The company Media-Saturn-Holdin GmbH has filed a suit against Russian entrepreneur. The entrepreneur was the owner of trademark MediaMarkt in Russia for class 35, but – according to claimant – did not use it; the claimant sought to cease the trademark protection due to its disuse. The claimant believed it is “party concerned”. Despite the trademark owner’s letter to postpone consideration of the case, the case has been considered by the court in the absence of defendant.
According to Russian law, effective at the time when the claimant filed his lawsuit, the legal protection of trademark could be ceased premature if the trademark in question has been not used during three years. If the party concerned believes the right holder in trademark doesn’t use it, such party can propose right holder to refuse from the right in trademark or to conclude with right holder agreement assigning the rights in trademark. The proposal of the party concerned can be made no earlier than three years following trademark registration.
If the right holder during two months following the made proposal has not refused from its exclusive right in trademark or has not concluded agreement with party concerned, such party has the right to file the suit requiring premature cancellation of trademark protection due to its disuse. Party concerned can be any person who has legal interest in termination of trademark protection and not only intends to use such trademark but is ready and has made all necessary arrangements for such use.
The right holder in trademark is obliged to prove that the trademark in question has been used by right holder or other person under right holder’s control or authority. The party concerned must prove its interest in use of trademark in question. The claimant – the owner of MediaMarkt brand – has proved its interest and intention. The claimant filed application to register trademark and received refusal because the sign, for which application has been filed, is similar to confusion with registered trademark in question.
The court considered all circumstances of the case and found that two signs – the trademark in question and sign filed for registration – are similar to such extent that can confuse ordinary customer in relation to source of services origin or economic association of defendant with claimant. The defendant did not appear at the court hearing and did not impugn the claimant’s arguments. The court also pointed out that the changing the chain of right holders of trademark in question does not impact the fact of trademark disuse.
Following the interpretation of the Russian law by the court, in order to exclusive right in trademark to be in force the trademark is to be used regardless of right holder’s (trademark owner’s) changing. The fact that one trademark owner has assigned exclusive rights to other person, does not affect or change the three-years term duration necessary for its protection.
The court also considered the defendant’s arguments in relation to use of trademark in question. The defendant provided the court with certificate of domain name registration as evidence that the trademark in question has been used. But the court declined this argument. According to the court administration of domain name does not confirm the use of trademark. The court noted that if there were web-site with offers of services under the trademark in question, such use could prove the use of trademark in question.
The copies of sales reports, receipts, payment orders and consignment notes provided by the defendant also do not prove providing the services on “promotion of products for third parties” under the trademark in question. Some of the documents provided by the defendant the court has excluded from the case because such documents are unreliable and trustless. Taking into account all circumstances of the case and evidences the court decided that the defendant did not prove the use of trademark in question and did not prove that there were circumstances interfere with use of trademark in question during the three years, therefore the protection of trademark is to be terminated.