Success story: Termination of validity of trademarks due to their non-use

In the middle of 2018, an international corporation engaged in production of alcoholic beverages addressed Bolotov&Partners team for support in court proceedings related to protection of their trademark rights. The court proceedings related to termination of international registrations of trademarks (in relation to alcoholic beverages) due to failure to use trademarks in the Republic of Kazakhstan. As representatives of a claimant, we were able to prove that disputed trademarks were not used by the defendant (a foreign company producing alcohol beverages) for more than three years. In 2019 court proceedings resulted in a court decision in favor of our client.

Our client’s opponents, i.e. trademark owners tried to prove that they comply with the legislation requirements related to use of the disputed trademarks: the defendant submitted to the court copies of a distribution agreement, a license agreement on the transfer of rights to disputed trademarks, agreements on production of box designs, labels and the supply of printing products and manufacture of glass bottles. In addition, the defendant presented samples of containers and labels bearing the trademarks in question.
We presented evidence and documents related to reliability and relevance of material evidence of the defendant. On the grounds of our requests to various state and private organizations, documents confirming the absence of the actual use of trademarks by the defendant in Kazakhstan were added to the case file.

We submitted:
– letters of reply from authorized organizations on the absence of mandatory certification of alcoholic beverages with disputed trademarks;
– certificates of the absence of transfer of products bearing disputed trademarks across the customs border;
– documents confirming that the defendant’s counterparties are inactive legal entities and are at the stage of bankruptcy;
– letters-notices to the defendant’s counterparties about the termination of the supply agreements due to failure to perform obligations under the agreements.

We were able to prove in relation to some agreements that they had no relation to the territory of the Republic of Kazakhstan and there was no actual cooperation between the parties, and in particular in relation to the license agreement: lack of compulsory state registration resulted in cancellation of that license agreement; defendants tried to prove the opposite deliberately misinterpreting certain provisions of international law.

The court took our side and concluded that disputed trademarks were not used and satisfied our statement of claim. In the result of success in this case, our client registered disputed trademarks in Kazakhstan and launched sale of their products.