A client of «A.Zalesov & Partners» Patent & Law Firm, AO «Twins Tec», filed an invalidation action with the Chamber for Patent Disputes of Rospatent against the registration of a trademark that contained a digital designation as an non-protectable element, which was used by the company long before the priority date of the contested mark for designations for their line of paramedical products.
By the decision of Rospatent dated December 13, 2022, the claim was denied due to the absence, in the opinion of the administrative authority, of the threat of misleading the consumer about the product and its manufacturer, since the digital designation cannot perform an individualizing function, and «Twins Tec» did not prove that consumers associated this designation with them.
The client disputed this decision in the Russian IP Court. On July 20, 2023, the decision of Rospatent was canceled by the Court, the trademark was considered invalid for a part of goods similar to goods produced by «Twins Tec».
The IP Court considered that Rospatent did not analyze the evidence provided by «Twins Tec» in aggregate and interconnection. The Court also determined that the conclusions and arguments of Rospatent and a third party that the disputed element had been excluded by the trademark holder from the legal protection of the disputed trademark did not matter for the dispute, since consumer associations regarding the compared designations did matter for this dispute in the form in which they were actually used while putting into the stream of commerce. At the same time, consumers of the relevant goods might not be aware of both the fact and the circumstances of registration (disclaimer) of a particular designation as a trademark.
The client was represented in the Court by Senior Partner Irina Ozolina and Senior Associate Anna Kakurnikova.