We have investigated that despite its former fame, the cited mark has not been used in Russia for a long time. Having collected evidence of interest in discontinuing the legal protection of the trademark, we filed a claim with the Court for IP Rights. Soon, representatives of the German company contacted us, and in a short time, we settled the dispute by agreement.

Result

Due to the consent of the German company, the PTO had no grounds for refusing to register the filed mark. As a result, our client’s trademark became protected for the whole list of goods of interest.

Strategy

Background

Our client, a Russian DIY retailer, was interested in launching its new brand for household goods. We applied for a trademark but received a preliminary refusal. Rospatent recognized the filed mark as confusingly similar to the previously registered trademark of the German retail holding.

After an unsuccessful attempt to negotiate with a foreign company and obtain a letter of consent with the registration of the filed designation, we advised our client to institute a lawsuit to cancel the legal protection of the senior trademark due to its non-use in Russia.

Under the terms of the agreement, the German company provided irrevocable consent with the registration and use of our client’s trademark, which we then sent to Rospatent in response to the preliminary refusal of grant of protection.

Practice

Overcoming the PTO’s refusal to register a trademark

DIY retailer (Russia)

Client