Lawyers of PATENTUS won in the cassation instance in the case on prohibition of using the trademark COCOCHOCO Δ and recovery of compensation

Date: 21 January 2015

Ekstabilitis company is the owner of trademark COCOCHOCO K No. 476718 registered among others in respect of goods in class 3 of the Nice Classification. The Internet site prof-keratin.ru offered for sale some hair repair products bearing the mark Cocochoco. Entrepreneur Mrs. Violeta B. Bakanina when selling the goods bearing the contentious trademark without proper legal grounds violated the exclusive rights of Ekstabilitis.

Ekstabilitis applied to the Moscow Arbitration Court with the claim against Mrs. Bakanina to ban the use of trademark No. 476718 as well as confusingly similar marks used in advertising in the promotion and sale of the goods and to recover compensation and legal costs from the defendant.

The Arbitration Court of Moscow with its decision dated 23.05.2014 partially upheld the claim. The Ninth Arbitration Court of Appeal with its ruling dated 01.09.2014 upheld the decision of the Arbitration Court of Moscow of 23.05.2014 and dismissed the appeal.

Failing to agree with the judicial acts Ekstabilitis filed a cassation complaint.

On January 14, 2015 the Court of Intellectual Property Rights considered the appeal of Ekstabilitis and resolved:
- to dismiss the decision of the Arbitration Court of Moscow on 23.05.2014 in case No. A40-1641/2014 and the resolution of the Ninth Arbitration Court of Appeal of 01.09.2014 in the same case in respect of recovery of attorney fees;
- to remand case No. A40-1641/2014 concerning the above part for a new trial with the Moscow Arbitration Court.

According to clause 4 of Article 1515 of the Civil Code, a holder is entitled to demand compensation at his own option from the infringer instead of recovery of losses at the rate: 1) ranging from ten thousand to five million rubles determined at the discretion of the court based on the nature of the violation; 2) at twice the value of the goods illegally bearing the trademark, or at twice the value of the right to use the trademark determined on the basis of the price which under comparable circumstances is usually charged for the legitimate use of a trademark.

Thank You!