Background
- In 2011 ROSNO was one of the hugest Russian insurance companies, while ROSNO brand was evaluated at 444 million USD with top position maintenance among other Russian insurance brands.
- In 2012 ROSNO company entered a worldwide famous group and continued further development under Allianz brand.
- Allianz has got the rights for 3 ROSNO trademarks (two combined and a word one);
- Having considered that the right holder did not use ROSNO trademarks, a famous insurance company RESO-CHANCE applied for registration of ROSNO trademarks in its own name and afterwards claimed early termination of all 3 ROSNO registered trademarks in full.
Legal framework
Article 1486 of the Civil code provides conditions for early termination of trademarks based on non-use. Recent amendments to the Civil code stipulated a mandatory pre-trial dispute resolution procedure, in particular a future plaintiff shall send a letter to a holder of disputed trademarks with an offer either to waive the trademarks or to assign them. The burden of proving proper use of disputed trademarks within a 3-year period prior sending the offer letter lies on a defendant, while according to relevant court practice a plaintiff shall prove his legitimate interest in termination.
Pursuant to court practice a defendant shall prove proper use of disputed trademarks with respect to each of the goods/services the Plaintiff seeks termination of the trademarks unless a defendant proves, that his trademarks are widely known. Widely known character of disputed trademarks allows the defendant to prove their use only with respect to goods/services homogenous to the ones the Plaintiff seeks termination.
Litigation
In April 2019 RESO-Chance sent a letter to Allianz offering either to waive ROSNO trademarks in full or to sell them to RESO-Chance but for no more than 150 000 RUR. Then RESO-Chance sued Allianz. In particular the Plaintiff claimed early termination of 3 ROSNO trademarks assuming their non-use by the defendant within the disputed period (from April 2016 to April 2019).
The defendant built the following line of defense:
- the Plaintiff has no legitimate interest in termination of the disputed trademarks with respect to all the services except for insurance ones (the disputed trademarks were registered with respect to other multiple services);
- disputed trademarks are widely known to consumers, and the defendant can prove proper use with respect to homogenous services, but not with respect to all the services they are registered for;
- VTB insurance used one of ROSNO trademarks during the disputed 3-year period under the registered license granted by the defendant, this trademark was also used by defendant’s subsidiary (Allianz Life Insurance) under defendant’s control in the design of offices;
- the defendant stated the use of word trademark ROSNO based on Clause 2 of Article 1486 of the Civil code (use of a trademark with the alteration of individual elements not affecting its capability of distinguishing and not limiting the protection);
- Plaintiff’s attempts to register ROSNO trademark in its own name shall be recognized as an abuse of right.
The defendant submitted the minutes (interviews of witnesses by attorneys-at-law) as evidence of proper use. The witnesses confirmed use of trademarks in the design of Allianz Life Insurance offices within the disputed period.
The defendant also had to ask the court to order evidence from VTB insurance.
IP court decision
The IP court satisfied the claim in part. In particular, only one defendant’s trademark was partially terminated only with respect to certain services, while the other 2 trademarks maintained legal protection in full.
The court held, that the defendant’s trademarks are widely known. The court decision defined, that if a company does not have marketing authorization for providing services from the list for which the trademark in dispute is registered, such company cannot be considered legally interested in cancelling a trademark for these services, thus the court agreed, that the Plaintiff proved the legitimate interest in termination of the disputed trademark with respect to insurance services only.
The court also accepted all the evidence provided by VTB insurance and the defendant itself, including the aforesaid interviews of witnesses by attorneys-at-law.
The court also agreed with an argument of the defendant concerning the use of word trademark ROSNO based on Clause 2 of Article 1486 of the Civil code.
Comment
In this case the IP court applied provisions of Clause 2 of Article 1486 of the Civil code and deemed the disputed trademarks widely-known, which means that this case is a quite rare one. The IP court decision also illustrates, that interviews of witnesses can serve as the evidence of trademark use in cases on early termination of trademarks based on non-use.
The court case number is СИП-560/2019. The lawyers of A.Zalesov & Partners represented Allianz before the court.
This article first appeared on WTR Daily, part of World Trademark Review, in (March/2020). For further information, please go to www.worldtrademarkreview.com