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The trademark has been effectively protected
INTELLECT-S is successfully representing a client which sued its former distributor for infringing on its trademark and trade name
Our client, a Moscow area based engineering company named Zevs Technologies, a leading supplier of a broad range of its own manufactured and imported technology for welding, installing, diagnosing and cleaning pipes and pipelines, and high-pressure apparatus, and distributing related products manufactured by leading US, Canadian, UK, French, Belgian, German, Swedish and other producers, filed an action against its former distributor which unlawfully continued using Zevs' trademark and website domain name to market competing products.
Before we filed the suit on Zevs' behalf, we contacted the host of its ex-distributor's website asking to shut down the breaching site featuring our client's trademark. The hoster refused, so we joined him as a co-defendant in a suit filed with the nearest court, in St.Petersburg, instead of the Altai Territory (3,500 kilometers from Moscow), where the first defendant is based.
In preparing the action, we looked to the recent case law of the Intellectual Property Court and formulated our claims so that our client had the preemptive right to have the defendant's domain name registered in its name.
On our motion, the court put an injunction on the transfer of the domain name registration to any third person (as is frequently done by domain name squatters).
We sought RUB1,100,000 in damages from the breaching ex-distributor and its owner as the registrant of the breaching domain name. Seeking joint and several relief against the owner was to ensure early and effective enforcement. We also sought relief against the website hoster who refused to cooperate. This move may create a precedent in Internet case law governing websites and domain names.
Our comment:
In this matter, INTELLECT-S has successfully used all legal tools available to accomplish three objectives set by the client:
- have the case tried in Western Russia, instead of the remote place on the Mongolian and Chinese border where the defendant is based;
- take away the domain name and have the illegal use of the client's trademark effectively stopped;
- recover and enforce damages for the infringement.
As a result of the infringements of Zevs' rights, the firm began losing business to its the unfair competitor selling counterfeit products. The losses are incalculable, but INTELLECT-S has stopped the development of the worst-case scenario. The trial court granted the action and relief to the full extent.
The case was carried out by Maxim Labzin, Partner, INTELLECT-S.
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