IP Court considers use of registered mark in slightly different form

Russian Federation

In Talko Inc v LLC Global Searching Systems, the Russian IP Court has considered a dispute concerning the early termination of the protection of a trademark due to non-use (Case No SIP-480/2014, full judgment published on December 11 2014). Such claims are going from strength to strength in the Russian Federation.

Plaintiff Talko Inc (formerly known as Cocomo Inc - the company changed its name to Talko Inc in September 2012), a US-based company, develops cloud-based software for social interaction and provides services related to mobile applications, in particular messaging applications. The plaintiff owns a number of TALKO marks, registered in respect of services in Class 42 of the Nice Classification in the European Union, Norway, the Republic of Korea and Japan.

Wishing to expand its business to Russia, the plaintiff tried to obtain trademark protection in Russia in September 2012 and April 2014, but was unsuccessful because the Russian Federal Service for Intellectual Property (Rospatent) found that the plaintiff’s TALKO mark was confusingly similar to the combined Russian registered trademark TALK (Registration No 413129 of July 8 2010), owned by a Russian limited liability company, Global Searching Systems (the defendant). The defendant’s trademark was registered in respect of goods and services in Classes 9, 16, 38, 41 and 42.

According to Article 1486(1) of the Civil Code of the Russian Federation, protection of a registered trademark can be terminated if the right holder has not used the trademark within a three-year period. In such cases, an interested person may request the early termination of the protection of the trademark and, in court, the right holder has the burden to prove either that it has used the trademark directly or that a licensee has used it under the supervision of the right holder (eg, pursuant to a licence agreement registered with Rospatent in accordance with Article 1489 of the Civil Code).

Use of a trademark is possible in various ways, including by placing it on the Internet in accordance with Article 1484(2) of the Civil Code. Interestingly, the defendant presented the following evidence of use of the TALK mark - in particular, documents certifying that:

  • the defendant is the administrator of the domain name 'utalk.su';

  • the defendant owns a mobile software application named uTalk (a messaging applications), which is used on smartphones, telephones and tablet PCs; and

  • documents evidencing that the uTalk application was available to download on the Google Play store.

The defendant thus presented evidence of use of its mark in a slightly different form from that in which it was registered - namely 'uTalk' instead of 'talk'.

However, the court was satisfied with that evidence and referred to Article 5C(2) of the Paris Convention for the Protection of Industrial Property, which allows the use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark as registered in a respective country, providing that this shall not entail the invalidation of the registration and diminish the protection granted to the mark.

The court considered that the TALK mark with the 'U' symbol (depicted below) was not substantially different from the 'uTalk' designation, in particular because the same graphics and font were used. In addition, the court remarked that the TALK mark was a combined trademark and that there was no indication of the colour range of the trademark in the registration certificate.

Trademark as registered:

http://www.fips.ru/rutmimage/0/400000/410000/413000/413129-s.jpg

Logo used on the 'utalk.su' website:

http://utalk.su/im/brand/unio-talk-logo.png

uTalk app icon displayed on the Google Play store:

As a result, the court ruled that the difference between the registered form of the TALK mark and the form in which it was used was not substantial and, therefore, the mark was valid.

The court agreed with the defendant that the latter had made use of the TALK mark in Classes 9, 16, 38 and 41, but not in Class 42. Therefore, the court satisfied the plaintiff's claim in part - that is, it terminated the protection of the mark in Class 42.

Sergey Treshchev and Alexey Pashinskiy, Squire Patton Boggs Moscow LLC, Moscow

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