Non-use cancellation of a trademark: risks for foreign rights holders start to materialize

In 2025, the three-year grace period for the non-use of a trademark expires for many foreign right holders which exited the Russian market in 2022. This poses a risk of a non-use cancellation action against such trademarks from companies that continues to operate in Russia. Such precedents are already in place. One of such “fresh” precedents is discussed below.

In April 2022, the Swedish company Telefonaktiebolaget L. M. Ericsson (“Ericsson”), a major supplier of telecommunications equipment and the rights holder of Ericsson trademarks under Russian Registrations  No. 205234, 207822, 253069 and International Registration  No. 1024858, announced that it was suspending its activities and halted supplies of its equipment in Russia[1]. 

On 25 March 2024, R-Climat LLC (“R-Climat”), a Russian supplier of air conditioning systems, filed a claim with the Intellectual Property Court (“IPC”) for the early termination of a series of Ericsson trademarks in relation to goods of Class 11 of the NICE Classification (“devices for heating, cooling and ventilation”), the rights to which were owned by Ericsson (the “Ericsson case”).

R-Climat based its claims on Article 1486 of the Russian Civil Code, which allows to cancel a trademark for non-use at the suit of an interested party if the trademark has not been used for a continuous period of three years.

The IPC satisfied R-Climat’s suit, asserting that Ericsson had failed to prove that it had imported heating, cooling and ventilation devices under its own trademarks since 2021[2]. The IPC’s decision was upheld by the IPC Presidium[3].

On 25 December 2024, Rospatent accepted for consideration (but has not yet granted) R-Climat’s application for the registration of its own “Ericsson” trademark in relation to goods of Class 11 (“devices for heating, cooling and ventilation”).

Before this, Rospatent registered the “Ericsson” trademark in R-Climat’s name for goods of Class 25 (“clothing, footwear and headwear”). As we understand, that trademark was registered by R-Climat following the expiry of Ericsson’s own registration for “Ericsson” trademark in relation to Class 25 goods in 2022.

The IPC’s decision in the Ericsson case could create another negative precedent for foreign companies that have exited Russia, which claimants would be able to cite in similar disputes in the future. For instance, the Russian courts are already reviewing a number of cases involving the early termination of trademarks for non-use against brands that have left the Russian market (such as Starbucks[4]).

In our view, one argument that could be used in favour of protecting foreign companies’ trademark rights is the requirement under Article 1486 of the Russian Civil Code. Under the cited Article, a person challenging the protection of a trademark shall demonstrate its legal interest in cancellation of a trademark.

In the Ericsson case, the plaintiff (R-Climat) proved its legal interest by providing evidence that Class 11 goods had been manufactured at its request, and it had subsequently sold those goods.

However, if a claimant seeking the early termination of trademark protection for non-use is unable to provide relevant evidence of its legal interest, this may serve as a stand-alone ground to reject its claims[5]. 

It is also worth noting that in the Ericsson case the use of trademarks in relation to Class 11 goods ended before 2022 (when certain Russian counter-sanctions were imposed). In view of this fact, the IPC resolving the Ericsson case perhaps does not consider the matter of whether anti-Russian sanctions and Russian counter-sanctions should be viewed as a legitimate reason for the non-use of the trademarks. In some cases, however, Russian courts may take the view that the imposition of restrictive measures constitutes such a legitimate reason to dismiss the case[6]. 

Another argument to defend the interests of foreign rights owners in such cases may be based on Article 1483 of the Civil Code, which prohibits registering third party trademarks misleading consumers as to a product and its manufacturer or place of manufacture.