Successful Representation of Siemens Medical Solutions (USA) in Dispute over Non-use of Third Party’s Trade Mark

Client Siemens Medical Solutions (USA)

Description

The client (Siemens Medical Solutions USA, Inc. (USA; subsidiary of Siemens AG (Germany)) is the right holder of the exclusive rights to the trade mark comprising the key designation BIOGRAPH, which is used for various medical imaging equipment (in X-ray radiography, tomography, ultrasound examinations, etc.). These client’s products are famous and used in leading scientific and medical institutions worldwide.

To sell this equipment in the Russian market, the client has had to obtain legal protection for its designation in Russia. The trade mark owned by the defendant (AMICO NPJSC) has been opposed to the client’s designation.

Solution

Within this case, the firm’s lawyers have proposed the most effective strategies for pre-trial and legal representation. In particular, negotiations have been held with the defendant for amicable settlement of the dispute by providing a letter of consent to register the client’s trade mark or by concluding an agreement for coexistence of trademarks. A study has been also conducted with regard to use of the defendant’s trademark in the Russian market to assess the prospects of a court case against the defendant’s trade mark.

The defendant has refused to settle the dispute amicably, for which reason the client has had no other choice but to file a claim with a court for early termination of the legal protection of the opposed trade mark to remove the impediment to registration of its trade mark.

Result

During the consideration of court case No. SIP-1035/2019 in the Intellectual Property Rights Court, the lawyers from Gorodissky & Partners have managed to prove that, despite the significant amount of evidence presented by the defendant, nearly all such evidence has had no evidentiary effect, since it has not met the standard of evidence applicable in non-use cancelation actions.

Only a few documents out of all evidence presented by the defendant have met the formal criteria. But even these documents could not be accepted by the court for consideration on the following grounds:

1. The evidence has confirmed commercialization of other goods but not of those, for which the trademark has been registered;
2. The designation used by the defendant has been substantially different from the trademark registered with Rospatent; accordingly, the defendant has used its trademark with significant changes, which has not allowed the court to recognize such use as appropriate.

As a result, the court has satisfied the claims and terminated the legal protection of the defendant’s trademark in relation to the goods, which have impeded registration of the claimant’s trademark. The decision delivered by the court of first instance has been confirmed by the court of cassation, namely the Presidium of the Intellectual Property Rights Court.

The said court decision has allowed the client to obtain legal protection for its trademark in Russia, having removed the impediment in the form of the defendant’s trademark