Legal support for a major Russian Internet service offering action searches in the process of trademarks registration

Our client, the owner of an Internet service – a leading Russian web resource for events promotion – retained Kachkin & Partners with a request for legal support in the procedure for registering several trademarks in Russia and abroad. In Russia trademarks’ registration had been complicated by what Rospatent had perceived to be the presence of a number of similar identifiers on the part of an outside copyright-holder, giving rise to the risk of registration refusal.

With the aim of registering the client’s trademarks the firm’s attorneys drafted substantiated objections for Rospatent in terms of the possibility of trademarks’ registration and lack of confusion risk.

What’s more, our team formulated and filed an independent application for the exact same identifier with respect to a narrower field of goods-and-services classes so as to enable the client to gain the added benefit of relying on the heterogeneity of goods and services between its identifier and that of the opposing trademarks.

The chosen arrangement for working with Rospatent made it possible to reach a decision in favor of registering the desired identifier, which among other things was analogous to the domain name and thereby provided cover for other domains in terms of protection against the client’s unscrupulous competitors and unsanctioned cybersquatting.

As a result the client obtained a registration certificate for the concerned trademark – kudago. Furthermore, with the aim of ensuring comprehensive protection for the rights of the Internet service in different countries around the world an application was filed for registration of the international trademark using the Madrid System. As a result the trademark was registered in the USA, European Union and Great Britain.

Kirill Saskov

Head of Corporate and Dispute Resolution Practice

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