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 2026

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

US corporates are using the UPC, but much of that work still flows to European boutiques. Last week’s merger, as well as others, could alter that dynamic
Publicly listed Australian group IPH delivered on its promise to profoundly shake up the Canadian market. Four years on, rivals have had time to adapt
IP practitioners debate whether new guidelines will make it more difficult to challenge a patent
Varuni Paranavitane says she is excited to bring ‘rounded expertise’ to the firm, which will have a solicitor in its ranks for the first time
Lawyers adapting to AI-driven recommendations are being pushed to demonstrate expertise publicly rather than simply relying on a polished website
Mid-market businesses looking to establish an online presence need ‘holistic’ brand protection services at an accessible cost, according to partners
Our latest update also includes the latest case filing statistics, and an update on how a transatlantic merger could be a UPC opportunity for the US half of the partnership
New partners, from biotech company Leyden Labs and Novartis, take the total number of partner hires to 12 since the firm took on external investment in late 2024
Labelled the ‘largest law firm merger in history’, the new outfit could also spell an opportunity for US clients to capitalise on Hogan Lovells' UPC expertise
Andy Lee and Amy Brooks of Brandsmiths explain how the firm secured a win for Peppa Pig over rival children’s character Wolfoo, in a case that centred on copied audio clips
Gift this article