The use of similar trademark designation

The company “X” (hereinafter the client) operates under a certain verbal designation on the construction market of goods, services, equipment and the company is a multi-brand hypermarket. For the purposes of its activity, the Client uses the Internet-shop, which is the main asset of the company. Originally the website was registered on third-party individual.

In April 2013 the client ordered a report about the express search for a designation of his trademark (hereinafter - the "Report") in the Group of patent attorneys for the purposes of further registration as a trademark in classes ICGS 35 (42) 37.

According to the conclusions contained in the Report, there was identified the registered mark, which can be recognized confusingly similar by the expertise of Rospatent and, therefore, constitute an obstacle to registration of the audited designation as a trademark.

The holder of the specified trademark is a company Y, which also operates in the market of the construction goods, works and services, and is a direct competitor of the company X. To promote their services, company Y also uses the Internet-resource which domain name differs from the website of the company X at one letter.

In the first case the website is used as a sign shop with the purpose of attraction of clients for the subsequent purchase of goods in the office or at the company's warehouse, and in the second case it is used as the presentation of the opportunities in the field of construction and installation of similar equipment by the employees of the company Y.

To solve the current problem the client applied to the Yurbureau LLC.

In this situation the Client was interested in possible risks associated with litigation on the protection of the exclusive rights on trademark. In this regard, Yurbureau LLC was to analyze the risks associated with the client's web-site on the subject of injunction on its further use.

In addition, the Client was interested in the prospects of registration of its designation by Rospatent and the need of such a registration with regard to activities of the rival.

In the course of the work, the lawyers of the YurBureau LLC analyzed various risks, proposed a procedure for exit from the situation, and developed the algorithm of client's actions in case of appeal to the court of his rival.