Successful Representation of the Client's Interests in a Dispute about the Non-Use of a Series of Trademarks

Client FUJITSU GENERAL LTD. (Japan)

Description

The FUJITSU GENERAL LIMITED is the owner of exclusive rights to the trademarks, which include the main word element "GENERAL" (a series of trademarks), well known to consumers in relation to air conditioners and climate control equipment around the world.

A third party, who believed that the client's trademarks were not used in Russia, both in relation to the client's direct business and related / similar goods / services, submitted applications for the early termination of their legal protection due to non-use.

Solution

Within the framework of this case, the lawyers of Gorodissky & Partners law firm proposed and practically implemented the most effective strategy for judicial protection of the client's individualization means. In particular, as a result of the collected and presented pieces of evidence, the IP Court confirmed that:

• a foreign entity FUJITSU GENERAL LIMITED, using the GENERAL brand, has been operating in the Russian market since 1995;
• the defendant's products marked with disputed trademarks are actively advertised and promoted on the product market, including in the Russian Federation;
• during the specified period, the defendant's products gained wide popularity among consumers of air conditioners / split systems, and the challenged trademarks that individualize them - a high distinctiveness.

The widespread popularity of the defendant's products was also confirmed by the response of the Federal Customs Service of the Russian Federation about a significant volume of supply of air conditioners to the Russian market for more than 10 years.

Result

During the consideration of court cases No. SIP-3/2019, SIP-365/2019, SIP-366/2019 in the IP Court, the lawyers of Gorodissky & Partners were able to prove the fact that the challenged trademarks were widely known among consumers in relation to HVAC equipment, which allowed to maintain full legal protection of the trademarks. Accordingly, the non-use claims were dismissed by the IP Court in full.