Successful trademark protection: how we helped a client overcome obstacles on the way to registration
Completed trademark registration for a leading developer of access control and identification systems despite many obstacles
Situation
Our client is one of the leading companies engaged in the development and production of access control and object identification systems. Among its clients are such organizations as the Bank of Russia, Moscow Metro, Lomonosov Moscow State University and many others. The company's products are in high demand both in the Russian and foreign markets. In Russia alone, access control systems have been installed at more than a thousand different facilities. For 2023, the revenue from the client's core business amounted to 486.5 million rubles.
However, despite its fame and long-standing use for individualization of its services, the registration of the trademark, which the company had already used in its work before filing the application, was refused. The reason was the similarity of the applied-for designation with another trademark registered in the international register. This mark belonged to a foreign person from Estonia and created an obstacle to the registration of the client's trademark in the classes of the International Classification of Goods and Services (ICDS). The company was interested in obtaining legal protection for the trademark in all claimed classes.
Our actions
We decided to file an opposition to the refusal to register the trademark with the Chamber for Patent Disputes of the Federal State Budgetary Institution "Federal Institute of Industrial Property" (FGBU "FIPS"). To increase the chances of success, our lawyers also prepared and filed a statement of claim with the Intellectual Property Rights Court for early termination of legal protection of the opposed mark, as it had not been used in Russia for three years.
However, the litigation proved to be complicated, as during the proceedings it became clear that the disputed mark had been alienated in favor of another foreign legal entity from Singapore. This required procedural succession and the participation of a new foreign person in the proceedings.
In the course of the court proceedings, our party proposed an amicable way of resolving the conflict. As a result of negotiations, the foreign right holder agreed to issue a free letter of consent to the registration of our client's trademark in exchange for a waiver of claims for early termination of the legal protection of its mark in Russia.
This approach significantly shortened the timeframe for court proceedings and obtaining a decision on trademark registration, which satisfied the interested parties. The letter of consent to registration became a decisive factor in the decision of the Chamber of Patent Disputes in favor of the client.
However, the litigation proved to be complicated, as during the proceedings it became clear that the disputed mark had been alienated in favor of another foreign legal entity from Singapore. This required procedural succession and the participation of a new foreign person in the proceedings.
In the course of the court proceedings, our party proposed an amicable way of resolving the conflict. As a result of negotiations, the foreign right holder agreed to issue a free letter of consent to the registration of our client's trademark in exchange for a waiver of claims for early termination of the legal protection of its mark in Russia.
This approach significantly shortened the timeframe for court proceedings and obtaining a decision on trademark registration, which satisfied the interested parties. The letter of consent to registration became a decisive factor in the decision of the Chamber of Patent Disputes in favor of the client.
Conclusion
Now a client can protect his business from unlawful use of a trademark or a designation confusingly similar to it. He can also avoid claims for cessation of such use and payment of compensation.
The team of CPO Group guarantees an individual approach to your issue, high quality services and support at every stage of the process. We offer qualified assistance in trademark registration and resolving any related disputes.
The team of CPO Group guarantees an individual approach to your issue, high quality services and support at every stage of the process. We offer qualified assistance in trademark registration and resolving any related disputes.
