The Court of Intellectual Property Rights in Moscow recently ruled in favour of Canada-based entertainment company eOne, saying that an appeal filed before an administrative body or court to protect IP is not an “abuse of rights”, Managing IP learned this week.
The decision is in stark contrast to a March 3 decision issued by the Arbitration Court of the Kirov Region in Russia, which dismissed eOne’s IP infringement claims for ‘Peppa Pig’ and ‘Daddy Pig’, holding that the plaintiff’s actions constituted an abuse of rights because of sanctions issued by Western countries against Russia.
Following the ‘Peppa Pig’ decision, rights owners and practitioners were concerned that Russian courts would similarly decide IP disputes based on government-issued sanctions rather than on merit.
However, the Moscow IP court’s March 18 ruling eased some of these concerns.
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In the present dispute, eOne had filed an opposition against a trademark application for a logo with an element similar to eOne’s ‘Gaston the Ladybird’ character from the popular children’s show Ben & Holly’s Little Kingdom.
Rospatent, Russia’s IP office, had sided with eOne in August 2021 and refused registration, prompting the Russian applicant of the disputed trademark to file an appeal before the IP court. The court held that eOne’s petition to protect its violated IP rights could not be an abuse of rights and dismissed the appeal.
In deciding the dispute, the IP court didn’t consider eOne’s home jurisdiction or the sanctions imposed on Russia, but only the merits of the case.
The court’s decision gives hope to rights owners from sanctioning countries that they can still enforce their IP rights in Russia if they have a legitimate claim.
Russian IP counsel recently told Managing IP that Rospatent and the courts were not likely to support squatters or infringers as none of the existing laws allowed such practices. The IP court’s decision reaffirms the position.
Encouraged by the IP court’s ruling, eOne also filed an appeal before the Second Commercial Court of Appeal on March 21 against the Kirov court’s decision in the ‘Peppa Pig’ case.
In its appeal, eOne argued that the Kirov court did not consider the merits of eOne’s claims, that its ruling was not based on any federal laws or international treaties, and that it incorrectly concluded that the plaintiff’s action constituted an abuse of rights.
Niall Trainor, senior director of brand protection at eOne in London, told Managing IP: “The recent decision of the Moscow IP Court in our favour gives grounds for cautious optimism that our appeal could succeed. It hopefully confirms the position that brand owners’ copyright and trademarks are still capable of protection in Russia.”
