Case No. СИП-180/2022: successful representation of the Client's interests in a dispute with Rospatent

Client Dermophisiologique S.R.L. SB (Italy)

Description

During trademark prosection, Dermophisiologique S.R.L. SB (Italy), manufacturer of cosmetic products, became aware that its distributor MedUspekh LLC had registered a trademark under certificate No. 652806, which was identical to its international trademark No. 992106. The registration of the distributor's trademark was made on the basis of the consent letter, which the principal did not issue.

The client was unable to resolve this matter in the pre-trial order.

Solution

In close cooperation with the Client, the lawyers of Gorodissky & Partners examined the facts of the case and developed the strategy to enforce the client’s rights.. Based on the data received, an opposition against trademark No. 652806 was prepared and filed with Rospatent.

Result

Rospatent refused to satisfy the opposition, referring to the letter of consent provided, as well as to the lack of authority to examine its authenticity.

The firm's lawyers appealed Rospatent's decision to the Intellectual Property Court.

During the court hearings, the firm's specialists provided facts evidencing falsification of the consent letter, which were confirmed by the forensic expert examination assigned by the court.

As a result of trying the case, the Intellectual Property Court decided to invalidate the decision of Rospatent and oblige it to make an entry on cancelation of trademark #652806 in the trademark register.

The court of cassation upheld the decision of the trial court.

Thus, the specialists of Gorodissky & Partners successfully represented the Client's interests in court instances, as a result of which trademark No. 652806 was cancelled. The illegally registered trademark could mislead consumers and cause significant damage to the Client’s intellectual property and business reputation.