German retailer OBI is challenging the use of the brand in Russia in court

The German DIY network OBI, a year and a half after officially leaving the Russian Federation, decided through the court to prohibit its former Russian subsidiary from using its trademarks and domains. The retailer tried to agree on rebranding out of court, but the stores continue to operate under the OBI guise. Lawyers recognize the German company’s chances of success, but even in this case they see opportunities to preserve the OBI mark in Russia.

The German OBI filed a claim in the Arbitration Court of the Moscow Region against one of the structures of the Russian network Obi Franchising Center LLC for a ban on the use of trademarks with the verbal designation OBI, as follows from the information in the file of arbitration cases. The hearing of the claim is scheduled for January 10, 2024.

The German OBI GmbH & Co confirmed to Kommersant that they are taking measures against violations of the use of their brands in Russia. They say that the OBI trademark is being used illegally, and the request to settle the issue out of court was ignored by the Russian side. The Russian OBI told Kommersant that “the company is trying to neutralize the material and reputational risks that arose against the background of the termination of the work of the German OBI GmbH in the Russian Federation.” They say that they sent a request to the German side to resume negotiations to resolve internal issues that still remain open.

In addition, from the data in the file of arbitration cases shouldthat a German retailer filed a petition to prohibit the Russian company and the domain name registrar Ru-Center, involved in the case as a third party, from taking any actions in relation to the obi.ru domain aimed at terminating its administration rights or transferring support for information about this domain to another to the registrar. The court satisfied these requirements.

Without taking interim measures, the domain could be transferred to another person, which would complicate the consideration of the case and require additional actions from the plaintiff, explains Ekaterina Kalinicheva, head of the practice for protecting intellectual property on the Internet at Semenov & Pevzner. Ru-Center declined to comment.

OBI GmbH has been operating in Russia since 2003. In the spring of 2022, due to hostilities in Ukraine, the chain suspended the operation of 27 hypermarkets in the Russian Federation, and then withdrew from local business.

In August 2022, GISC MAX LLC became the owner of OBI structures. After this, the owners of the Russian business OBI changed three times, and from April 2023 it became JSC Allonge, as follows from the Unified State Register of Legal Entities.

The owners of this company are unknown, but its general director is Maryana Gilyasova, who also heads TK Sindika-O, a structure of the Sindika holding company of Senator Arsen Kanokov. Sindik did not respond to Kommersant’s request.

According to our own data, there are now 24 stores operating under the OBI banner in 12 cities of the Russian Federation. In February 2023, a hypermarket in Surgut was closed and the operation of a store in Khimki near Moscow, which burned down in December 2022, was stopped. At the end of 2022, the total revenue of Russian OBI stores decreased by 36.5%, to 26.5 billion rubles, the company ranks eighth among DIY retailers in the Infoline rating.

Managing partner of Vanchugov and Partners Alexey Vanchugov notes that “the importance of the OBI brand in the category of construction and DIY products is comparable to IKEA in the furniture and home goods market.” This is probably the reason why the Russian company continues to use the brand, the expert believes.

Previously, the website of the Russian OBI said that the brand was being used temporarily and the hypermarkets were planned to be relaunched under a new name (see “Kommersant” dated October 7, 2022).

A year ago, the Russian legal entity OBI began registering new trademarks and domains, including those consonant with the current name of the network: HOBI, OBBI, and so on. Now the brands are not used, and the message on the site has been deleted, Kommersant was convinced.

In June 2023, the German OBI GmbH & Co unilaterally terminated the license agreement with Obi Franchising Center for the use of OBI trademarks, clarifies Alexandra Pelikh, head of the litigation department of the Online Patent company. If the agreement does not provide for the use of trademarks by the licensee after such termination, the demands of the German side in court may be recognized as justified, she believes.

Protection of trademarks can be terminated early if they are not used for three years, notes senior lawyer at FTL Advisers Anastasia Semenova. According to her, if the German OBI wins in court, but does not return to the Russian market, the Russian company will have no obstacles to register an identical name after a while.

Alina Savitskaya, Anatoly Kostyrev