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Moscow Arbitrazh Court decision of 16.09.2015 (MAXIMUS)

CaseMAXIMUS trademark dispute — Арбитраж · 2015–2016
Date
Document typeCourt decision
InstanceFirst instance
CourtАрбитражный суд г. Москвы
Case no.А40-84478/2015
Pages5
SourceМатериалы дела
Added08.10.2026

This material has been redacted to protect personal data: names of all persons (except the surname Artsinovich), case and act numbers, signatures, seals and identifiers are hidden and cannot be recovered from the image or text.

Moscow Arbitrazh Court decision of 16.09.2015 (MAXIMUS) — Page 1

Text version

Unofficial translation.

Decision of the Arbitrazh Court of the City of Moscow of 16 September 2015, case No. A40-84478/15 (MAXIMUS trademark)

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[Document No. 51_11024345]

ARBITRAZH COURT OF THE CITY OF MOSCOW
115191, Moscow, Bolshaya Tulskaya Street 17 — http://www.msk.arbitr.ru

DECISION — In the Name of the Russian Federation

City of Moscow — Case No. A40-84478/15 — 16 September 2015

The operative part of the decision was announced on 9 September 2015. The decision was drawn up in full on 16 September 2015.

The Arbitrazh Court of the City of Moscow, composed of Judge O. V. Kozlenkova sitting alone, judge's code (51-667), with the record of the hearing kept by clerk K. A. Serskova, having examined in open court the case on the statement of claim of individual entrepreneur Maxim Anatolyevich Artsinovich (entrepreneur registration number 3147746104011561) against Dmitry Olegovich Pogozhev and the limited liability company "MAXI FON" (main state registration number 5137746238493) for the protection of exclusive rights to a trademark, third party — ZAO "RSITs",

with the participation of: for the claimant — K. S. Mityagin, by power of attorney without number of 13 February 2015, and E. A. Biyukov, by power of attorney without number of 14 August 2015; for the respondent D. O. Pogozhev — did not appear, notified; for the respondent OOO "MAXI FON" — T. V. Grigorieva, by power of attorney without number of 1 June 2015, and A. S. Mileshin, by power of attorney without number of 11 November 2015; for the third party ZAO "RSITs" — did not appear, notified;

HAS ESTABLISHED:

Individual entrepreneur Maxim Anatolyevich Artsinovich (hereinafter — the claimant) applied to the Arbitrazh Court of the City of Moscow with a statement of claim against Dmitry Olegovich Pogozhev for the protection of exclusive rights to a trademark.

OOO "MAXI FON" and ZAO "RSITs" were joined to the case as third parties not making independent claims in respect of the subject matter of the dispute.

By ruling of the Arbitrazh Court of the City of Moscow of 19 June 2015, at the claimant's request, OOO "MAXI FON" (hereinafter — the respondent) was joined to the case as a co-respondent.

At the hearing held on 9 September 2015 the claimant made, and the court accepted under Article 49 of the Arbitrazh Procedure Code of the Russian Federation (hereinafter — the APC RF), a clarification of the claims.

Under Article 49 of the APC RF the claimant also made an oral withdrawal of the claims brought against Dmitry Olegovich Pogozhev.

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The third party, ZAO "RSITs", duly notified of the time and place of the hearing, did not appear at the hearing.

Given the timely posting of information about the time and place of the hearing on the official website of the arbitrazh court on the Internet, the dispute was examined in its absence on the basis of Articles 121, 123 and 156 of the APC RF and paragraph 5 of the Resolution of the Plenum of the Supreme Arbitrazh Court of the Russian Federation of 17 February 2011 No. 12.

The respondent objects to the claims being granted on the grounds set out in its written response.

Having examined the claims made, heard the representatives of the parties, and examined and assessed the evidence in the case file, the court has reached the following conclusions.

As is apparent from the case file, the claimant is the holder of a trademark under Russian Federation certificate No. 267434, application filing date 30.12.2002, registration date 20.04.2004, in respect of services in the following classes of the Nice Classification: 35 — promotion of goods (for third parties); procurement services for third parties (purchase of goods and services for undertakings); 42 — artistic design; designers' services in the field of packaging.

In support of the claims made, the claimant stated that the respondent, OOO "MAXI FON", has since 15 May 2015 been the administrator of the domain name maximus.ru. Through that domain name the respondent offers various goods for sale, that is to say, carries on commercial activity for profit.

The claimant considers that this domain name is confusingly similar to the claimant's trademark, and that the designation maximus is used by the respondent in respect of services that are similar to those for the individualisation of which the claimant's trademark is registered. In particular, the domain name is used for the promotion of goods (for third parties).

