The Arbitration Court of Moscow has temporarily suspended proceedings on the case of violation of rights conducted between VK and Parity Elevator. The reason for the proceedings is the word “balda”.
What happened?
Some time ago, the company “Parity Elevator” filed a lawsuit against VK and My.Games. She accused them of illegally using the trademark “Balda” in gaming products posted on minigames.mail.ru and games.mail.ru .
In the statement of claim, “Parity Elevator” demanded to prohibit companies from using this trademark. She also demanded to pay her compensation in the amount of 500 thousand rubles.
The fact is that officially the trademark “Balda” in relation to gaming programs is really assigned to the “Parity Elevator”. Moreover, it was registered more than four years ago — in August 2018.
Then why was the case suspended?
VK and My.Games predictably disagreed with the lawsuit. A simple disagreement would hardly have played any role in court, if not for one fundamental nuance.
Apparently, immediately after receiving the claim, VK appealed to Rospatent with objections to the issuance of the “Parity Elevator” trademark.
The court considered that while there is no decision from Rospatent regarding VK’s appeal, there is no possibility to pass a verdict on the case.
Prior to the issuance of this decision, the proceedings were suspended.
What do lawyers think about the case?
To assess the situation, we asked Maria Aronikova, a partner at Semenov &Pevzner, to answer a few questions.
How common are such proceedings in Russia?
Maria AronikovaMaria: There is nothing unusual in such disputes.
Quite often it turns out that this or that designation, which we could consider descriptive and unprotected, is nevertheless registered as a trademark.
Is this case patent trolling?
Maria: Probably not. The Balda trademark No. 668014 is protected for wide categories of goods and services. At one time, the applicant convinced the Rospatent examination that the designation could be granted protection, and it did not fall under the grounds for refusal. According to the open register of applications, we see that there was correspondence during the examination. Most likely, we are talking about the preliminary objections of the examination and the successful, convincing response of the applicant (or his attorney), which allowed to obtain registration.
What decision is likely to be made by Rospatent?
Maria: If VK can prove at a meeting of the Board of the Chamber for Patent Disputes on December 8 that the trademark “Balda” does not have a distinctive ability for computer games, then Rospatent may decide to invalidate the registration. Such arguments require quite careful preparation, but it is not impossible.
How to protect yourself from such situations in Russia?
Maria: Check the designations that we use to identify goods and services. The assessment of the protectability is quite subjective, and it is quite possible that the designation, which we consider unregistered, exists as a trademark in the Registry. Verification can be done both independently and with the help of a professional patent attorney.