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On January 28, 2019 the Russian Intellectual Property Court upholds preceding Rospatent decision, by which BBC’s TOP GEAR trademark was invalidated basing on existence of senior almost identical trademark, belonging to a third party. The decision of IP Court, although very controversy in the result, especially in view of high consumers’ awareness of TOP GEAR TV-show in Russia, has structured the order of actions, which should be taken by parties to settle the dispute about validity of conflicting trademarks.

Senior trademark TOP GEAR RU339837 was initially registered by some unrelated company with priority of October 25, 2005 for classes 38, 39, 41 and 43. The company was liquidated in 2016, but the trademark was assigned to Mr. Ibatoullin a month before, who is known for acquisition and enforcement of trademarks without using them.

BBC registered TOP GEAR for class 38 with priority of December 10, 2013 (RU538851).

In 2017 Mr. Ibatoullin filed an invalidation action against the above trademark of BBC, basing on seniority of RU339837.

Since the senior trademark apparently has not been used by Mr. Ibatoullin, BBC chose for some reason not to seek for invalidation of senior trademark, but to cancel it due to non-use and, meeting the requirements of the law, sent a warning letter to Mr. Ibatoullin late January 2018. That meant, that non-use cancellation action could not be filed earlier than late March 2018.

Rospatent had to schedule the hearings on the invalidation of BBC’s trademark before the non-use cancellation action has been considered on the merits and in March 2018 BBC’s trademark was invalidated.

BBC appealed the decision of Rospatent, basing on several grounds, among them bad faith of Mr. Ibatoullin and high reputation of BBC’s Top Gear.

Meanwhile Mr. Ibatoullin canceled this senior trademark on his own, having created a serious bar for BBC to start a separate invalidation action against this trademark, since formally an invalidation action can be filed only during the term of the trademark validity.  

Recent IP Court decisions gave grounds for optimistic estimation of the outcome of the case, since in 2017 the IP Court refused at least twice to Mr. Ibatoullin basing on his bad faith. 

But this time IP Court refused in the appeal and upheld the decision of Rospatent.

The IP Court stressed, that the law provides limited number of procedures, when reference to bad faith of a trademark owner has legal consequences, and it’s up to the defending party to ensure, that these procedures were timely initiated and pursued.

The Court stressed, that the argumentation of BBC about high reputation of TOP GEAR before the senior trademark priority date and bad faith of Mr. Ibatoullin should have been considered in a separate invalidation action against this trademark.

Such invalidation action has never been started, and now it’s under question, whether such action can be initiated, after the senior trademark has been cancelled. It may become possible only in case a court applies analogy of law regarding patent invalidation, where an interested party can seek for patent invalidation even after patent has terminated, but it’s a very long way to check this, with an unpredictable result. 

The Court has powers also to refuse in protection of the claimant in case of the claimant’s bad faith, but in the considered case it was the third party who acted in bad faith, not the claimant.   

There are several possibilities to appeal this decision of IP Court. The case may have its further development in higher instances, since however reasonable are the grounds of IP Court for upholding Rospatent decision, the result is questionable in terms of justice and public interests.

This decision shows, that while preparing a defensive strategy, very formal approach of Russian administrative bodies and the courts to the grounds of action and the burden of proof should be regarded, and necessity and possibility should be verified, to initiate as much court or administrative procedures, as are necessary to check all the arguments the defending party has in her pocket, rather than to try to include all the argumentation into one case.

 

Irina Ozolina, A.Zalesov & Partners