News

YUS team succeeded in defending the interests of Natrol LLC, a large American producer of vitamins and dietary supplements, in the Russian Patent and Trademark Office (Rospatent) and in the IP court.

May, 2021

A Russian company registered in its name the trademark “Натрол” (“Natrol” in Cyrillic), which was phonetically identical to our client’s firm name. “Natrol” was also used as a means of individualisation of the client’s goods.

In spite of Natrol LLC’s goods being present on the Russian market for a long time, the international trademark application designating Russia was filed later than the Russian company’s trademark was registered.

The client’s international registration was refused in Russia on similarity grounds.

It was necessary to dispute the Russian trademark registration so that it does not present an obstacle to our client’s activity. Moreover, as the Client’s trademark was not registered on the Russian territory, the entry of its goods into civil circulation could be considered an infringement of the Russian trademark owner’s rights.

A large set of documents was gathered in order to confirm the long-term presence of the client on the Russian market, with its designation “Natrol” and the firm name, both similar to the disputed trademark.

Following the decision of the Russian PTO, the disputed trademark was deemed invalid. The trademark rightholder disagreed with the above decision and filed a statement of claim with the court. We succeeded in defending the client’s position, and the court upheld the earlier decision of Rospatent.

Our services to the client and its representation in Russian administrative and court organs resulted in the client being able to continue bringing into civil circulation its goods marked with its designation “Natrol” having been used for a long time. The risk of a large compensation being recovered for the trademark infringement (considering high sales volumes) was eliminated. Our client obtained the right to register the trademark “Natrol” in its name.