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Successful Representation of the Client in the Trademark Dispute and Full Termination of Its Legal Protection

Client Russian Association of Motor Insurers (RAMI)

Description

KIT OTSENKA Limited Liability Company (the “Company”) registered combined trademark pomos.jpg (in Russian, it means “Compulsory Motor Third Party Liability Insurance Assistant”) for various goods of Class 9 and services of Class 42 of the Nice classification. Further, the Company sent to the Russian Association of Motor Insurers (RAMI) a warning letter due to the illegal use of the said trademark as well as several claims to the Apple Store requesting that it block the “Pomoshnik OSAGO” mobile application which RAMI had put in the market under a license (before the trademark application filing date).

RAMI responded to the Company’s claim and asked the Apple Store not to block the mobile application until it would be established whether the registration of the said trademark was lawful. RAMI considered the possibility of challenging the legal protection of the trademark on the ground of misleading consumers and its similarity to the name of the copyright work (software) known in the Russian Federation as at the trademark application filing date. “Pomoshnik OSAGO” mobile application is operated by RAMI under a license and helps to complete the necessary documents in road traffic accidents. Therefore, since the disputed trademark reproduced the name of the said application, it could mislead consumers with regard to the entity providing the respective services. Thus, RAMI has initiated the trademark cancellation action with Rospatent (Federal Service for Intellectual Property) which helped to terminate the protection of the Company’s trademark in full.

The Company disagreed with the Rospatent’s decision and filed an appeal with the Intellectual Property Court (IP Court). The Company claimed that it had started using the designation “Помощник ОСАГО” / “Pomoshnik OSAGO” much earlier since the Company’s General Director was the author and developer of a software (copyright work) which at various stages of its development and operation had also been known as “Помощник ОСАГО” / “Pomoshnik OSAGO” in the insurance market.

Solution

The specialists from Gorodissky & Partners prepared and submitted to the court a reasoned statement of defense and motivated opinions refuting the Company’s arguments, in particular, claiming that:

  1. the fact that the Company’s work (software) was created and known had no legal effect for applying Article 1483 (Sub-clause 1, Clause 9) of the Russian Civil Code in this particular case and, therefore, it was irrelevant;
  2. the proofs submitted by the Company did not confirm that the copyright work (software) had been created thereby and that the name of this software had been known in Russia.

In addition, our firm’s specialists participated in court hearings to support their grounds requesting to reject the Company’s claims also for other reasons and submitted the respective (relevant) evidence to the IP Court.

Result

As the result, the IP Court decided to dismiss the Company’s claims. The court fully supported the arguments of our lawyers and patent attorneys. The court of cassation further upheld the decision of the first instance court.

Since the legal protection of the disputed trademark has been fully terminated, RAMI now has an opportunity to freely use the name of the “Pomoshnik OSAGO” mobile application in the market and on the Internet as there is no more threat of receiving claims from the Company and consumers shall not be misled.

The “Pomoshnik OSAGO” mobile application is still available for users in the app stores.

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