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Russian Baby Food Producer Successful in Revocation Action

On November 25, 2015 the Court for Intellectual Property Rights of the Russian Federation (the Court) revoked upon the claim by the Russian baby food producer OJSC «Baby Food Istra-Nutricia», part of «Danone» group, the Russian trade mark «Miracle-Baby»/«Чудо-Малютка» for classes 05 and 29, registered in the name of the Business Association of Veterans of Afghanistan “Mir”.

On the grounds of its ownership of the Russian national trade mark “Mолютка”, which from Russian means “Baby”, OJSC «Baby Food Istra-Nutricia» initiated a revocation action against the national trade mark «Чудо-Малютка», which in Russian means “Miracle-Baby”, on the grounds that the trade marks are registered for the same classes 05 (diet substances adapted for medical purposes, baby food) and 29 (dairy products, milk, milk beverages with a predominance of milk, whey, cream, whipped cream, yogurt, kefir) whereby the latter was not used for a consecutive period of three years from the date of its registration.

In its decision the court considered that a trade mark owner has the exclusive right to use his trade mark. A trade mark’s use is considered as valid if it is used by the trade mark owner himself or a licensor, or a third party who uses the trade mark under the control of the trade mark owner.

Additionally, the court accepted that a revocation action can be filed by an interested party only where a trade mark has not been used for a consecutive period of three years following its registration and where no use has occurred prior to filing the revocation action. Interested parties are defined as third parties who offer similar and/or identical goods and/or services and who have real intention to use the trade mark in their commercial activity and have done preparatory actions for such use, particularly by filing an application for the registration of a similar and/or identical trade mark. The onus for proof of use is on the trade mark owner.

In applying the above legal requirements to the facts of the case, the court stated that OJSC «Baby Food Istra-Nutricia» is a producer of baby food under the registered trade mark “Mолютка” for goods that are identical to the trade mark owned by “Mir” - «Miracle-Baby»/«Чудо-Малютка». On these grounds the court held that likelihood of confusion may occur on behalf of the consumers. Furthermore, the court considered the absence of objections by “Mir” against the revocation action and their absence at the court hearing as admitting non-use. These facts along with the absence of any proof of use led the court to decide to revoke the trade mark «Miracle-Baby»/«Чудо-Малютка». The decision could be appealed within two months before the presidium of the Court for Intellectual Property.

Author: Dr. Maria Schlueter
Source: ConsultantPlus - Legal News Portal
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