Successful Representation of the Client in a Series of Disputes on Illegal Use of Trade Marks on Signboards, in Restaurant Premises, Advertising and on the Internet
Client Owner of Café Pushkin Trade mark
The Client is the owner of the iconic and fancy Pushkin restaurant located on Tverskoy Bulvar in Moscow. The Pushkin restaurant is one of the most popular Russian cuisine restaurants among Russian and foreign visitors and is ranked by several international companies.
The Client has found several locations imitating its brand, in particular, Uryuk & Pushkin and Traktir Pushkin, nearby its restaurant. The restaurants have used the Client’s trade marks on signboards, in restaurant premises, advertising, and on the Internet.
The Client has sent several cease and desist letters to respective infringers requesting to cease the illegal use of its trade marks, but without any success. Having exhausted the possibility to settle these disputes on an amicable basis, the Client has filed claims with the Commercial Court of Moscow for protection of its exclusive rights and recovery of monetary compensation.
On the first claim (with regard to the Uryuk & Pushkin restaurant), the court of first instance has partially satisfied the Client’s claims, and the court of appeals has upheld the decision of the lower court. However, the Defendant has filed a further (cassation) appeal with the Intellectual Property (IP) Court.
On the second claim (with regard to the Traktir Pushkin restaurant), the Client’s claims have been dismissed in full referring to the fact that “the word element “PUSHKIN” is not protectable, since it is the surname of the great prominent Russian poet Alexander Pushkin and its registration as a trade mark contradicts the public interests”. At the same time, despite the obviously incorrect application of the rules of law, the court of appeals has upheld the conclusions of the Commercial Court of Moscow.
At the stage of cassation appeal of relevant judicial acts, the Client has turned to us as experts in dispute resolution related to the illegal use of trade marks and service marks.
The experts of Gorodissky & Partners have examined the files of these cases and developed certain strategies to appeal the judicial acts under the next (cassation) procedure. In order to protect the Client’s rights, the lawyers of Gorodissky & Partners have prepared and filed cassation appeals with the IP Court. We have also participated in consideration of the two cassation appeals and court proceedings in the IP Court.
The IP Court has agreed with our arguments on both cases and, in particular, in the dispute with owners of the Traktir Pushkin restaurant, specifically, with the arguments of our lawyers that it may not be refused to protect the exclusive rights to a trade mark until legal protection of the trade mark is terminated under the relevant legal procedure. On the first case (with regard to the Uryuk & Pushkin restaurant), the IP Court has upheld the decisions of the lower courts and dismissed the defendant’s cassation appeal. After that, the defendant has filed further appeal against the Decision of the IP Court with the Supreme Court of the Russian Federation, but without success. On the second case (with regard to the Traktir Pushkin restaurant), the IP Court has reversed the decisions of the lower courts and remanded the case for a new consideration (round).
During reconsideration of the case against the Traktir Pushkin restaurant in the Commercial Court of Moscow, the lawyers of Gorodissky & Partners have additionally submitted the results of public survey confirming the likelihood to pass off (mislead) a consumer when the defendant uses the designations in commerce similar to the Client’s trade marks.
Based on the results of the court proceedings in the “second round”, the court of first instance has adopted a decision to satisfy the claimant’s (Client’s) claims in full. After that, the defendant has filed a further appeal against this decision with the court of appeals and the IP Court, but, unsuccessfully.
As a result of a series of appeals against the judicial acts on two cases and active participation of experts of Gorodissky & Partners, the Client’s exclusive rights and legitimate interests have been duly protected (enforced) and infringements at issue have been ceased in commerce and on the Internet. In addition, the Client has been able to recover a monetary compensation from respective infringers in the amount of 500,000 RUB in each case.