Inexorable XEROX

The imitation of trademarks is still a popular business, despite the courts having established precedents to resolve such conflicts. In 2008 the principle of senior rights was introduced to Russian law, making the protection of such rights a much smoother process.

Xerox Corporation initiated a court action against a Russian person who had registered an internet site under the name 'hpxerox.ru'. The respondent objected, arguing that his site contained no commercial information, but only journalistic articles about the activities of the state bodies. The respondent also claimed that there was no similarity or confusion between the domain name and the trademark. Further, the respondent stated that the plaintiff had realised his right to the trademark by creating the domain name 'xerox.ru'.

The court disagreed with the respondent and concluded that when comparing both designations, there was confusing similarity between the trademark and the domain name 'hpxerox.ru', which should be considered as infringement of the plaintiff’s rights. The domain name was also confusingly similar to that of Hewlett-Packard, thus hinting at an association between the two corporations.

The infringer appealed to the IP Court, which is the cassation instance. However, the IP Court returned the appeal to the appellant. The IP Court is part of the commercial court framework, and has been operational for more than a year. Although it is a cassation instance for the commercial courts, the procedural rules state that an infringement suit should be filed with the regular commercial courts and any appeal should be filed with the commercial court which issued the judgment. Further, the procedure is complicated. If appealed, the judgment shall be re-examined by the commercial court of appeal. Only after the issuance of an appeal judgment can that judgment be appealed to the IP Court in the cassation instance. The IP Court is the cassation instance for only infringement cases. After the cassation instance, the judgment may be appealed to the Supreme Court, which is the supervisory and final instance. Previously, cassation appeals could be filed with the High Commercial Court, but the High Commercial Court has now been merged into the Supreme Court.

The case at hand ended before the Moscow Appellate Court, which satisfied Xerox’s claims and fined the infringer $1,000. Whatever the outcome of the case, many xeroxed documents were involved.