French emperor Napoleon could hardly have predicted that the battle he fought near the small Russian village of Borodino in 1812 would have repercussions through the centuries and in fields completely unrelated to warfare.
One of the distilleries in the south of Russia has produced brandy under the name Borodino since 2001. The brandy was supplied in large quantities to many Russian regions including Moscow and the Moscow region. (The village of Borodino is not far from Moscow.) The distillery did not try to register the trade mark Borodino, considering that it would mislead the consumer with regard to the origin of the brandy. One may guess that the name was chosen to establish some association with the French cognac and thus attract more consumers.
As it happens, another legal entity later assumed the name Borodino and registered a trade mark for alcoholic drinks including brandy, though it did not produce any. Despite this, it made claims against the distillery, which was compelled to discontinue brandy production. Incidentally, the newly set up Borodino CJSC stated that the registration of the trade mark became possible due to acquired distinctiveness.
In the meantime, the distillery applied to the antimonopoly body in Russia, which issued a directive to the Patent Office to cancel the trade mark due to unfair competition. Borodino CJSC appealed, initiating a court action. The first instance court correctly indicated that that it was possible to register the trade mark only because the earlier products had become recognisable and that Borodino CJSC was therefore riding on the popularity of another company. The court upheld the decision of the antimonopoly body. Borodino CJSC appealed again, though without success. The trade mark was cancelled.
This case shows that even without the concept of prior use it was possible to override the pirate registration. Prior use is usually associated with patents and there is no mention of that concept anywhere in the law with regard to trade marks. But judicial practice is clearly becoming more user friendly in this regard.
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| Vladimir Biriulin |
Gorodissky & Partners
Russia 129010, Moscow
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25, stroenie 3
Tel: +7 495 937 6116 / 6109
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pat@gorodissky.ru
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