Test whether the cited mark was genuinely used
Our investigation showed that, despite its earlier reputation, the cited mark had not been used in Russia for a considerable period.
Case study · Russia · Trademarks
Overcoming a Rospatent trademark refusal.
We used an early termination claim for non-use to create a negotiated route past the cited mark and secure registration for the client’s full list of goods.
ClientDIY retailer (Russia)
MatterPreliminary trademark refusal
JurisdictionRussia
Final resultFull-scope registration
The obstacle
An earlier German mark blocked a new household-goods brand.
Rospatent issued a preliminary refusal against the client’s application, finding the mark confusingly similar to an earlier registration owned by a German retail group.
An initial attempt to obtain a letter of consent did not succeed, leaving the client without a direct route to registration for the planned product line.
The non-use claim was both a legal remedy and a route back to productive negotiations.
Our strategy
Test non-use. Create a registration route.
We investigated the cited mark’s use, established the client’s commercial interest and filed before the Court for Intellectual Property Rights.
Document the client’s interest
We collected evidence connecting the pending application and planned product launch to early termination of the cited protection for non-use.
Create procedural leverage
We filed the non-use claim before the Court for Intellectual Property Rights, bringing the unresolved citation into an active legal process.
Convert the dispute into a registration route
The parties reached an agreement under which the German company provided irrevocable consent to registration and use of the client’s mark.
Result
The consent removed the refusal. The mark obtained full protection.
We submitted the agreement and consent to Rospatent, eliminating the basis for refusal and securing protection for the complete list of goods sought by the client.
Non-use claim filedThe cited registration was placed under an active legal challenge.
Irrevocable consent obtainedThe earlier owner agreed to registration and use of the client’s mark.
Full list protectedRospatent registered the mark for all goods of interest.
Key point
Litigation can create a settlement route to registration.
What made the route work.
A non-use action does not always need to end in judgment. Here, the filed claim changed the negotiating position and produced the consent needed to overcome the refusal.
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This case study describes a completed matter and is provided for general information. Results depend on the facts, evidence and procedural history of each case.