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

Last Updated: 4 March 2016
Article by Olga Yashina

Most Read Contributor in Russian Federation, September 2018

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.

Similar Articles
Relevancy Powered by MondaqAI
Gorodissky & Partners
Gorodissky & Partners
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”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Gorodissky & Partners
Gorodissky & Partners
Related Articles
Related Video
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions