As is well known, the right to use TK is an important business asset in the company's activities. However, in some cases, such an appeal to the court is nothing more than a way to combat abuse of the right. We are talking about a situation where the means of individualization has not been used by the copyright holder for more than three years (Article 1486 of the Civil Code of the Russian Federation), while other business entities cannot register the same TK or another, but very similar to it.
The “Procter & Gamble” Company will have to prove its interest in early termination of protection of Scalp Expert regarding cosmetics. L'Oreal will now have to prove in court that the use of TK in Russia has nevertheless been carried out. If the plaintiff cannot prove the interest or the defendant cannot prove the fact of use, the case could fall apart.
In such cases “Rospatent” is also involved as a third party as a rule, although the registrar does not state independent claims. Tracking the question of which trademarks are used and which are not is not the responsibility of the Federal Service for Intellectual Property Rights. This role is always taken by those who make a claim in court.
A preliminary hearing related to the case (SIP-1076/2019) is scheduled for 3.02.2020. Whether the American company will be able to “take away” the right from the French cosmetic brand in order to subsequently register the trademark for itself is not clear yet. Difficulty for the representatives of “Procter & Gamble” may be any document that proves the fact of fair use by the copyright holder (L'Oreal) Scalp Expert for the individualization of products in the category of goods of 3 classes of ICGS. Moreover, these can be both evidence of trade transactions in relation to products, identified by this trademark and, for example advertising of such products in Russia.
This case is also curious by what kind of evidence the parties will present. In particular, it may turn out that the non-use of the Scalp Expert trademark did occur, but occurred due to circumstances beyond the control of “L'Oreal”. In general, as the court considers the case, the picture will become more complete.