Trade marks enforceable in relation to the goods for which they are registered.

30.01.2012


Legal Update No. 325
 
Goltsblat BLP advises of the publication of Resolution of the Presidium of the Russian Supreme Court No. 8817/11 of 29 November 2011 upholding decisions of three lower courts in relation to a case on early termination of legal protection for the VECHERNIE trade mark with respect to goods under ICGS class 05 "pharmaceuticals" and "dietary substances for medical purposes" because the trade mark has been used during production and sale of biologically active supplements that are not on the registered list of goods.

The trade mark, under control of the owner (a licensor), has been used by another business entity, a licensee, under a licence agreement. At the request of a third party, however, Rospatent concluded that the goods produced by the licensee were not covered by the list of goods specified in the VECHERNIE Trade Mark Certificate. It was determined that the licensee had produced biologically active supplements that were not pharmaceuticals or dietary substances for medical purposes, which are protected under the Certificate. They all constitute a separate type of product with another designated purpose. That is why Rospatent terminated the legal protection of this trade mark early, as being used not in relation to pharmaceuticals or dietary substances for medical purposes.

Even though the owner (licensee) contested Rospatent's decision through all the courts and provided evidence of production, sale and marketing of the products, it did not manage to retain the legal protection for this trade mark in relation to pharmaceuticals or dietary substances for medical purposes.

This is a typical situation when a business entity - owner (licensee) loses its assets owing to failure by the goods in relation to which the trade mark has been used to comply with the scope of the trade mark rights.
 
For additional information, please contact:

to Elena Trusova
Partner, IP Practice
Goltsblat BLP
T: +7 (495) 287 44 44
E: info@gblplaw.com

to Larisa Lysenko
Senior associate, trademark and patent attorney,
Head of consultation and registration group
Goltsblat BLP
T: +7 (495) 287 44 44
E: info@gblplaw.com

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