Maxim Ali has commented on key recent trademark disputes for Pravo.ru

At the request of Pravo.ru, Maxima Legal, Head of Intellectual Property and Information Law Practice, Maxima Ali, spoke about some of the most notable recent trademark cases. According to Maxim, as the array of such cases accumulates, an increasingly interesting and diverse practice appears, which is sometimes no less important for lawyers to make the right decision than the norms of the Russian Civil Code.

Maxim discussed the challenge by the copyright holder of a cigarette trademark to Rospatent’s actions to provide legal protection which a competing company used to sell electronic cigarettes. The intellectual property court in this case took into account how the consumer buys the products, and did not assess the phonetic similarity of the signs (LD and LT), but limited itself to comparing their visual differences, which were more significant. “Since the contested LT mark is printed on electronic cigarettes sold in open cases (regular cigarettes are in closed cases), the court gave preference to differences,” explained Maxim.

Maxim also mentioned a legal dispute over which the CIP recognized the placement of a trademark in the site’s metadata as a search engine optimization tool and, therefore, was illegal. According to Maxim, the case is especially interesting against the background of the fact that the Supreme Court has so far been cautious in recognising such breaches. Maxim recalled that last year’s Plenum reflected the position that the use of the trademark in keywords is not a breach of an exclusive right, but under other conditions it can be recognised as unfair competition. “It is quite possible that the lack of a systematic approach to addressing such issues will lead to conflicting decisions in court practice, where some methods of promotion and advertising will be recognized as legal, while others will not,” Maxim emphasized.

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