Advising the company on unfair business practices of the former distributor

Client Feldsaaten Freudenberger GmbH & Co.KG (Germany)

Description

The company Feldsaaten Freudenberger GmbH & Co. KG (Germany), the world-famous manufacturer of lawn grass seeds, accompanied by a number of designations, including «AMERICAN GREEN», faced with unethical practices of the former distributor Zelyonyi Kover, LLC (Russia), which applied for registration of the trademark «AMERICAN GREEN» for products for class 31 of the Nice Classification, including the seeds, in its own name, but later it assigned the right to registration of the designation to North American Seed, LLC (USA), in whose name the trademark had been registered. In which case, it was found that the American company does not engage in any activities related to the production of seeds of plants, and the company was established just two months before the transfer of the right to the application.

The German company used this designation long before the priority date of the trademark. The client’s products in large quantities exported to Russia through various distribution channels, including to the address of Zelyonyi Kover, LLC, long before the priority date of the trademark.

Solution

According to the analysis of all the materials, it was decided that there were prospects to challenge the trademark in the Chamber of Patent Disputes (Rospatent) on the ground of non compliance of the designation with the protectability criteria, namely the possibility of misleading consumers in the matter of the manufacturer of the goods.

Result

As a result of the proceedings, the legal protection of the trademark by the decision of the Rospatent was invalidated in full; the client successfully registered the trademark in its name.

All the attempts of North American Seed LLC and Zelyonyi Kover, LLC (the licensee in respect of the disputed trademark) to challenge the decision of the Rospatent in the IP Court, including based upon the results from a public opinion poll commissioned by the claimant, as well as referring that «AMERICAN GREEN» elicits the tolerant association with the American origin of the goods and, thus, was a false indication of origin for products imported from European countries, were not crowned with success thanks to the professional and coordinated actions of the patent attorneys and lawyers of Gorodissky & Partners.