Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

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 ros bottom lb

More from across our site

We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Sukanya Sarkar shares her thoughts on this year’s annual meeting in Singapore, where debates ranged from AI opportunities to improving law firm culture
The court’s ruling is a good reminder that US parties aren’t guaranteed attorney fees just because they win, say sources
With business confidence in a shaky state, Rachel Tong and Lisa Yong of Rouse discuss how in-house IP teams can manage their trademark portfolios through uncertain times
The Court of Appeal had stern words for Med-El’s representatives after they highlighted a deputy judge’s background as a solicitor
Funders and NPEs say asserting patent portfolios can minimise risk at the USPTO’s PTAB, where procedure remains a controversial topic
The US Supreme Court’s ruling wasn’t a surprise and reflects a trend that had already been bubbling away for a while, say tech and pharma counsel
Previous attempts at major transatlantic tie-ups have failed, so lawyers will keep their eyes firmly on Allen & Overy’s grand plans
INTA CEO Etienne Sanz de Acedo shares his plans if he were to win the EUIPO leadership race and says his application does not affect his INTA role
The French finance minister told António Campinos the timing of an EPO event in Lisbon could be seen as interference in the EUIPO leadership race