ELLE Trademark Defended in Russia

In March 2014, Russia’s Intellectual Property Court invalidated the Russian Chamber of Patent Disputes’ decisions and cancelled the trademarks ELLE and ELLESTUDIO, registered in Class 34 on behalf of the UK-based Innovation Tobacco Company.

The trademarks had been assigned from Richmond Tobacco Products, British-Russian tobacco holding, in April 2013.

The cancellation actions were filed by the French magazine publisher Hachette Filipacchi Presse, the owner of the trademark ELLE in Class 16 (Russian reg. No. 83647), who argued that the Russian PTO had registered the disputed trademarks in violation of Article 10bis of the Paris Convention. The claimant submitted the evidence of use of the trademark in Russia on magazines and printed materials since 1988.

The claimant also argued that the use of the ELLE and ELLESTUDIO marks creates consumer confusion, as the Russian consumers are well aware of the ELLE trademark, and submitted the results of the public opinion poll confirming this argument.

The IP Court ruled that the Innovation Tobacco Company’s act could qualify as an act of unfair competition and as an intention to mislead the consumers as to the producer of the goods. The IP Court noted that such unfair registrations are likely to harm the goodwill of the claimant and cause dilution of the distinctive quality and the advertising value of the trademark.

By: Tatyana Kulikova

For more information, please contact Tatyana Kulikova at our Russia office.