A team led by Denis Khabarov has successfully wrapped up a series of disputes for SKAD Metal Fabrication Plant LLC (RUSAL group of companies).
Rospatent had rejected the registration of several trademarks filed by SKAD Metal Fabrication Plant, justifying its decision both by the absence of the marks’ distinguishing capacity, and the existence of senior confusingly similar trademarks owned by other manufacturers. Attempts to reverse the decisions had been unsuccessful, despite the results of a consumer sociological study carried out at the initiative of SKAD showing that the marks had acquired substantial distinguishing capacity.
Our team coordinated an additional sociological study that helped strengthen the client’s position, and gathered an extended set of evidence confirming the long-term and intensive use by SKAD Metal Fabrication Plant of the disputed marks. In parallel, work was conducted to eliminate the senior, opposing marks owned by other parties, which required that the client revise the scope of trademark protection sought and file a claim with the Intellectual Property Court. Furthermore, after the claim was filed, a complicated negotiation process began with the rights holder of the conflicting mark. The process ended successfully with an amicable agreement and the grant of irrevocable, written consent to SKAD for the registration and use of its trademarks.
The final decisions were taken by the Chamber for Patent Disputes, which hearings were repeatedly postponed due to the complex nature of this project. Our team had to expend maximum effort in order to successfully manage different proceedings with different procedural deadlines, while simultaneously being engaged in the negotiation process.
After reviewing the disputes, Rospatent took decisions in favor of the client for each of the marks under consideration. Despite Rospatent’s initial position that the trademarks in question did not meet the required criteria for protection, SKAD was granted legal protection for them, having proved that, after many years of widespread use, the marks had become familiar to consumers and associated with the client’s products.
Attorneys who worked on the project include Denis Khabarov, Eugene Arievich, Pavel Gorokhov, Yuri Yakhin, Ekaterina Vypirailo and Galina Grishanova.