Shijiazhuang Dragonhawk Industry Co., Ltd., a Chinese company, appealed against trademark registration No. 869559 at the Chamber of Patent Disputes. The trademark had been registered in 2022 in respect of Class 8 by the Russian company Bresse. The appellant argued that registration of the trademark had been made in contravention of law and the Paris Convention (Article 6septies). According to the appellant, the disputed trademark confuses the consumer in regard to the manufacturer of goods because it reproduces his world-renowned trademark.  

The appellant produces and supplies equipment and materials for making tattoos and associated materials (www.dragonhawktattoosupply.com). He has been exporting the equipment to many countries under the MAST trademark, including to Russia, before the priority of the disputed trademark. The appellant provided a number of documents to confirm his sales. 

Conversely, Bresse does not produce the equipment under the trademark MAST but sells it which misleads consumers who think that they buy the original goods made by the Chinese company. 

In fact, BRESSE or rather its agents concluded a sales agreement with the appellant in 2020, i.e. before the priority of the trademark for selling the goods labelled with the MAST trademark. They also had sought permission from the appellant to promote the goods under that designation but the appellant never allowed them to register the trademark in their name. As time went on, the trademark became popular, also because of the efforts of the sales agents. The appellant also advertised his products through other intermediaries and asked BRESSE to assign the trademark to him, but was refused. 

The appellant explained that he had given permission to use the trademark for selling the goods but there was no written or oral permission to register the trademark.  

The Chamber of Patent Disputes heard the arguments, listed the laws on which it relies and rejected the appeal because it did not find the arguments in the appeal convincing and retained validity of trademark No. 869559. It also stated that the disputed trademark does not include false or elements able to confuse the consumer. Sometimes this happens. 

The Chinese company appealed the decision of the Chamber at the IP court. In order to refute the Chamber’s decision the now plaintiff reminded that his trademark had been registered in China and that he was selling his goods to Russia from 2019. The company has a trademark registration in Russia  in Class 08 and filed a trademark application for which was refused because of the similarity to the Russian trademark. 

The plaintiff noted that there were three agents jointly selling his goods in Russia. After registering the trademark, they hampered the plaintiff’s ability to sell his goods through other channels. The parties tried to resolve the situation and conclude an agency contract but failed. The owners of the trademark demanded payment for the assignment of the mark and sued other vendors who were buying the goods from the plaintiff.  

The plaintiff again repeated his argument dismissed by the Chamber of Patent Disputes in that the defendants had been his sales agents in the past and that the company BRESSE was a dummy company in whose name they had registered the trademark. The plaintiff also expressed the opinion of the antimonopoly body according to which registration of the trademark in those circumstances could be termed as unfair competition and should be examined by court. 

The respondent parried the plaintiff’s statements by saying that evidence presented by the plaintiff does not show familiarity of the consumer with the word MAST. Besides, behavior of the plaintiff demonstrates his abuse of rights; registration of the trademark was made allegedly on the basis of oral approval of the plaintiff. 

Representatives of the patent office understandably supported their former decision in favour of the respondent. 

The court confirmed that there is a registration No. 869559in the name of BRESSE. The court also reviewed a host of documents submitted earlier to the Chamber of Patent Disputes showing existence of the company, registration of trademarks in other countries, copies of contracts with Russian counterparts, invoices and many other documents showing that the plaintiff has a long history and his activity in business. 

The court examined the submitted documents and agreed that the Chinese company manufactures and sells equipment for tattoo including in Russia. The court also confirmed that the Chinese company is an interested person, though the trademark owner went out of his way to prove the opposite. The interest is one of the basic considerations for a plaintiff to be able to challenge a trademark registration. 

The plaintiff did not allow registration of the trademark by his agent and argued that Article 6septies and Article 1512(2) of the Russian Civil Code should be used according to which registration of a trademark may be cancelled in full if protection was given in the name of an agent of a person who is owner of that trademark in one of the countries which is a member of the Paris Convention.  

The court examined relations between the plaintiff and the owner of the trademark. It transpired that that there had been concluded a supply contract between them. The Chamber of Patent Disputes did not recognize validity of the contract because there were allegedly no documents confirming payment. The court explained that the conclusion had been made by the Chamber without consideration of all documents on file. Those documents should have been examined in conjunction and with due account for clarifications by the plaintiff (at that time appellant). Those circumstances in their totality refute the conclusions of the Chamber of Patent Disputes. The respondent was aware of the fact that the plaintiff was using the designation MAST on his products. The court reminded several facts to that effect. There were many other facts mentioned by the court that had been missed by the Chamber of Patent Disputes. The court concluded that relations between the parties had all the features of representation. 

As a result, the court cancelled the decision of the Chamber of Patent Disputes and obliged the patent office to invalidate the disputed trademark in full.