The Sup Ct RF clarified what courts should consider when deciding trademark claims filed on behalf of licensees or franchisees, not the trademark owners themselves.
On 27 July 2022, the Sup Ct RF overruled the lower courts' decisions and ordered case A65−20 389/2020 for re-hearing. In this case, MBE-RU — a Russian franchisee of the international logistics franchise MBE Mail Boxes Etc. demands defendants to be prohibited from using signs similar to protected trademarks. At present, the case is under the second round of consideration by the Arb Ct Tatarstan Rep.
Earlier, lower courts decided in favor of the plaintiff despite the absence of the franchise agreement in the case file. On this occasion, the IPR Ct expressed that the mere information about the registration of the agreement on the Rospatent’s website is sufficient to conclude that MBE-RU has rights to trademarks and to file a lawsuit in defense of these rights.
However, the Supreme Court disagreed with this approach.
The Sup Ct RF recalled that only licensees (franchisees) — holders of an exclusive license (franchise) can initiate lawsuits to enforce the trademark rights.
The rationale for the claims filed by the licensee is a violation of the rights of the licensee received based on a license agreement, not the trademark owner’s rights.
Thus, the franchisee has the right to bring a claim only within the powers granted to him by the franchise agreement. Whether he can enforce trademark rights against a particular violation or not depends on the scope of these powers. In the absence of the agreement itself, this question cannot be answered.
On 27 July 2022, the Sup Ct RF overruled the lower courts' decisions and ordered case A65−20 389/2020 for re-hearing. In this case, MBE-RU — a Russian franchisee of the international logistics franchise MBE Mail Boxes Etc. demands defendants to be prohibited from using signs similar to protected trademarks. At present, the case is under the second round of consideration by the Arb Ct Tatarstan Rep.
Earlier, lower courts decided in favor of the plaintiff despite the absence of the franchise agreement in the case file. On this occasion, the IPR Ct expressed that the mere information about the registration of the agreement on the Rospatent’s website is sufficient to conclude that MBE-RU has rights to trademarks and to file a lawsuit in defense of these rights.
However, the Supreme Court disagreed with this approach.
The Sup Ct RF recalled that only licensees (franchisees) — holders of an exclusive license (franchise) can initiate lawsuits to enforce the trademark rights.
The rationale for the claims filed by the licensee is a violation of the rights of the licensee received based on a license agreement, not the trademark owner’s rights.
Thus, the franchisee has the right to bring a claim only within the powers granted to him by the franchise agreement. Whether he can enforce trademark rights against a particular violation or not depends on the scope of these powers. In the absence of the agreement itself, this question cannot be answered.
