Russia: Prior use invalidates a trade mark

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Russia: Prior use invalidates a trade mark

A trade mark registration No 570712 was obtained by a Russian R-line company in relation to goods in Class 12 and services in Class 36. Volkswagen AG appealed against the registration of that trade mark.

150

Volkswagen argued that the disputed trade mark might confuse the consumer in respect of goods in Class 12 because its word element R-LINE is similar to the designation R-Line, which was used in Russia before the date of priority of the disputed trade mark in relation to Volkswagen cars with an R-Line trim. As a result, it argued that the trade mark is associated with Volkswagen rather than the trade mark owner. To support its claim, Volkswagen produced an array of documents, including publications in Russian magazines advertising Volkswagen cars with this trim, sales contracts, etc.

180

The Chamber of Patent Disputes examined the documents and confirmed that a designation similar to the word element R-LINE in the disputed trade mark had been used during the period before the priority date of the disputed trade mark by Volkswagen Group Rus. Ltd. controlled by Volkswagen AG and trading in cars, but not by the trade mark owner.

Consequently, the goods labelled with the disputed trade mark were perceived by consumers as those produced by Volkswagen, i.e. cars. At the same time, the examination board did not find any grounds to state that the disputed trade mark did not conform to the requirements of Article 1483(3) of the Civil Code and that Volkswagen AG, the appellant, could be interested in cancelling registration in relation to other goods in Class 12 unrelated to cars, i.e. air, water and railway transport means.

The appellant's representatives, when asked during the hearing, confirmed that they are not engaged in any activities related to production of air, water or railway transport means.

As a result, the board of examiners decided that the disputed trade mark should be cancelled only in relation to land automotive vehicles of various type such as cars, lorries and trailers.

vladimir

Vladimir Biriulin


Gorodissky & PartnersRussia 129010, MoscowB. Spasskaya Str25, stroenie 3Tel: +7 495 937 6116 / 6109Fax: +7 495 937 6104 / 6123pat@gorodissky.ru www.gorodissky.com 

more from across site and SHARED ros bottom lb

More from across our site

The firm says new role will be at the forefront of how it delivers value and will help bridge the gap between lawyers, clients and tech
Qantm IP’s CEO and AI programme lead discuss the business’s investment and M&A plans, and reveal their tech ambitions
Controversial plans were scrapped by the Commission earlier this year after the Parliament had previously backed them
Lawyers at Spoor & Fisher provide an overview of how South Africa is navigating copyright and consent requirements to improve access to works for blind and visually impaired people
Gillian Tan explains how she balances TM portfolio management with fast-moving deals, and why ‘CCP’ is a good acronym to live by
In the eighth episode of a podcast series celebrating the tenth anniversary of IP Inclusive, we discuss IP Ability, a network for disabled people and carers active in the IP profession
The longest government shutdown in US history froze ITC operations, yet IP practices stayed steady as firms relied on early preparation and client communication
Licensing chief Patrik Hammarén also reveals that the company will rename its IPR business to better reflect its role in defining standards
The acquisition of Pecher & Partners follows the firm’s earlier expansion into litigation to create a ‘one-stop shop’
News of Via Licensing Alliance launching its first semiconductor patent pool and INTA electing a new president were also among the top talking points
Gift this article