, Senior
lawyer, INCO ltd., Novosibirsk, RUSSIA
Verifier:
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.