Under Article 1225(1) of the Civil Code of the Russian Federation (hereinafter — the CC RF), trademarks are results of intellectual activity and means of individualisation of legal persons, goods, works, services and undertakings equated to them, to which legal protection is afforded.

Under Article 1486(2) of the CC RF, use of a trademark means its use by the right holder or by a person to whom such a right has been granted under a licence agreement in accordance with Article 1489 of that Code, or by another person using the trademark under the control of the right holder, provided that the trademark is used in accordance with Article 1484(2) of that Code, except where the relevant acts are not directly connected with placing the goods in civil circulation, as well as use of a trademark with a modification of individual elements which does not affect its distinctiveness and does not limit the protection afforded to the trademark.

On the basis of that rule of law, the exclusive right to a trademark may be exercised for the individualisation of goods, works or services in respect of which the trademark is registered, in particular by placing the trademark:

  1. on goods, including on labels and packaging of goods that are produced, offered for sale, sold, displayed at exhibitions and fairs or otherwise placed in civil circulation on the territory of the Russian

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Federation, or are stored or transported for that purpose, or are imported into the territory of the Russian Federation;
2) in the performance of works or the provision of services;
3) on documentation connected with placing goods in civil circulation;
4) in offers for the sale of goods, the performance of works or the provision of services, as well as in announcements, on signboards and in advertising;
5) on the Internet, including in a domain name and in other means of addressing.

Under Article 1229(1) of the Civil Code of the Russian Federation, the right holder may at its discretion permit or prohibit the use of the result of intellectual activity by other persons. The absence of a prohibition is not deemed to be consent (permission). Other persons may not use the relevant result of intellectual activity or means of individualisation without the right holder's consent, except in the cases provided for by that Code.

The use of a result of intellectual activity or of a means of individualisation, where such use is carried out without the right holder's consent, is unlawful and entails liability.

Under Article 1484(3) of the CC RF, no one is entitled to use, without the right holder's permission, designations similar to its trademark in respect of goods for the individualisation of which the trademark is registered, or similar goods, if as a result of such use a likelihood of confusion arises.

Under paragraph 14.4.3 of the Rules for drawing up, filing and examining an application for the registration of a trademark and service mark, approved by order of the Russian Agency for Patents and Trademarks of 05.03.2003 No. 32, in order to establish the similarity of goods, account is taken of the kind (type) of goods, their purpose, the type of material from which they are made, the conditions of their sale, the range of consumers and other features.

As noted in the Resolution of the Presidium of the Supreme Arbitrazh Court of the Russian Federation of 17.09.2013 No. 5793/13, when establishing the similarity of goods the courts must take into account the following circumstances: the kind (type) of goods, their consumer properties and functional purpose (scope and aim of use), the type of material from which they are made, the complementarity or interchangeability of the goods, the conditions of their sale (including a common place of sale, sale through a retail or wholesale network), the range of consumers, and the traditional or predominant pattern of use of the goods.

In addition, having regard to the legal position developed by the Supreme Arbitrazh Court of the Russian Federation in the Resolutions of the Presidium of 24.12.2002 No. 10268/02 and of 18.07.2006 No. 2979/06 on the question of the similarity of goods, similarity is recognised as a matter of fact if the goods, by reason of their nature or purpose, may be attributed by consumers to one and the same source of origin.

The claims are based on the fact that the claimant did not give its consent to the respondent, ZAO "MAXI FON", to use the trademark in the disputed domain name "maximus.ru".

Article 10bis of the Paris Convention contains a general prohibition of unfair competition, which, as follows from paragraph 2 of that article, means any act contrary to honest practices in industrial or commercial matters. In particular, all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor are to be prohibited.

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In its Resolution of 11.11.2008 in case No. 5560/08, the Presidium of the Supreme Arbitrazh Court of the Russian Federation indicated that, in assessing the acts of a domain administrator for the presence or absence of an act of unfair competition prohibited by Article 10bis of the Paris Convention, the court verifies the presence or absence of three criteria cumulatively: the domain name is identical or confusingly similar to a third party's trademark; the owner of the domain name has no rights or legitimate interests in respect of the domain name; the domain name has been registered and is being used in bad faith.

As is apparent from the case file, the respondent, ZAO "MAXI FON", has been the administrator of the disputed domain name since 15 May 2015.

