Legal Analytical Conclusion on the Decision of the Intellectual Property Court in Case No. SIP-803/2024

1. Introduction and Scope of Analysis

The dispute concerned the application filed by MULTIGOODS PRODUCTION LIMITED seeking early termination of legal protection for three Victoria's Secret trademarks (Nos. 403413, 404414, 525572) on the grounds of non-use. The Court was required to assess two key factors:

whether the claimant had a legitimate interest in requesting termination of legal protection for another party's trademarks;

whether the disputed marks were used by the right holder or by persons under its control.

This decision is a significant judicial act, as it provides a detailed examination of the criteria for good faith and bad faith interest, and reflects the practice of applying Article 1486 of the Russian Civil Code to well-known brands.

2. Facts Established by the Court

2.1. Active Agreements and Commercial Operations of the Claimant

The Court found that MULTIGOODS PRODUCTION LIMITED and several of its business partners were engaged in the circulation of a wide range of goods, including:

• scientific and optical instruments;
• bags, umbrellas, and accessories;
• jewelry and watches;
• sporting goods and toys;
• stationery;
• household electrical devices and appliances.

These goods partially overlap with the classes covered by the disputed Victoria's Secret trademarks.

2.2. Preparatory Actions Related to the Use of "Victoria Secret"

The Court accepted the following as evidence:

• the filing of application No. 2022720130 and divisional application No. 2024778611 for the mark "Victoria Secret";
• active cooperation agreements between the claimant and Russian companies;
• introduction of goods into civil circulation by the claimant's partners.

From the standpoint of formal criteria of interest, all necessary conditions were met.

3. Defendant's Position and the Court's Assessment

3.1. Defendant's Arguments

Victoria's Secret Stores Brand Management argued:

• the claimant lacked genuine good-faith interest;
• the mark "VICTORIA'S SECRET" is widely known;
• the claimant's actions exhibited signs of abuse of rights aimed at appropriating the reputation of a well-known brand.

The defendant also provided evidence of trademark use in relation to women's clothing, accessories, cosmetics, and related goods.

3.2. Key Finding of the Court: Identification of "Malicious Interest"

The Court held:

• the claimant's formal interest was proven;
• however, in certain areas the claimant's interest was not bona fide—its actions were not directed at introducing its own goods, but at exploiting the reputation of a globally recognized brand.

The Court established the broad recognition of "Victoria's Secret" in Russia, confirmed by:

• long-term market presence;
• operation of retail stores and online platforms;
• sublicense agreements;
• consumer feedback;
• market statistics.

Accordingly, the Court reached a central conclusion: the claimant was using Article 1486 of the Civil Code not for the purposes of fair competition, but to obtain a recognizable designation in classes directly associated with goods and services to which the Victoria's Secret brand has long and globally established ties.

4. Court's Findings on Trademark Use

The Court evaluated use only with respect to goods for which the claimant demonstrated legitimate good-faith interest.

4.1. Use Not Proven in the Following Classes

For trademarks Nos. 403413 and 404414, use was not proven for:

• scientific, geodetic, and optical instruments;
• recording and reproduction apparatus;
• information processing equipment;
• Class 18 goods such as whips, harnesses, and saddlery;
• all Class 28 goods including toys, sporting items, and Christmas decorations.

The defendant did not provide evidence of use in these segments.

4.2. Use Proven or Claimant's Bad Faith Precluded Termination

The Court refused termination in relation to:

goods and services associated with fashion, accessories, bags, jewelry, cosmetics, clothing, and retail services (Class 35)—that is, categories traditionally associated with the Victoria's Secret brand and protected by its reputation and recognition.

Here, the Court found the claimant's interest malicious, and therefore rejected the claim despite formal compliance with procedural requirements.

5. Legal Assessment and Significance of the Decision

5.1. Significance for the Application of Article 1486 of the Civil Code

The decision affirms a critical legal principle: even a formally substantiated interest may be deemed bad faith if:

• the designation is widely known;
• the claimant's actions aim to capture the brand's reputational value;
• the intended use concerns areas where consumers objectively associate the brand with a specific producer.

This strengthens the legal protection of well-known brands in non-use disputes.

5.2. The Court Developed a Two-Tier Approach

Formal interest – confirmed by agreements, commercial circulation, and the filing of the claimant's own trademark applications.

Material good-faith interest – assessed with regard to the nature of the brand, reputation, history of use, and possible abuse.

In this case the first criterion was satisfied, while the second was not.

6. Final Procedural Conclusions

The Court:

• Granted the claim in part, terminating protection of trademarks Nos. 403413 and 404414 only for certain goods (Classes 9, 18, 28);
• Refused to terminate trademark No. 525572 in full (Classes 16, 18, 35);
• Found that the claimant failed to prove good-faith interest with respect to goods/services forming the core of the Victoria's Secret brand's established activity;
• Ordered the defendant to pay RUB 12,000 in state duty proportionally to the satisfied part of the claim.

The decision entered into force immediately and may be appealed to the Presidium of the Intellectual Property Court.

7. General Legal Position

The decision of the Intellectual Property Court demonstrates:

• heightened scrutiny of attempts to use non-use procedures as a means of capturing commercially valuable brands;
• the importance of good faith as a key criterion for evaluating interest;
• the impossibility of "formalistic" application of Article 1486 to well-known marks;
• the priority of market stability and the protection of reputational assets in the field of intellectual property.

Thus, the Court effectively established a new standard: interest must be not only formally valid, but also economically honest and not aimed at appropriating another party's commercial reputation.