We were approached by a well-known Russian food manufacturer. In connection with entering the market of Kazakhstan, the client wanted to register its trademark there. As it turned out, a few years ago, an identical mark had already been registered by a Kazakh company.
During the negotiations, the trademark owner offered our client to conclude a license agreement on extremely unfavorable terms. After the refusal to acquire a license, the rights holder attempted to block the supply of the client’s products. The client faced the threat of complete loss of the Kazakh market.
What actions have we taken?
We considered two strategies for contesting the trademark of a Kazakh company:
We analyzed the activities of a Kazakh company and found out that part of their business is registering brands of others for subsequent resale or licensing. However, this was not enough to prepare a convincing position in the unfair competition case. At the same time, there were reasons to believe that the brand squatter had not used the mark for three years after registration. Therefore, we decided to start preparing a case on the cancellation of trademark protection due to its non-use.
Before filing a lawsuit, we applied for a trademark in the client’s name and collected evidence showing that the opponent was indeed not used the mark. We conducted market research and requested information from food regulators.
As a result of the court case, we canceled the disputed trademark and eliminated obstacles in the way of our client’s trademark application. As a result, the client received its brand protection and resumed the supply of products to the Kazakhstan market.
Trademark squatting can be avoided if:
During the negotiations, the trademark owner offered our client to conclude a license agreement on extremely unfavorable terms. After the refusal to acquire a license, the rights holder attempted to block the supply of the client’s products. The client faced the threat of complete loss of the Kazakh market.
What actions have we taken?
We considered two strategies for contesting the trademark of a Kazakh company:
- To get recognition of the opponent’s actions as unfair competition.
- To cancel the trademark based on its non-use by the right holder.
We analyzed the activities of a Kazakh company and found out that part of their business is registering brands of others for subsequent resale or licensing. However, this was not enough to prepare a convincing position in the unfair competition case. At the same time, there were reasons to believe that the brand squatter had not used the mark for three years after registration. Therefore, we decided to start preparing a case on the cancellation of trademark protection due to its non-use.
Before filing a lawsuit, we applied for a trademark in the client’s name and collected evidence showing that the opponent was indeed not used the mark. We conducted market research and requested information from food regulators.
As a result of the court case, we canceled the disputed trademark and eliminated obstacles in the way of our client’s trademark application. As a result, the client received its brand protection and resumed the supply of products to the Kazakhstan market.
Trademark squatting can be avoided if:
- Timely register the key brand elements in the countries of the planned business.
- Conduct monitoring to identify pirate trademark applications and prevent them from being granted legal protection.
