1. Parties and Subject Matter
- Plaintiff: MULTIGOODS PRODUCTION LIMITED (foreign entity)
- Defendant: HUGO BOSS AG (foreign entity)
- Third participant: Rospatent
- Subject: Early termination of legal protection for International Registration No. 1228292 on the territory of the Russian Federation due to non-use.
2. Factual Background
The trademark was registered on 13 August 2014 for goods in Classes 9, 16, and 21 of the Nice Classification.
The plaintiff alleged that the trademark had not been used for three years and requested early termination of its protection. To support this claim, MULTIGOODS PRODUCTION LIMITED submitted evidence of its “interest” in the mark, including:
- Applications for identical marks
- Agreements with business partners
- Preparations for production and distribution of goods under the “Hugo Boss” name
The lower court found that while the plaintiff’s evidence formally demonstrated interest, it was malicious, aimed at leveraging the reputation of a well-known brand for competitive advantage.
3. Position of the Lower Court
The court denied the plaintiff’s claims on the following grounds:
- Abuse of rights (Article 10 of the Civil Code of the Russian Federation)
- Malicious intent to terminate the trademark protection to benefit from the brand’s reputation
- Lack of evidence connecting the mark to the plaintiff’s actual business activities
The well-known status of the trademark was established based on long-term activities of HUGO BOSS AG and affiliates in Russia, supported by:
- Reports from the Russian Public Opinion Research Center (VCIOM)
- Catalogs, invoices, and website records
4. Grounds for the Appeal
The plaintiff challenged the lower court’s findings of abuse of rights, describing them as “abstract” and unsubstantiated. MULTIGOODS PRODUCTION LIMITED requested the appellate court to consider all accompanying documents and certificates, citing Articles 10 and 1486 of the Civil Code.
5. Decision of the Presidium
Intellectual Property Court (Presidium)
The Presidium of the Intellectual Property Court rejected the appeal, confirming the lower court’s conclusions:
- The plaintiff’s actions constitute abuse of rights
- The wide recognition of the “HUGO BOSS” trademark and potential reputation transfer to similar or complementary goods indicate malicious intent
- The plaintiff’s bad faith justified denial of early termination claims
6. Legal Significance
This case confirms key principles in Russian intellectual property law:
- Good faith is critical in early termination claims
- Well-known trademarks can extend their reputation to related goods
- Abuse of rights is a valid ground for refusal even if procedural formalities are met
- Courts consider the plaintiff’s actual intent alongside formal compliance
Key Takeaways
- MULTIGOODS PRODUCTION LIMITED acted in bad faith, attempting to exploit HUGO BOSS’s brand reputation.
- The recognition of a trademark’s wide fame allows reputation transfer to other goods and supports findings of abuse.
- Good faith and absence of malicious intent are decisive factors in early termination disputes.
- Formal compliance with non-use procedures does not exempt a claimant from scrutiny of intent.
Expert Commentary (Patent Attorney A. V. Leonov)
The Presidium’s ruling illustrates a consistent trend: courts carefully examine the intentions of claimants in early termination cases. Leonov emphasizes that Rospatent’s professional approach involves not only procedural compliance (applications, agreements, production readiness) but also the substantive purpose behind the claimant’s actions. The case reaffirms that the abuse of rights (Art. 10 Civil Code) and the bad faith of claimants are critical in preventing misuse of well-known trademarks.
Related Materials
Further IPPRO materials on non-use, premium brands, and IP Court practice in Russia: