PATENTUS secured registration of Rat Dearth No. 1 trademark

Date: 17 November 2017

Dmitry Markanov defended the interests of its client, Ital Tiger LLC, in the Chamber for Patent Disputes by means of challenging the decision of the Russian Agency for Patents and Trademarks (Rospatent) on refusal to register the trademark under Application No. 2016701231 for Class 5 products under the International Classification of Goods and Services (ICGS).

On January 20, 2016, Ital Tiger LLC, a leading producer and seller of rodent control products, filed an application for registration of a designation for Class 5 products under ICGS.

On June 30, 2017, the state trademark registration was rejected, as the claimed designation was alleged to be a reproduction of the designation, for which Oborona LLC was the copyright owner, and which had been used by the latter since 2001. In the opinion of a Rospatent expert, the designation claimed for registration would mislead consumers about the product manufacturer, as associated with the activities of Oborona LLC, which would substitute a fact of unfair competition on the part of Ital Tiger LLC.

Ital Tiger LLC disagreed with the decision of Rospatent and applied to PATENTUS. Our lawyers built a substantial evidence base of documents proving the fact of an earlier use of the designation, active production, and large scope of supplies, advertising and promotion of the product bearing Rat Death No. 1 designation. By contrast, the opponent, Oborona LLC, did not submit any data related to production, period of sales or testing of Rat Death product or any similar products to the jury. Moreover, our lawyers proved Ital Tiger LLC to be the copyright owner for the designation (not Oborona LLC, as erroneously determined by Rospatent).

Based on the weight of evidence, the jury agreed with the contentions of PATENTUS experts that the disputed designation was generally known and highly distinctive, and there were no signs of unfair behaviour on the part of Ital Tiger LLC.

As a result of successful activities of PATENTUS lawyers, on November 17, 2017, the decision of Rospatent was successfully challenged, and the trademark under Application No. 2016701231 with a text element of RAT DEARTH No 1 was registered in respect of Class 5 products under ICGS.

Dmitry Markanov

Thank You!