The respondent is the holder of a trademark under Russian Federation certificate No. 248262, application filing date 11.09.2002, registration date 05.06.2003, including in respect of services in class 35 of the Nice Classification: advertising; business management; business administration; office functions.

The respondent acquired the exclusive rights to the above trademark under an agreement on the alienation of exclusive rights registered in the State Register on 19.11.2014 under number RD0162077.

The respondent was registered in the state register of legal persons on 25.12.2013.

In the response submitted to the case file, the respondent stated that from that date OOO "MAXI FON" became one of the companies forming part of the "Maximus" group of companies. The permanent founders (participants) of all the companies in that group are Kolla Sunil Kumar and Mirabi Olegovich Useynashvili. The main activity of OOO "MAXI FON", like that of the other companies in the "Maximus" group, is the wholesale trade in electrical goods and household electrical installation products, as well as activities in the field of telephone communications and documentary telecommunications. Considerable attention has recently been paid to distance selling through an online shop.

To that end, the founders of the "Maximus" group of companies decided to propose to D. O. Pogozhev, who is one of the directors of the "Maximus" group of companies, that he apply to the Regional Network Information Centre for the transfer of the rights to the second-level domain name maximus.ru to OOO "MAXI FON".

The website with the domain name maximus.ru carries advertising information and offers for the sale of goods which OOO "MAXI FON" receives under supply agreements with such large companies as "SAMSUNG", "EXPLAY" and "SONY ELECTRONICS". Distribution agreements are concluded with those companies, under which OOO "MAXI FON" purchases from them mobile telephones, digital audio and video, computer and digital equipment, consumables and other goods. For the purposes of selling the goods purchased, OOO "MAXI FON" posts advertising information about those goods and their manufacturers.

The court considers that the claims are not to be granted, on the following grounds.

As established by the court, on the disputed website the respondent places its combined trademark "MAXIMUS" No. 248262 in the form in which it is registered.

The registered domain name maximus.ru is a reproduction in Latin letters of the designation "Максимус" — the verbal element of combined trademark No. 248262, registered (05.06.2003) earlier than the registration date of the claimant's trademark "MAXIMUS" under certificate No. 267434 (20.04.2004).

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The respondent stated that the domain was registered in Latin letters because, at the date of registration of the domain name in the RU zone, registration of a domain in Cyrillic was not provided for.

Thus, in carrying on its activities the respondent uses its own trademark, which has an earlier priority (registration) date than the claimant's trademark.

The court considers it necessary to note that the claimant's trademark is registered for services in class 35 of the Nice Classification (promotion of goods (for third parties)).

The respondent's trademark is registered in respect of services in class 35 of the Nice Classification (advertising).

The service of "promotion of goods" is a broad concept which includes a range of different measures, efforts and actions undertaken with a view to increasing demand for goods, increasing their sales and expanding the market field of the goods; it may include both services in the field of advertising and the services of shops in the retail sale of goods to the end consumer. Accordingly, from the overall range of goods-promotion services one may distinguish services connected with retail trade, which are provided directly by trading undertakings (shops) and which differ from services in the field of advertising in that they belong to a different kind of service, are characterised by a different aim, a different method of provision and a different range of consumers.

In confirmation of the fact that the respondent provides services similar to those for the individualisation of which the claimant's trademark is registered, the claimant submitted to the case file a screenshot of the website www.maximus.ru, from which it follows that the respondent advertises various goods (laptops, smartphones, etc.).

The claimant has submitted no evidence to the case file that the respondent carries on any other activity.

The claimant submitted to the case file the respondent's application for the partial early termination of the legal protection of the trademark with the verbal designation "MAXIMUS" under Russian Federation certificate No. 267434 on account of its non-use, which the respondent sent to the Intellectual Property Court.

The court considers it necessary to note that the respondent's arguments set out in the above application are subject to assessment and appropriate proof in the framework of the examination of the case by the Intellectual Property Court.

In the examination of the present case the respondent denied that the services it provides are similar to the services for which the claimant's trademark is registered.

On the basis of the evidence submitted to the case file, the court concludes that the respondent's acts do not infringe the claimant's exclusive rights to the trademark under Russian Federation certificate No. 267434.

The costs of the State fee are borne by the claimant.

Guided by Articles 106, 110, 167–170 and 176 of the APC RF,

HAS DECIDED:

To accept the withdrawal of the claims against Dmitry Olegovich Pogozhev.

To terminate the proceedings in that part.

To dismiss the remainder of the claims.

The decision may be appealed against within one month of its adoption to the Ninth Arbitrazh Court of Appeal.

Judge: O. V. Kozlenkova