Case law precedents offer useful guidance for trademark disputes

As discussed in last week’s article, when it comes to trademark disputes, Russian law officially gives priority to the mark that was registered first. However, in reality, prior use is frequently cited to counter infringement claims.

The following cases challenged the decisions of the anti-monopoly authority, by arguing that use of the unregistered mark benefitted good-faith users:

• The owner of the trademark HANSOL failed to challenge claims against it of unfair competition. By the time the mark was filed, the product at issue had been on the market for a long time, and sold by various distributors in Russia. Consequently, the mark became widely recognised and associated with the product.
• However, in a different case, the applicant managed to cancel the decision of the Federal Arbitration Court, which found the registration and use of the trademark to be unfair competition. Prior to the registration date of ANTIGRIPPIN as a pharmaceutical drug trade name in 1996, and prior to the priority dates of the similar trademarks (2007, 2009), the designation had been widely used by pharmacists and doctors. However, it had not been tied to a specific composition and manufacturer. The designation had appeared widely in the media and even in regulatory documentation.
   

The first-to-use approach is also periodically applied in Russian judicial practice with regard to violation of the right to a trademark. This often occurs in cases regarding designations that can be generically called ‘Soviet’.

It is also apparent in cases involving the denial of the right to use certain trademarks and/or the recovery of appropriate damages:

• In a case that reached the Supreme Arbitration Court, a TV company tried unsuccessfully to prevent a magazine publisher from using the designation ‘Chelovek i Zakon’, which was similar to its own mark. As a result, the court dismissed the claim, since priority had been granted to the plaintiffs after the use of the defendant’s mark in the media in 1990. The parallel use of the mark by both parties occurred as early as 1971. Although the court referred to the norms of the priority of the trademark, it also considered that the plaintiff’s actions could qualify as an abuse of the right due to the confirmed activity of the defendant prior to the plaintiff’s application.               
• In another case involving the defence of the exclusive right to the trademark and the recovery of damages, the courts also dismissed the claim due to the fact that the defendant had been manufacturing the products at issue under a designation constituting a word element of the trademark, MALVINA, 13 years before the priority date of the registered mark.
• In 2006, the Supreme Arbitration Court, in its decision on a case involving the designation SPARTAK, indicated obiter dictum, “if the use of the designation by the subject of economic activity has started and become known in circulation prior to the priority date of the trademark, such use cannot be recognised as a violation of the exclusive rights to the trademark”.
• In 2019, the IP Court dismissed a claim defending the trademark DETSKIY, which had been registered in 2016 for a cream created as early as 1955. It was established that the defendant had been using the mark for a long time prior to the plaintiff’s registration, and that it had gained popularity among consumers.
   

Thus we see that the official adoption of the first-to-file principle in the Civil Code does not exclude the partial use of first to use in actual practice - at least when it comes to the prohibition against abusing this right and acts of unfair competition.