The Russian Supreme Court Summarized the Practice on Assessment of Actions of Trademark Holders

On 15 November 2023 the Russian Supreme Court has published a review of court practice in cases involving the assessment of actions of trademark holders.

The review analyzes cases and circumstances in which the parties conduct is considered to be in bad faith or, on the other hand, in good faith.

Thus, when assessing the behaviour of the right holder for good faith, courts shall take into account the following:

  • purpose of acquiring the trademark;
  • real intention of the right holder to use it;
  • reasons for non-use.

At the same time, the use of a trademark based on a licence agreement should be found by the court if the right holder provides:

  • evidence of the licensee's sale of goods marked with the plaintiff's trademark, or
  • evidence of preparation for such sale.

The Russian Supreme Court also notes that the following actions shall be recognized as an abuse of right:

  • acquiring a trademark solely for the purpose of suing third parties;
  • registration of a trademark similar to a trademark previously owned by that right holder, which was canceled due to non-use;
  • challenging a third party’s trademark without intention to use the trademark.

However, bad faith behaviour of the trademark holder towards some parties does not mean that the right holder abuses its rights towards others.

The review also outlines the circumstances to be taken into account by the courts to classify the actions of right holders as unfair competition.