DP
Bad luck: "Cytomed" lost the dispute with Irkutsk "Pharmasintez"
Cytomed of billionaire Alexander Khromov lost the dispute over the REGASTHYM trademark in court. Last year, Cytomed filed a lawsuit with the Arbitration Court of the Irkutsk Region against Pharmasintez JSC on the illegal use of the trademark. This dispute is still pending in court.
JSC Pharmasintez considered that JSC Medical and Biological Research and Production Complex Cytomed does not use its REGASTHYM trademark, and JSC Pharmasintez is interested in purchasing this trademark.
1. What caused the conflict? Why was it not possible to settle it out of court?

The conflict between the parties to the dispute under consideration arose as a result of the fact that Pharmasintez JSC applied to the Intellectual Property Rights Court (hereinafter referred to as the "SIP") with a claim for the early termination of legal protection of the trademark registered for JSC "Medico-Biological Research and Production complex "Cytomed".

The legislation provides an opportunity for interested parties to file a claim for early termination of legal protection of a trademark in the event of continuous non-use of the trademark by its rightholder (rightholder of the exclusive right) for three (3) years.

JSC Pharmasintez considered that JSC Medical and Biological Research and Production Complex Cytomed does not use its REGASTHYM trademark, and JSC Pharmasintez is interested in purchasing this trademark.

The procedure for early termination of legal protection of a trademark provided for by legislation provides for a certain pre-trial procedure. The interested party in the dispute under consideration - Pharmasintez JSC, must send a notice to the rightholder of the unused trademark containing a proposal to conclude an appropriate agreement giving the interested party the right to use the trademark or an offer to the trademark rightholder to apply to the Federal Service for Intellectual Property (Rospatent) with a statement waiver of exclusive rights to a trademark. Within two (2) months, the parties must either agree on the terms of use of the trademark, or the copyright holder must waive the rights to the trademark. If this did not happen, the person concerned has the right to apply to the court with a claim for early termination of the trademark in connection with its non-use.

The SIP Decision of May 28, 2021 No. SIP-57/2021 explicitly states that the parties to the dispute did not manage to come to an agreement on the procedure and conditions for the use of the trademark by Pharmasintez JSC registered for the Cytomed Medical Biological Research and Production Complex JSC , as a result of which Pharmasintez JSC filed a claim with SIP.

2. What drug and trademark caused the conflict? Did the company use Cytomed in its activities?

Pharmasintez JSC stated that JSC Cytomed Medical and Biological Research and Production Complex does not use the REGASTHYM trademark registered in the 5th class of the International Classification of Goods and Services. JSC Pharmasintez believes that JSC Medical and Biological Research and Production Complex Cytomed does not use the trademark, since the drug of the same name, Regastim, has not been registered with the Ministry of Health of the Russian Federation. Also, Pharmasintez JSC has no information on the use of the REGASTHYM trademark for the individualization of other pharmaceutical preparations.

JSC "Medical and biological research and production complex" Cytomed "noted that it did not use the trademark for reasons beyond its control, since clinical trials were carried out with respect to the drug" Regastim "and it was not introduced into civil circulation.

3. Since the claim was satisfied in favor of Pharmasintez, isn't Cytomed going to retaliate and appeal against the court decision?

Since the decision of the Intellectual Property Rights Court, adopted by it as a court of first instance, comes into force upon adoption, the procedure for appealing these decisions has not been established. to appeal against the decision of the Intellectual Property Rights Court, adopted by it as a court of first instance in cassation, to the Presidium of the Intellectual Property Rights Court.

4. How often do such claims occur in practice? Has their number increased over the past year?

Such claims for the early termination of the legal protection of a trademark are not very common in practice, but they do occur. This is due to the fact that, when registering a trademark, rightholders in most cases still try to use the designations to individualize the goods, works and services in respect of which the designations are registered.

The statistics of such cases does not change much from year to year. Compared to last year, the number of such disputes has not decreased much.