How to challenge a trade mark when it is not used: proving the plaintiff's interest

When filing a claim for early termination of the legal protection of a trade mark, the plaintiff must prove to the court in addition to the fact of non-use of the trade mark continuously for 3 years without valid reasons, also the existence of the plaintiff's interest in the satisfaction of the claim*. 

In practice, interest is often proved through the existence of a decision of the patent authority (NCIP) to refuse registration of an identical or confusingly similar trade mark. Interest may also be argued by the existence of the Plaintiff's intention to use the disputed trade mark on goods, their packaging or in the provision of services, but proving such a position in court has its own peculiarities.

Consider the recent decision of the Supreme Court of the Republic of Belarus in case No. 1IGP22107 of 21 July 2023.
 

п. 13 of the Resolution of the Plenum of the Supreme Court of the Republic of Belarus No. 9 of 28 September 2005 "On Some Issues of Application of Legislation in Civil Cases Involving Protection of the Right to Trademark and Service Mark".

Facts

On 4 October 2022, the Supreme Court took measures to secure the action by prohibiting the Respondent, a Moldovan company, from disposing of the trademark right on the territory of the Republic of Belarus until the case is decided.

Following the imposition of interim measures, the Claimant, a soft drink manufacturer from the USA, filed a claim for early termination of the legal protection of the trade mark "B" in respect of class 34 (tobacco; smoking paraphernalia; matches) of of the International Classification of Goods and Services (ICCTU) on the grounds of non-use for a period of 3 years without valid reasons.

Claimant's position

The Claimant's claim is based on the Respondent's failure to use the trade mark "B" in respect of all the named goods of Class 34 of the ICTU without valid reasons for a period of 3 years from 1 February 2019 to 1 February 2022 and thereafter up to the date of filing of the claim.

Plaintiff asserted an interest in the claim as follows:

  1. The plaintiff pointed to the registration in Belarus of a series of trade marks in which the word element "B" is dominant and determinative of distinctiveness in the 32nd class of the ICTU. 
     
  2. In addition, according to the Claimant, the registration of the trade mark "B" in respect of goods of class 34 of the ICTU "tobacco; smoking accessories; matches" may adversely affect its reputation, the main activity of which is the production of non-alcoholic beverages (energy drinks).

Position of the Respondent 

In its defence, the Respondent refers to the Claimant's lack of interest in the satisfaction of the claim and attributes the non-use of the trade mark "B." in the territory of the Republic of Belarus to circumstances beyond its control. 

The Respondent also states that it has taken "preparatory actions" to use the mark, as during the claimed period its subsidiary in the Russian Federation concluded a contract for the supply of tobacco products labelled with the "B" designation to the Republic of Belarus, which proves the Respondent's intention to use the "B" trademark.

Conclusions of the Supreme Court

The court dismissed the claim and found that the Claimant had not provided sufficient evidence to prove its interest in the early termination of the legal protection of the mark "B.", as there was no evidence confirming the Claimant's intention to use the designation "B" in relation to tobacco products. In particular, the Claimant did not apply to the patent authority for registration of the trade mark "B" in respect of the 34th class of the ICTU.

In addition, in the court's opinion, granting legal protection in the Republic of Belarus to the trademark "B" in the name of the Respondent in respect of goods of class 34 of the ILCU does not prevent the Claimant from using its trademarks with the element "B" in respect of goods of class 32 of the ILCU, for which the marks are registered, including in respect of the goods "energy drinks", since the goods of classes 32 and 34 of the ILCU are not homogeneous.

Since lack of interest is an independent ground for dismissal of the claim, the court did not consider the issue of the defendant's non-use of the trade mark.

Comments

The problem of proving the "interest" of the plaintiff in cases of early termination of protection of trademarks under Article 20 of the Law "On Trademarks and Service Marks" remains relevant, and we see that judicial practice still continues to form criteria for assessing such interest.

In particular, the situation becomes more complicated in the absence of an application to NCIS for registration of the disputed designation in respect of homogeneous goods and services (including those in the same class of ICTU). At the same time, para. 13 of the Resolution of the Plenum of the Supreme Court of the Republic of Belarus No. 9 does not directly indicate the plaintiff's intention to use the disputed trade mark in relation to "homogeneous" goods or services, although the condition of "homogeneity" is clearly implied here.

In practice, we also often see that such preliminary application to the NCIS for registration of a trade mark is not obligatory for the plaintiff. Nevertheless, this action remains an important element of proof and helps the plaintiff to show its "interest".


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