By the decision of the Intellectual Property Rights Court dd. 20.02.2025 in case No. СИП-1335/2023, trademark No. 652011 "TECHNONICOL" was recognized as well-known within the territory of the Russian Federation from January 1, 2022.
In 2022, TechnoNIKOL JSC applied to Rospatent (Federal Service for Intellectual Property, Patents and Trademarks) with an application on recognition of the trademark as well-known. Rospatent refused to recognize it, since it considered that products of the client produced by the different companies within the same holding, are not considered by the customers as originating from the same source.
The specified decision of Rospatent was challenged in the Intellectual Property Rights Court, which, at the first round of consideration of the case, sent the application for a new consideration again to Rospatent. TechnoNIKOL JSC did not agree with this decision, since, taking into account the principle of procedural economy, the case can be considered on the merits in court, but not in Rospatent. Therefore, the Presidium of the Intellectual Property Rights Court sent the case for a new consideration to the court with the following arguments:
“In addition, the Presidium of the Intellectual Property Rights Court believes that it is possible to agree with the argument of the cassation appeal of the company that it is advisable to take into account the principle of procedural economy. Analysis of the judicial practice of the Intellectual Property Rights Court often confirms the futility of sending an application for recognition of a trademark as a well-known for a new consideration to Rospatent, since the relevant application may be properly considered only in court, where the documents are assessed on the basis of merit and a conclusion is made on the availability or absence of grounds for recognizing the designation as a well-known trademark” (Resolution of the Presidium of the Intellectual Property Rights Court dd. 07.10.2024 in case No. СИП-1335/2023).
During the new consideration, the Intellectual Property Rights Court satisfied itself of the existence of corporate ties within the TechnoNIKOL Group of Companies and, taking into account provided evidences, recognized the trademark as well-known:
“Taking into account the specific circumstances and the establishment of all the necessary legally significant circumstances in the case, the panel of judges has come to the conclusion to invalidate the contested decision of Rospatent as not complying with the norm of Article 1508 of the Civil Code of the Russian Federation, on recognition of the trademark under the Certificate of the Russian Federation No. 652011 as a well-known from 01.01.2022 in relation to the requested goods and to impose on Rospatent the obligation to include the disputed trademark in the Register of well-known trademarks in the Russian Federation as a well-known trademark” (Decision of the Intellectual Property Rights Court dd. 20.02.2025 in case No. СИП-1335/2023).
