Dmitry Uryakin told DP whether the paint and varnish manufacturer has a chance to protect its brand from a patent troll

The Intellectual Property Court has accepted a lawsuit filed by Azamat Ibatullin, an individual entrepreneur from Ufa, requesting the early termination of protection of the “Prospect” trademark in two classes of the International Classification of Goods and Services – class 35 (sale of goods through intermediaries) and class 42 (sale of goods). The reason is the non-use of this brand by the St Petersburg-based Holding Compamy Pigment LLC, which produces paint and varnish products.

According to Kontur.Focus service, 519 trademarks are registered for Ibatullin, whose main activity is retail trade. To date, the Ufa merchant has initiated more than a thousand arbitration disputes for RUB 1.2 bn, he has won in full or in part 240 processes for RUB 79 mn roubles.

Dmitry Uryakin, Senior Associate, Head of General Business Law Practice at Maxima Legal, drew the attention of Delovoy Peterburg newspaper to the fact that in fact Azamat Ibatullin’s activities even the Intellectual Property Court characterised in its magazine as patent trolling.

According to the expert, the Ufa entrepreneur, in order to win, needs to convince the court of his intention to use a designation similar to the brand of Holding Compamy Pigment LLC in relation to goods and services homogeneous with those for which the disputed trademark is registered. “If Holding Compamy Pigment LLC can actually prove that it sells this paint itself and with the help of its intermediaries, the chances of the company to retain the mark for itself seem high,” Dmitry said.

To read the full article (in Russian), please, see Delovoy Peterburg newspaper`s website >>>