The firm’s lawyers successfully represented Kavminvody JSC (“Kavminvody”), a renowned producer of the Novoterskaya Tselebnaya mineral water, in the IP Court. The outcome was that the legal protection of a similar trademark owned by a bad-faith rightholder was declared invalid.
A verbal trade mark of the bad-faith rightholder was registered by Rospatent under the simplified procedure (i.e. without an expert review being conducted), which was established by the so-called ‘Crimea law’. In 2014 after the Republic of Crimea was assimilated into Russia an opportunity appeared to ‘recognise’ in Russia the rights to trademarks and patents for which, as at the date of the unification, Ukrainian certificates had been issued. Unfortunately, in a number of cases persons acting in bad faith made use of the simplified procedure. These bad-faith actions resulted in a situation when in Russia the legal protection applies for two or more confusingly similar trademarks used to label one and the same type of goods while being owned by two separate legal entities. This created a drama because a direct statutory prohibition made it impossible to challenge the registration of the trademark owned by the bad-faith owner Krymservis LLC (“Krymservis”), which was confusingly similar to an earlier trademark of Kavminvody. The only possibility to terminate a contested trademark was to prove it confused consumers about the goods and their producer. Kavminvody obtained and sold the mineral water Novoterskaya Tselebnaya in very large volumes in Russia and also abroad; consumers associated this brand of mineral water with this particular producer (which was supported by the results of a survey conducted by the Russian Public Opinion Research Centre). However, Krymservis also decided to prove that it had been obtaining and producing the mineral water under the same name in substantial volumes. Having reviewed the documents provided to them Pepeliaev Group’s lawyers concluded that almost all of the documents had been falsified. Inconsistencies between the information in the documents and the established facts were also confirmed by Ukrainian lawyers. A petition to this effect was filed with the IP Court and Krymservis claimed it could not supply the originals of the documents. Having considered the proof provided by Pepeliaev Group’s lawyers, the absence of proof from the bad-faith rightholder that it had been actually selling the mineral water, and, most importantly, the absence of proof that the said rightholder did hold the right to the contested trademark as of the date when Crimea was assimilated into Russia, the IP Court terminated the legal protection of the trademark.
A team of lawyers from Pepeliaev Group acted for the client in this case, and it comprised: Valentina Orlova, Head of IP Practice, Yuri Yahin, Head of IP Practice Group, and Anton Pchelkin, Paralegal.