Russian Federation: Use Or Abuse? Supreme Court Takes A New Look At Abuse Of Trademark Rights

Recent years have seen a growing number of cases involving claims of protection of exclusive rights to trademarks filed by persons who register those trademarks in large number and do not use them for their intended purpose.

Often, these companies are operating to extract profits by selling registered trademarks containing as protected elements or consisting only of a high-profile and attractive words from the commercial standpoint [e.g. "football", "health", "sports" for the goods other than the literal meaning of the words], as well as through the identification of businesses using their unregistered trademarks or similar designations, and by claiming compensation or compulsion to conclude a contract of assignment of the exclusive right to the trademark or onerous license agreements.

Formerly, the courts considering such cases, as a rule, used a formal approach: the person in whose name the trademark was registered, cannot be denied protection until the recognition of such a trademark be held invalid in the manner provided in Article 1512 of the Russian Federation Civil Code (hereinafter Civil Code), or termination of the legal protection of trademark in the manner prescribed by Article 1514 of the Civil Code.

Until recently, the use by the courts of the provisions of Article 10 of the Civil Code, which establishes the abuse of rights as a basis for rejecting the claim, much less direct application of the provisions of Article 10bis of the Paris Convention (1883), was a great rarity.

In recent times, the CJSC "Business Association of Afghan Veterans 'MIR'" and "New technologies" LLC became notorious in this capacity. A total of several thousand trademarks were registered in respect of a variety of the goods and services in the name of these companies. The majority of their trademarks are the popular, of the general use and "attractive" verbal or combined designations.

It is also noteworthy that in 1996, in the name of "Business Association of Afghan Veterans 'MIR'" the word trademark «BARBIE» was registered, the legal protection of which was subsequently terminated prematurely by the decision of the Chamber for Patent Disputes.

In addition, those companies own a huge number of domain names, which are not fancy designations either but are common Russian words, for example: профи.рф (profi.rf), марина.рф (marina.rf), айсберг.рф (iceberg.rf), россиянка.рф (rossiyanka.rf), суперзвезда.рф (superzvezda.rf), золушка.рф (zolushka.rf), царь.рф (tsar.rf), презент.рф (prezent.rf), etc.

The CJSC "Business Association of Afghan Veterans 'MIR'" and "New technologies," LLC, have been the plaintiffs in a large number of cases related to the recovery of compensation for the illegal use by third parties of their trademarks. In a number of cases, the plaintiffs and respondents entered into settlement agreements with the condition of a subsequent assignment of the disputed marks, while in some other cases the courts satisfied the claims for compensation. The problem was that the courts formally approached the consideration of the cases and after finding similarity between the registered trademark and the used designation as well as the homogeneity of the goods, did not find grounds for denying claims.

The balance was tipped in the judicial practice when these companies filed a claim against one of the largest domestic manufacturers of ice cream - the OJSC "Belgorod Cold Storage," as well as against the largest foreign producer of candy products "Perfetti Van Melle" whose interests were represented by the lawyers of "Gorodissky and Partners". The rights holders referred to the illegal use by the producer of the designations  «АФРОДИТА» ("APHRODITE"), «Птичка» ("Birdie"), «Ноктюрн» ("Nocturne"), «Праздничное» ("Festive"), «ФУТБОЛ» ("FOOTBALL"), which are registered trademarks, and demanded that infringement be stopped and a monetary compensation be paid.

The commercial courts, having examined cases nos. A08-8801/2013, A08-8802/2013 A14-10317/2014, A14-10319/2014, A14-10320/2014, handed down judgments refusing the right holders to grant their claims citing inter alia, Article 10 of the Civil Code.

The courts quoted Paragraph 62 of the old Resolution of the Plenum of the Supreme Court and the Supreme Commercial Court No. 5/29 of March 26, 2009 "On Some Issues Arisen in Connection with Enactment of Part IV of the Civil Code" and pointed out that a person shall be denied protection of his rights to a trademark on the basis of Article 10 of the Civil Code if according to the documents on file and on the basis of the specific factual circumstances, the actions leading to the state registration of the trademark can be qualified as abuse of rights.

In addition, the court may recognize as unfair the actions of the right holder of the trademark rights aimed at creating obstacles to the use of identical or confusingly similar designations, i.e., the actions to protect the violated exclusive rights to a trademark in the absence of its actual use by the right holder himself.

