The IP team of Capital Legal Services successfully protected interests of its client, a major European company manufacturing roof windows, against whom a windows manufacturer from Voronezh filed a lawsuit citing unlawful use of its trademark in Russia.

In 2015, the Voronezh company manufacturing windows filed a lawsuit against the client of Capital Legal Services being a large European company manufacturing roof windows. The plaintiff asserted the client unlawfully used the plaintiff’s trademark in the Russian Federation (by indicating its verbal element on the web site and in catalogs) and requested substantial compensation.

The associates of Capital Legal Services, headed by Elena Berger, won the case in the first instance and court of appeal, but the Intellectual Property Court (hereinafter the “IP Court”) sent it back for a retrial.

Following the repeat examination of the case, the courts did impose a compensation, as the IP Court specified that the defendant’s actions violated the plaintiff’s rights. However, the court of first instance and court of appeal substantially reduced the amount of compensation requested by the plaintiff, as the evidence it provided for purposes of justifying the amount did not convince the judges.

The plaintiff was not satisfied with the decision made and filed a second claim with the IP Court requesting to recover the compensation in full and to cancel the decision on its reduction. This time, the situation was against the CLS client. The case is that two days prior to expiration of the timeframes for filing the cassation appeal, the Supreme Court adopted a precedent decision allowing to reduce compensation requested for violation of the rights to a trademark only in exclusive events. At first glance, the case seemed lost for the client.

However, the IP practice team developed the legal position which allowed to disprove the arguments of the cassation appeal and avoid recovery of compensation from the client in the scope requested by the plaintiff. The IP court left the decisions on reducing the compensation in force. The decision adopted fully satisfied the client’s interests.

The case that was in litigation for about two years and underwent two rounds of examination was finally resolved. A new round can occur if the plaintiff files an appeal with the Supreme Court. However, the associates of Capital Legal Services are ready to respond to it as well.

The Intellectual Property practice of Capital Legal Services ensures comprehensive legal support for companies of all industries in the course of creating new intellectual property, introducing existing brands to the Russian market, their protection against parallel import and counterfeit, as well as in disputable situations requiring pretrial settlement or representation of the rightholder’s interests before the Chamber for Patent Disputes, court, etc. The practice was noted by Legal 500, Chambers & Partners and Pravo – 300.