On 20 August 2024, the Arbitration Court of the Primorsky region issued a decision refusing to bring to administrative liability the client of «A.Zalesov & Partners» Patent & Law Firm for infringement of rights to a series of three-dimensional trademarks belonging to a foreign company - a manufacturer of well-known constructon sets. The court considered that, despite certain similar elements between the compared designations (a three-dimensional trademark and a product - a toy in the form of a man), confusion as a whole cannot arise, and therefore did not find any infringement of trademarks of their holder in the actions to import the disputed goods.
The case was complicated by the fact that the appearance of the disputed toy men is protected by a patent of the Russian Federation for an industrial design, which belongs to the manufacturer of these toys. The position of «A. Zalesov & Partners» team was as follows: since Rospatent issued a patent for an industrial design, it means that the appearance of these toys is recognized as original, including in relation to the three-dimensional trademarks of the rightholder, therefore, there can be no confusing similarity between these trademarks and the disputed toys, since originality excludes the possibility of confusing similarity.
Unfortunately, the court's decision does not contain a detailed position on this issue, although this argument certainly influenced the outcome of the dispute as a whole.
The client's interests were represented by senior associate, patent attorney Anna Kakurnnikova with the participation of partner, head of the Patent Department Maria Makhlina.
For more details about the case, please follow the link.