Implications of the use of TK in the name of the mobile application
In the summer of 2015, the developer of the official Dyukan Diet mobile application, Altanka SRO, revealed that the App Store had an application with a similar name, Dyukan's Diet Pro.
Following the consideration of the claim, Design Studio Logomotiv CJSC refused to recognize the fact of counterfeit software distribution and continued to use the Dyukan Diet designation as the name of the application. In particular, the opponent referred to the fact that the client’s trademark was registered in Russia in the form of the verbal designation “Dukan” and “Dukan”. Whereas the offender used the term "Dyukan" in his applications.
In December 2015, the lawyer of IP practice, Balyberdin A.O., prepared and filed a claim in the Arbitration Court of St. Petersburg and the Leningrad Region (case No.A56-96366 / 2015). As part of the application, we asked to prohibit the unlawful use of the trademark No. 533934 "DUKAN", No. 493671 "DUKAN" and designations similar to it to the degree of confusion in mobile applications and to recover compensation in the amount of 200,000 rubles. A complaint was also filed with the FAS regarding unfair competition related to the use of exclusive rights to the means of individualization of products. Responsibility for this offense is provided by part 2 of article 14.33 of the Administrative Code, which entails the imposition of an administrative fine on legal entities - from one hundredth to fifteen hundredths of the amount of the offender’s proceeds from the sale of goods in the market of which the offense was committed but not less than 100,000 rubles.
In order to convince the distributor of counterfeit software that there are similarities to the degree of confusion between the DUKAN trademark and the conscientious designation “Dyukan Pro Diet” by lawyers of the company, the expert opinion of the patent expert was provided. The fact of the implementation of the application on the App Store website was recorded in the protocol of notarial inspection of Internet pages.
After these actions, the St. Petersburg company entered into negotiations with the aim of reaching a settlement agreement. As part of the negotiations, Design Studio Logomotiv, CJSC acknowledged the fact of violation of Duvalec SARL’s exclusive rights to the trademark and refused to use it further in the mobile application. On May 6, 2016, the settlement was approved by the Arbitration Court.
Conclusion: the illegal use of the registered trademark in the name of the mobile application is a violation of clause 3 of Article 1484 of the Civil Code of the Russian Federation.
Following the consideration of the claim, Design Studio Logomotiv CJSC refused to recognize the fact of counterfeit software distribution and continued to use the Dyukan Diet designation as the name of the application. In particular, the opponent referred to the fact that the client’s trademark was registered in Russia in the form of the verbal designation “Dukan” and “Dukan”. Whereas the offender used the term "Dyukan" in his applications.
Pierre Ducane is one of the most widely read writers in France and other countries of the world. He has written 19 books translated into 25 different languages ​​and published in a total circulation of more than 11 million copies. However, the company Design Studio Logomotiv decided to use the reputation of Dr. Pierre Dyukan.
In December 2015, the lawyer of IP practice, Balyberdin A.O., prepared and filed a claim in the Arbitration Court of St. Petersburg and the Leningrad Region (case No.A56-96366 / 2015). As part of the application, we asked to prohibit the unlawful use of the trademark No. 533934 "DUKAN", No. 493671 "DUKAN" and designations similar to it to the degree of confusion in mobile applications and to recover compensation in the amount of 200,000 rubles. A complaint was also filed with the FAS regarding unfair competition related to the use of exclusive rights to the means of individualization of products. Responsibility for this offense is provided by part 2 of article 14.33 of the Administrative Code, which entails the imposition of an administrative fine on legal entities - from one hundredth to fifteen hundredths of the amount of the offender’s proceeds from the sale of goods in the market of which the offense was committed but not less than 100,000 rubles.
In order to convince the distributor of counterfeit software that there are similarities to the degree of confusion between the DUKAN trademark and the conscientious designation “Dyukan Pro Diet” by lawyers of the company, the expert opinion of the patent expert was provided. The fact of the implementation of the application on the App Store website was recorded in the protocol of notarial inspection of Internet pages.
After these actions, the St. Petersburg company entered into negotiations with the aim of reaching a settlement agreement. As part of the negotiations, Design Studio Logomotiv, CJSC acknowledged the fact of violation of Duvalec SARL’s exclusive rights to the trademark and refused to use it further in the mobile application. On May 6, 2016, the settlement was approved by the Arbitration Court.
Conclusion: the illegal use of the registered trademark in the name of the mobile application is a violation of clause 3 of Article 1484 of the Civil Code of the Russian Federation.
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Source: https://habr.com/ru/post/300640/
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