The court shall take into account the purpose of registration of the trademark, if there is real intention of the right holder to use it, the reasons for non-use. If it is established that the right holder did not register the trademark with the purpose of using it directly or through third parties, but only to prohibit third parties to use the appropriate designation, that person could be denied protection of such a right.

These judgments were upheld by the appellate court. Besides, during one of the hearings of the court of appeal, the right holders were invited to submit written explanations of the circumstances of registration of the disputed trademarks and the reasons for their non-use from the date of registration – i.e., for more than 18 years! No explanation was provided by the plaintiffs.

The right holders did not agree to the judgment and filed appeals to the IP Court.

The arguments, set out in the cassation complaint of the right holders, reproduced the provisions of the "Report pertaining to the misconduct, including competition, acquisition and use of the means of individualization of the legal entities, goods, services and companies" No SP-21/2 of March 21, 2014 approved by the Presidium of the IP Court, according to which finding bad faith only at the stage of use of a trademark is not an independent ground for contesting the grant of legal protection of the trademark. On its own, the non-use of a trademark by the right holder, including actions to "accumulate" trademarks, is not evidence of abuse of law and/or unfair competition according to that report. The right holders argued that there was no evidence proving the intent of the plaintiff to harm the respondent in the registration of the trademark.

Unexpectedly, the IP Court heard the arguments of the right holders and pointed out that in order to establish the fact of abuse by the plaintiffs of their rights the lower courts should have cleared up the purpose of registration of the trademark, find out if there was real intention to use it, and the reasons for non-use. Since there was no information in the judgments of the courts whether the right holders had the "real intention to use the disputed marks," those cases should be referred for a new trial to clarify these issues.

The judgments of the IP Court were paradoxical to a large extent and left open the question of exactly which evidence should be presented in the materials of the case so that the court could establish the purpose of registration of the trademarks, which had taken place more than 18 years ago. It is obvious that such approach would imply the need to prove "negative facts" by the respondents should they assert that there was no objective of legitimate use of trademarks by the plaintiffs when they registered the trademarks. The plaintiffs, in turn would also fail to present evidence of their real intention to use the controversial marks because of the absence of such evidence.

The OJSC "Belgorod cold storage" appealed against the judgment of the IP Court in the Supreme Court which considered the complaint and, in fact, made clear its position in this category of disputes. The Supreme Court overturned the judgments of IP Court and upheld the decisions of the courts of first and appeal instances by Decrees Nos. 310-ES15-2555 of July 23, 2015 and 31-ES15-12683 of the January 20, 2016.

The Supreme Court stated in those Decrees:

  1. A trademark serves to individualize the goods (Articles 1477, 1481 of the Civil Code), and is one of the means of protection of industrial property, aimed at protecting the result of production.
  2. The Court may refuse protection of a person's rights to a trademark on the basis of Article 10 of the Civil Code, Article 10.bis of the Paris Convention for the Protection of Industrial Property, if on the basis of actual circumstances of the dispute, it would establish abuse of rights by the right holder to the trademark (the fact of unfair competition).
  3. Given the general requirement established by the Civil Code to use registered trademarks, the actions of the right holder to the trademark, which are aimed at creating obstacles to the use of identical or confusingly similar trademarks in the absence of its actual use by the rightholder, are unfair and are not subject to judicial protection, because the plaintiff, who did not make any efforts during the statutory period to use the trademark, has no right to claim infringement. An attempt to get such protection in the absence of a decent interest of protection (for example, in case of imitation of violation of right) is definitely the abuse of right by the plaintiff.

At the same time, the Supreme Court considered it proven that the disputed trademarks had not been used by the right holders from the date of their registration, and the right holders themselves had never been ice cream producers or persons operating on the market. These findings are also supported by the judicial acts of the IP Court according to which legal protection of the trademarks was terminated prematurely since the right holders did not provide any evidence of their use.

In view of the above, the panel of judges of the Supreme Court determined that the plaintiff's actions showed abuse of rights so that commercial courts of first and appeal instances correctly refused the plaintiff legal protection.

This attitude of the Supreme Court fully confirmed the legal position of "Perfetti Van Melle" in matters which were concurrently dealt with which allowed the company to defend successfully its rights against the claims of the unfair right holder of the trademark «ФУТБОЛ» ("FOOTBALL").

The findings made by the Supreme Court will without any doubt be able to influence positively the judicial practice in similar cases and stop illegal activities of the companies, amassing trademarks without the real purpose to use them.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.