The Pepeliaev Group has successfully represented Kavminvody JSC in the Russian Intellectual Property Court in a trademark dispute with Krymservis LLC, which resulted in the invalidation of a similar trademark that was owned by a bad faith right holder.
Kavminvody JSC produces Novoterskaya Tselebnaya mineral water. A verbal trade mark that was essentially identical to the Kavminvody trademark was registered by Krymservis with Rospatent under a simplified procedure known as "the Crimean law" — without an expert review being conducted.
After the Republic of Crimea was assimilated with Russia in 2014, the rights to trademarks and patents certified in Ukraine at the time became eligible for “recognition” in Russia. According to the Pepeliaev Group, the simplified procedure was "misemployed and led to simultaneous application of the legal protection of two or more similar trademarks that label the same type of goods, but were owned by two separate legal entities."
However, the Pepeliaev Group reports, a statutory prohibition made it impossible to challenge the registration of the trademark owned by Krymservis. According to the firm, "to terminate a contested trademark was possible only with the proof of consumer confusion on the goods and their producers."
Kavminvody obtains and sells its Novoterskaya Tselebnaya mineral water both in Russia and abroad. According to a survey conducted by the Russian Public Opinion Research Center, consumers associated Novoterskaya Tselebnaya with Kavminvody. The Pepeliaev Group successfully persuaded the court to reject Krymservis's claims to the brand and terminate the legal protection of its trademark.
The Pepeliaev Group team consisted of lawyers Valentina Orlova and Yuri Yahin and paralegal Anton Pchelkin.