Imitation of a maliciously registered trademark, which may mislead about the origin of the goods, is a fact of unfair competition in accordance with the Paris Convention (1867).
The company "P" (P). filed a lawsuit with the court against the company "C", Dosh LLP (hereinafter referred to as the Partnership), the Ministry of Justice of the Republic of Kazakhstan (hereinafter referred to as the Ministry) to recognize the release into civil circulation of the packaging of noodles "D" as a fact of unfair competition, invalidation and cancellation registration of the trademark "D", recognition of the conclusion of exclusive license agreements as illegal and their invalidation and cancellation, and the obligation on the defendants to eliminate violations of the law. By the decision of the specialized inter-district Economic Court of Astana dated February 9, 2016, the claims of the Company "P" (P) were partially satisfied: - the registration of trademarks "D" was declared invalid and cancelled according to certificates No. 15577 dated September 3, 2003 in respect of goods and services of classes 29 and 30 of the Moscow Technical Technical University, No. 37560 dated January 27 2012 in respect of goods and services of the 30th class of the MCTU, No. 44493 dated April 17, 2014 in respect of goods and services of the 29th, 30th and 35th classes of the MCTU- The license agreement dated November 12, 2013 (registration No. 04-2014024/12-22 dated January 24, 2014) for the use of the trademark "D" according to certificates of the Republic of Kazakhstan No. 15577, 37560, and the additional agreement to it No. 1 dated August 21, 2014 (registration No. 04-2014498/20-22 dated December 2, 2014) were declared invalid.), concluded between company "C" and Dosh LLP; - The Ministry is charged with the duty to eliminate violations of the rights and legitimate interests of company "P" (P). The rest of the claims are denied.
By the resolution of the Judicial Board for Civil Cases of the Astana City Court dated June 01, 2016, the court's decision was changed, regarding the satisfaction of the claims of the company "P" (P), a new decision was made to dismiss the claim. The Judicial Board for Civil Cases of the Supreme Court overturned the decision of the appellate instance regarding the refusal to satisfy the claim of the company "P" (R) for invalidation and cancellation of registration of trademarks "D" according to certificates No. 15577 dated September 3, 2003 in respect of goods and services of classes 29 and 30 of the Moscow State Technical University, No. 37560 dated January 27. 2012 in respect of goods and services of the 30th class of the MCTU, No. 44493 dated April 17, 2014 in respect of goods and services of the 29th, 30th and 35th classes of the MCTU, on invalidation of the license agreement dated November 12, 2013 for the use of the trademark "D" according to certificates of the Republic of Kazakhstan No. 15577, 37560 and additional agreement No. 1 dated August 21, 2014, concluded between the company "C" and Dosh LLP, on assignment of duties to the State Institution "Ministry of Justice of the Republic of Kazakhstan" eliminate violations of the rights and legitimate interests of the company "P" (R), upholding the decision of the court of first instance. Regarding the claim of the company "P" (R), regarding the recognition of the release into civil circulation of the packaging of noodles "D" as a fact of unfair competition, a new decision was made to satisfy the claim.
The release of the "D" noodle packaging into civil circulation is recognized as a fact of unfair competition on the following grounds. The case materials established that the company "P" (R) is a company producing fast food products under the brand and packaging – noodles "DOS" and "DOS". The company began its noodle production activities in 1984 under the name Korea Yakult Corporation, followed by its transformation into "P" (R) with the distribution of products in Russia, the USA, Canada, Australia, Japan, China, Germany and other countries of the world. In the Republic of Kazakhstan, instant noodles "D" produced by the company "P" has been distributed since 2000 from the Russian Federation through official distributors: TD "Ulan", LLP "P", LLP "A". The applicant is the owner of the trademarks "DOS" according to the certificate of the Republic of Kazakhstan No. 22126 with priority dated May 3, 2005, "DOS according to the certificate of the Republic of Kazakhstan No. 32768 with priority dated February 19, 2009. Since February 1, 2014, the production of Dosh noodles under the "D" sign and under the "D" brand began in the territory of the Republic of Kazakhstan on the basis of a license agreement dated November 12, 2013 (registration No. 04-2014024/12-22 dated January 24, 2014) for the use of the "D" trademark according to ROK certificates No. 15577, 37560 and its supplementary agreement No. 1 dated August 21, 2014 (registration No. 04-2014498/20-22 dated December 02, 2014), concluded between the Company "C" and Dosh LLP, duly registered with the authorized body. Previously, trademark "D" according to the certificate No. 15577 with priority dated May 02, 2002 was registered for LLP "N". On August 17, 2005, a change was made to the State Register, according to which the name of the trademark owner was changed to LLP "F" according to certificate No. 15577, and on September 23, 2005, the exclusive right to trademark "D" was transferred to PC "F". Further, on October 30, 2009, the exclusive right to the trademark was transferred to the Company "C". Trademarks "D" according to the certificate No. 37560 with priority dated December 27, 2010 and according to the certificate No. 44493 with priority dated June 19, 2013 were registered with the company "C". The Court of First instance concluded that there had been a violation of subparagraph 1) of paragraph 3 of Article 6 of the Law of the Republic of Kazakhstan "On Trademarks, Service Marks and Appellations of Origin", Article 10 of the Paris Convention, when registering trademarks "D" according to the disputed certificates, since these trademarks are capable of causing the consumer to associate with the plaintiff as the manufacturer of the product "instant noodles "D", the mixing of associations of "D" with the defendant's company "Dosh" LLP, the similarity to the degree of confusion of the packaging labels of the plaintiff and the defendants, in this regard, the consumer may be misled about the nature, method and place of production, consumer properties, quality of the product, as well as about its manufacturers.
The Court of appeal, changing the decision of the court of first instance, concluded that the plaintiff has the right to use combined trademarks in the Republic of Kazakhstan, in the form in which they are registered in relation to protected goods: the combined trademark "DOS" for instant noodles and the combined trademark "D" for various a type of beverage, since the trademarks of the two companies are in relation to goods of class 30 MCTU, including instant noodles, namely, the trademark "DOS" and the trademark "D" differ and are not confusingly similar, capable of misleading the consumer about the product or its manufacturer). These conclusions of the court of appeal do not correspond to the circumstances of the case and contradict the norms of substantive law. According to Article 178 of the Business Code of the Republic of Kazakhstan, the unlawful use of means of individualization of goods, works, services, as well as copyright objects is the illegal use of someone else's trademark, service mark, trade name, place of origin or similar designations for similar goods or the use of literary names without the permission of the copyright holder or an authorized person. artistic works, periodicals, or the use of packaging in the form of, which may mislead the consumer regarding the nature, method and place of production, consumer properties, quality and quantity of the product or in relation to its manufacturers. In accordance with subparagraph 4) paragraph 2 of Article 6 of the Law "On Copyright and Related Rights" copyright applies to both published (published, published, published, publicly performed, publicly shown) and unpublished works existing in any objective form.: 4) images (drawing, sketch, painting, plan, drawing, movie, TV, video, or photo frame, etc.).
Attention!
Law and Law Law Law draws your attention to the fact that this document is basic and does not always meet the requirements of a particular situation. Our lawyers are ready to assist you in legal advice, drawing up any legal document suitable for your situation.
For more information, please contact a Lawyer / Attorney by phone: +7 (708) 971-78-58; +7 (700) 978 5755, +7 (700) 978 5085.
Attorney at Law Almaty Lawyer Legal Services Legal Advice Civil Criminal Administrative Cases Disputes Protection Arbitration Law Firm Kazakhstan Law Office Court Cases
