Successful Representation Of The Client’s Interests In A Trademark Dispute

Client H&B Health and Beauty Limited (Israel)

Description

H&B Health and Beauty Limited (Israel), manufacturer of cosmetics under worldwide known brand «H&B» entered the Russian market through its distributor -Debora Ltd. (Russia) which has successfully sold the client’s products in Russia for several years.

Unfortunately, the client did not timely protect his rights in Russia which was used by the distributor to register the client’s trademark in his own name. After that, he started to create obstacles for importing original products to Russia. As a result, the client was unable to supply his products to the Russian market.

The client sought to reach an agreement with the distributor on mutually acceptable terms. An agreement was signed which included an assignment of the disputed trademark to the client. The client complied with his contractual obligations while the distributor, in contravention to the agreement blocked the registration of the assignment in the Russian PTO and continued to create obstacles for importing the client’s products.

In addition to that, a third party DS Trading Ltd. (Russia) applied to the court claiming to invalidate the assignment. As a ground for its claims, the third party stated that there is a trademark assignment agreement between the third party and the distributor, the said agreement having been signed prior to the assignment between the client and the distributor.

Solution

The lawyers of Gorodissky & Partners proposed the following defense strategy for the client:

First of all, a law suit was filed to enforce registration of the assignment to the client. Further, a counterclaim to invalidate the assignment agreement between the distributor and the third party was filed to the court. Aside from that, lawyers of Gorodissky & Partners prepared points of defense to the third party’s claims proving them unlawful and groundless.

The third party’s claims, the client’s counterclaims and the client’s appeal to register the assignment were consolidated in one case.

Result

As a result of consideration of the case the Commercial Court of Moscow issued a judgment rejecting the third party’s claims. At the same time, the Court upheld all arguments put forward by Gorodissky & Partners’ lawyers proving unlawfulness and groundlessness of the third party’s claims.

Additionally, the Court upheld the client’s claims in full. As a result, the exclusive right to the trademark was returned to the client who was able to resume imports of his products to Russia.