Non-Use Is Not That Simple

• Published date: 22 August 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Gorodissky & Partners
• Author: Mr Vladimir Biriulin

Laws of many countries include a provision regarding non-use of a trademark. Article 1486 of the Russian Civil Code provides that a trademark may be invalidated for all or part of the goods if the trademark is not used during three years.

In that case an interested person shall send a request to the trademark owner and ask him either to assign the trademark to him or grant him a license. If the trademark owner ignores the request the interested person may initiate a court action at the IP court. The use of a trademark means the use by the trademark owner himself, by his licensee or by a person under control of the trademark owner. The last version of use must be carefully documented in order to be able to save the trademark from cancellation.

In practice however, overtones crop up in connection with the attempted non-use trademark cancellation. In one of the cases, "Alita" Ltd. sued an individual; entrepreneur seeking to cancel a trademark registration No 191159 for (7even days) in respect of goods in Class 42 - provision of food products. The plaintiff based his claim on the fact that he was selling daily food products and alcoholic drinks. He was active from 2007 and had a chain of outlets trading in food. Besides, he filed a trademark application No 2019720190 for in Class 35, including supply services.

The respondent stated that his trademark was being used by his licensee to which the plaintiff responded that the licensee of the respondent carried on her business in a small faraway settlement in the middle of nowhere. The outer looks of the shop are characterized by minimalistic external design requiring no expenses. Thus, fictitious use of the service mark cannot confirm the use of the trademark, all the more that the license agreement was gratuitous and there was no purpose to receive financial advantages.

The court heard both sides and found that the plaintiff's claim could be satisfied. The court explained its decision as follows:

The claim to cancel a trademark can be made by an interested person only. The court referred to a Decree of the Plenum of the Supreme Court No 10 which explained that in order to recognize a person interested in the cancellation of a trademark because of non-use it is necessary that the combination of circumstances point to the interest of the plaintiff to use identical or a similar designation in respect of similar goods.

A person interested in the cancellation of a trademark is a person whose rights are affected by a...