IP Court decision clarifies what type of evidence may prove genuine use

In Russia, an increasing number of actions seeking the cancellation of trademarks due to non-use are filed with the IP Court. Faced with such a trend, many trademark owners worry about the way in which their trademarks should be used in order to maintain their protection. The ruling of the IP Court in Lazarev v Gorbushka LLC (Case No SIP-198/2014, full court ruling published on June 2 2014) shows which evidence may be used by trademark owners to obtain a decision in their favour and prevent their trademarks from being cancelled.

Mr Lazarev, a sole entrepreneur (the plaintiff), brought an action before the court seeking the early termination of the legal protection of the trademark KORMUSHKA on the ground of non-use by the trademark owner, Gorbushka LLC (the defendant).

In accordance with Paragraph 1, Article 1486 of the Civil Code of the Russian Federation, the legal protection of a trademark may be terminated early in case of continuous non-use of the mark for any period of three consecutive years following registration. The burden of proving use of the mark lies on the trademark owner.

In the present case, the plaintiff alleged that the defendant had not used its trademark for a continuous period of three years. The plaintiff also informed the court that he had applied to register the word mark KORMUSHKA in respect of goods in Classes 29 and 30 of the Nice Classification, as he was already producing bread and flour products (eg, crackers) related to Class 30.

However, the defendant provided the court with evidence that it had used its trademark during the period under dispute - in particular:

• a licensing agreement between the defendant and a Russian company pursuant to which the latter produced bakery and confectionery products and packed these goods in branded containers, based on the instructions of the defendant;
• a supply agreement between the defendant and a Russian producer of branded containers for bakery and confectionery products;
• a distribution agreement pursuant to which a distributor of the defendant sold those bakery and confectionery products;
• other agency and supply agreements;
• packing lists, specifications and distributors’ reports;
• certificates of acceptance of works and services;
• bank transfer orders; and
• invoices.

Based on the abovementioned evidence, the court concluded that the defendant had demonstrated the use of its trademark during the disputed period, and dismissed the action for cancellation.

Sergey Treshchev, Olga Bezrukova and Sergey Yurlov, Squire Patton Boggs Moscow LLC, Moscow