PATENTUS is currently seeking recognition of the trademark of TechnoNIKOL JSC as well-known. Federal Service for Intellectual Property (Rospatent) had previously refused to recognize it; this decision was challenged in court and the application was sent back to Rospatent for review. PATENTUS legal team did not support this procedural approach and challenged the fact of sending the application for reconsideration in the Presidium, since the case can be considered in the court of first instance. The Presidium of the Intellectual Property Court agreed with this argument that in the process of judicial review of Rospatent's decisions, the court can independently evaluate documents on the single source of origin of goods and recognize the trademark as well-known.
"Moreover, the Presidium of the Intellectual Property Court believes it possible to support the argument of the company's cassation appeal that it is advisable to take into account the principle of procedural economy. An analysis of the judicial practice of the Intellectual Property Court often confirms the futility of sending an application for recognition of a trademark as well-known for reconsideration to Rospatent, since such an application is properly considered only in court, which assesses the documents on the merits and conclude on the presence or absence of grounds for recognizing the designation as a well-known trademark" (Resolution of the Presidium of the Intellectual Property Court dated 07.10.2024 in case No. SIP-1335/2023).
Comment by PATENTUS Lawyer Denis Kudryavtsev:
Long-term practice in recognizing trademarks as well-known has shown that, in principle, trademarks are more often recognized as well-known on the basis of a court decision, after repeated revision of Rospatent's refusals. This is due to the fact that Rospatent interprets the single source of origin of goods in a different manner (in case where different persons are applicants, manufacturers and sellers of goods, but belong to the same group of companies). The court of first instance in case No. SIP-1335/2023 sent the application back to Rospatent, while the Presidium concluded that a reconsideration by Rospatent would not yield anything new and returned the case to the court of first instance, which would significantly shorten the time for consideration of the issue on the merits.
