Notable Success in a Non-Use Cancellation Dispute

Client CANON KABUSHIKI KAISHA

Description

Canon, a famous name of the Japanese optical, imaging, and industrial products company, came to Russia more than 25 years ago with its cameras and printing paraphernalia, and became popular due to the quality of its products.

In March 2022 Canon suspended its product shipments to Russia, but kept options open for returning to the region.

Canon owns a number of trademarks registered in Russia. Despite suspending business operations and tolerating parallel import of its goods, Canon ensures continued protection of its TMs in Russia as a guarantee from brand squatters.

As is known, after a three-year period of non-use a trademark can be cancelled. Some Canon trademarks have become vulnerable to cancellation in Russia, namely: №№ 28129, 58987, 314678, 320959, 375851 in class 09.

A non-use cancellation claim can be satisfied if it is initiated only by an interested person. In order to recognize a person as having interest it is necessary that the entirety of circumstances of the case indicate that the plaintiff’s interest lies in subsequent use by him of a designation identical or similar to the disputed trademark in relation to similar goods (Pursuant to point 165 of the Resolution of the Plenum of the Supreme Court of the Russian Federation of April 23, 2019, No. 10 "On the Application of Part Four of the Civil Code of the Russian Federation"). Intention to use such designation must be real. If the interest is not proved, lawsuit can be dismissed.

When some foreign companies left the Russian market, there was a number of attempts by “interested” persons to register trademarks similar to those belonging to the companies that had left the market.

Stroyresurs Ltd., a Russian company, filed a trademark application No 2023739712 in 2022 in Class 09. Rospatent refused it from registration with reference to the Canon’s trademarks. Stroyresurs initiated a non-use cancellation action against Canon.

According to Russian law, the court first examines evidence of plaintiff's interest. In order to prove its interest Stroyresurs submitted to the court a set of documents showing preparations for use of the subject mark for electronic door locks, metal door handles, door video-peepholes etc. which are similar to class 09 goods under Canon’s trademarks.

Canon traversed the claim, arguing that Stroyresurs had no real interest in the cancellation of the trademarks, but was interested in capturing the famous trademarks and imitating the name of the well-known company.

Solution

The court dismissed the Russian company’s claim by the following reasons:

• The applied designation and the trademarks owned by Canon were found to be highly similar;
• The majority of respondents know the name CANON for many years, believing that the compared designations are different versions of the same name, and that the products marked are manufactured by Canon or with its permission or license;
• The Canon’s brand has been presented on the Russian market for many years and it is widely known in relation to optical products (class 09);
• Stroyresurs failed to explain its reasoning for choosing a designation similar to trademarks widely known to Russian consumers in relation, in particular, to optical products.

It was established that the evidence presented by Stroyresurs only formally confirms its interest and in the absence of evidence of connection between that designation and the activities of Stroyresurs, such interest is, in essence, abusive/unfair as it aimed at the use and registration of the widely known designation used in each of the Canon's disputed trademarks.

Result

In 2025-2026, three years after some companies left the Russian market, protecting their trademarks from cancellation due to non-use has become an issue.

Gorodissky team together with the client developed a defense strategy against trademark squatter based on proving lack of genuine interest. The claim was dismissed in full due to lack of interest, without proceeding to examine the evidence of use presented by Canon.

We are pleased to note a positive development in non-use cancellation practice, because the IP Court has prevented capture of a widely known brand and did not allow unfair entrepreneur to get access to consumer trust through the brand's decades-old reputation.