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Trademark Disputes

Trademark Disputes



Trademark disputes can be divided into different types, the most common of which are:
  • violation of the exclusive right to the trademark;
  • early termination of legal protection of the trademark due to its non-use;
  • challenging the decisions of Rospatent, including decisions of the agency on registration or refusal to register the trademark.
In addition, typical cases include disputes over contracts on alienation and licensing contracts for trademarks, and holding entities accountable for illegal use of the trademark.

Most of these disputes involve a judicial procedure, however, when challenging the decisions of Rospatent, it is required to go through the administrative stage. To successfully resolve a dispute, it is necessary to be aware of the procedure of its consideration, the composition of the parties to the dispute, the distribution of the burden of proof and other aspects.

For whom

For whom

Many of the participants in these disputes may require the support of trademark lawyers. Our main clients are those:
  • whose trademark rights are allegedly infringed by third parties;
  • who have received the claim / statement of claim on violation of rights to a third party's trademark;
  • who have received a refusal to register the trademark from Rospatent and wish to challenge it;
  • who have received an objection to the granting of legal protection to the trademark;
  • who are interested having the registration of someone else's trademark recognized as illegal;
  • who are interested in having the legal protection of someone else's trademark terminated due to non-use;
  • who have received a pre-trial appeal / statement of claim for early termination of legal protection of the trademark due to non-use. 


One of the leading researchers in trademark law, Barton Beebe, calls this area the most complex and intellectual in all of intellectual property law*. However, this is also one of the most fascinating areas of law in which we have the pleasure to work in and improve. Below we’ll describe in more detail the most typical trademark cases in our practice.

Trademark infringement disputes. In case of use by a third party:
  1. designations which are identical to the trademark for the goods and/or services for which the mark is registered, or
  2. designations which are identical or similar to the trademark in relation to similar or similar goods and/or services, if as a result of such use there is a likelihood of confusion, or
  3. designations which are identical or similar to a well-known trademark in relation to any goods and/or services
The copyright holder has the right to apply to such a person with a claim / statement of claim with various requirements (to terminate the use of the trademark, to pay monetary compensation, etc.).

Our team carefully analyzes each situation, develops a strategy for protecting the violated right or defending against the claims made, helps with the preparation of evidence, draws up claims and answers to them, and also prepares procedural documents and participates in negotiations and litigation.

Disputes about the legal protection of the trademark. Application for registration of the trademark passes two inspections, formal and substantive inspections . Rospatent experts check the compliance of the designation with the requirements of the law and, in the absence of reasons for refusal, make a decision on registration. As for the decision to refuse registration, it can be challenged.

After registering the trademark, the interested person can file an objection to Rospatent with the requirement to recognize the registration as illegal (for example, if the expert did not identify third parties that prevent registration).

Our company provides services for challenging refusals to register trademarks, preparing objections and responses to objections to the granting of legal protection to the trademark and representing interests in meetings at Rospatent in the course of a mandatory administrative procedure and then in court.

Early termination of legal protection of the trademark due to non-use. The copyright holder is obliged to use the trademark that is registered in his name. If within three years the trademark is not used (or is used with significant changes), the interested person has the right to apply for an early termination of the legal protection of such the trademark. Before filing a claim, pre-trial procedure must be followed.

Termination of legal protection of unused trademarks of third parties may be necessary to remove obstacles when registering a new trademark. Early termination can also be part of a strategy to protect the exclusive rights of means of individualization.

We prepare pre-trial appeals and responses to trademark rightholders, statements of claim and other court documents, and represent clients in negotiations and litigation.

* Beebe, B. (2005). Search and Persuasion in Trademark Law. Michigan Law Review, 103(8).

News and publications
WIPO Discussion on Artificial Intelligence
On July 7–9, 2020, the second round of the World Intellectual Property Organization Discussion on the Role of Artificial Intelligence in Determining Intellectual Property Policy was held.
Tobacco Company Trademark Infringement Dispute
Svetlana Uskova gave comments to Delovoy Peterburg on the dispute between two tobacco companies — Petro LLC (St. Petersburg) and Samarin LLC (Moscow).
Use of geographic names in the registration of trademarks
By the Resolution of the Presidium of the Court for Intellectual Property Rights (SIP) dated 12.09.2019 No.SP-21/31, a Review on SIP practice on issues related to the use of geographical names in the registration of trademarks was taken into account.