Legalmax Law Firm: Rights to the Kolomenskoe Trademark Restored in the Republic of Kazakhstan
CJSC BKK "Kolomenskoe", being the manufacturer of the famous Russian brand of wafers of the same name and the owner of the "Kolomenskoe" trademark in many countries around the world, received a refusal to register its brand in Kazakhstan due to the fact that this designation had been previously registered in the name of its official distributor.
Taking advantage of existing business relations and long-term partnership ties with CJSC BKK "Kolomenskoe", and abusing the trust of its business partner, the distributor company registered the combined "Kolomenskoe" trademark in its own name without notifying the true manufacturer of this product.
Lawyers and patent attorneys of Legalmax represented the interests of CJSC BKK "Kolomenskoe" at the Appeal Board of Kazpatent, where, by applying the provisions of Article 6-septies of the Paris Convention for the Protection of Industrial Property, as well as specific norms of national legislation, the bad faith of the trademark registration in the name of the distributor company during the period of business relations regarding the distribution of confectionery products in the territory of Kazakhstan was proven.
Pursuant to Article 6-septies of the Paris Convention for the Protection of Industrial Property, if an agent or representative of the person who is the proprietor of a mark in one of the countries of the Union applies for registration of the mark in his own name, without the proprietor’s authorization, in one or more countries of the Union, the proprietor shall be entitled to oppose the registration effected or demand its cancellation, unless such agent or representative justifies his action.
The Distributor did not have, and could not have, submitted any documents justifying its bad-faith actions in appropriating someone else's means of individualization.
In conclusion, it should be noted that, as the above precedent shows, it is essential to ensure the proper legal formalization of relationships between suppliers and their regional distributors, providing for restrictions on the ability of the latter to register and appropriate intellectual property objects.