Russia: Prior use invalidates a trade mark
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

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

Partners and other senior leaders must step up if they want diverse talent at their firms to thrive
European and US counsel reveal why they are (or aren't) concerned about patent quality and explain how external counsel can help
Firms such as Bird & Bird and Taylor Wessing have reported rising profits and highlighted the role of high-profile IP disputes and hires
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Lawyers in the corporate and IP practices discuss where the firm can steal a march on competitors, its growth plans in London, and why deal lawyers are ‘concertmasters’
Kathleen Gaynor, DEI specialist at Phillips Ormonde Fitzpatrick, says deliberate actions can help law firms reach diversity goals
Scott McKeown, who moved to Wolf Greenfield one year ago, says the change has helped him tap into life sciences work and advise more patent owners
The winners of our Asia-Pacific Awards 2024 will be revealed during a ceremony in Malaysia on September 26
Zach Piccolomini of Wolf Greenfield explains how to maximise your IP portfolio’s value while keeping an eye on competitors
Witnesses at a Congressional hearing debated whether reforming the ITC is necessary and considered what any changes should look like
Gift this article