BGP Litigation Lawyers Successfully Defend Kislorod Publishing House Rights to Trade Marks in a Dispute with Rosman Publishing House

Lawyers of the BGP Litigation Intellectual Property and Technology Practice have managed to have the legal protection preserved for «Publishing House «Kislorod» trade marks in a dispute with the Publishing House Rosman.

The «Publishing House «Kislorod» has engaged in publishing under the Kislorod designation since 2000. The designation was registered as a commercial name and a series of trade marks. In 2022, Rosman launched an imprint publishing house under the same name—Kislorod. The «Publishing House «Kislorod» deemed this an infringement of its exclusive rights and filed a claim with the commercial court.

In response, Rosman initiated two parallel proceedings: it filed an application with the Intellectual Property Court for «Publishing House «Kislorod»'s actions to be recognised as unfair competition and lodged defences with the Chamber for Patent Disputes against the legal protection of the series of trade marks. All Rosman's claims were dismissed.

Before the Chamber for Patent Disputes, Rosman asserted it had acquired rights to the «Kislorod» trade name and that the registration of the «Publishing House «Kislorod» trade marks was misleading for consumers.

BGP Litigation lawyers argued that Rosman had failed to prove its rights to the trade name, including the existence of an enterprise using the given name, as well as awareness of the trade name on a specific territory. In addition, the lawyers substantiated that priority would in any case belong to the means of individualisation of the «Publishing House «Kislorod», which had been using it continuously since 2000, while Rosman only started using it in 2022.

The Federal Service for Intellectual Property (Rospatent) upheld the legal protection of the «Publishing House «Kislorod» trade marks, finding that there were no signs of consumers being misled by «Publishing House «Kislorod»'s actions and that Rosman had not proven its rights to the trade name.

Previously, the Intellectual Property Court also dismissed Rosman's claim for «Publishing House «Kislorod»'s actions to be recognised as unfair competition.

The BGP Litigation Intellectual Property and Technology Practice team representing the client before the Chamber for Patent Disputes consisted of attorneys Anastasia Dudko, Denis Volkov and Anastasia Snopkova.