Hachette successfully defends ELLE trademark

Russia’s Intellectual Property Court has invalidated decisions by the Russian Chamber of Patent Disputes and cancelled the trademarks ELLE and ELLESTUDIO, registered in Class 34 of the Nice Classification on behalf of UK-based Innovation Tobacco Company.

The trademarks had been assigned from Richmond Tobacco Products, a British-Russian tobacco holding, in April 2013.

The cancellation actions were filed by French magazine publisher Hachette Filipacchi Presse, the owner of the trademark ELLE in Class 16 (Russian Registration No 83647), on the ground that the Russian Patent and Trademark Office had registered the disputed trademarks in violation of Article 10bis of the Paris Convention. Hachette submitted evidence of use of the trademark ELLE in Russia for magazines and printed materials since 1988.

Hachette also argued that the use of the ELLE and ELLESTUDIO marks created consumer confusion, as the ELLE mark was well known among Russian consumers. Hachette submitted the results of a public opinion poll to support this argument.

The Intellectual Property Court ruled that Innovation Tobacco Company’s behaviour constituted an act of unfair competition and that the company intended to mislead consumers as to the producer of the goods. The court noted that the registrations for ELLE and ELLESTUDIO were likely to harm the goodwill of Hachette, and to dilute the distinctive quality and advertising value of Hachette's ELLE mark.

Tatyana Kulikova, PETOŠEVIĆ, Moscow