Tsaritsino Etalon LLC brought a legal action against LMPZ CJSC and Ruzkom LLC, claiming compensation equal to a double price of products, namely RUB 1,038,315,199 for infringement of rights to the trademark “SULTANSKAYA”.
PATENTUS as defense lawyers proved that the use of the trademark was lawful as the defendants had been using the trademark even before its official registration. Moreover, the disputed trademark has been used by many companies in the market, which has gone unpunished for 8years, while Tsaritsino Etalon LLC filed the claim just in 2021. The court also pointed out that if the companies had entered into a license agreement, the license fees due from the defendants would have been just over RUB 5,000,000, which is the proved value of the trademark use right.
A defendant requesting reduction of compensation claimed may use any evidence to show inadequacy of compensation and actual consequences of the infringement. In this matter, the trial court set the minimum value of the trademark in the amount of RUB 5,000,000, below which compensation cannot be reduced. The IP court confirmed the legitimacy of such reduction.
The matter sets a precedent, as previously there has not been a single case of reducing compensation claimed in the amount of a double price of products to an amount below their normal price. Now, courts may reduce such compensation at their discretion, taking into account certain circumstances and proved value of the trademark use right.
