Successful protection of "WOODLAND" trademark as a result of a two-year dispute and four trials in Rospatent and the Intellectual Property Court

Project essence

The lawyers of PATENTUS, headed by Maria Meshcheryakova, restored the legal protection of the client's trademark.

Our client, a foreign manufacturer of clothing, shoes and accessories, is the holder of two WOODLAND word trademarks: the senior trademark with the priority dated 1995 was registered for the goods of Class 25 according to ICGS “shoes”, and the recent one with the priority dated 2017 was registered for the goods of Class 18 according to ICGS.

The third party, being the holder of the combined WOODLAND trademark with the priority dated 2015, registered also in respect of the goods of Class 18 of ICGS, filed an objection to the Chamber for Patent Disputes and, referring to the earlier priority of its trademark and identity of the goods of Class 18 of ICGS, claimed the cancellation of the late trademark of our client.

In order to defend the company's interests, our lawyers filed their own objection against the trademark of the Third party based on its confusing similarity with the early trademark of our client and identity of the product of Class 25 of ICGS “shoes” with the goods of Class 18 of ICGS.

Although the practice in the cases of identity is rare and contradictory, we succeeded in satisfying our objection resulting in cancellation of the trademark of the Third party in respect of a part of the goods. PATENTUS lawyers continued the battle, having filed two corresponding lawsuits to the Intellectual Property Court challenging the Rospatent decisions.

The court has fully satisfied our claims in the second case on our objection and cancelled the trademark of the Third party in respect of the remaining goods of Class 18 of ICGS. Based on this decision, the Court revoked the Rospatent decision to cancel our client's trademark, therefore the legal protection of the trademark was restored.