The brand of the Swedish company Ericsson in the Russian Federation may remain without protection due to non-use

Rusklimat appealed to the intellectual property court with a request to terminate the legal protection in the country of trademarks of the telecommunications equipment manufacturer Ericsson. Market participants believe that the Russian company wants to produce or sell other equipment in the Russian Federation under the Swedish brand. This is one of the first such cases against manufacturers who left the country after the outbreak of hostilities in Ukraine, lawyers say, clarifying that Ericsson itself must prove the use of the mark. The company already knows about the lawsuit, but does not disclose its intentions regarding it.

“Kommersant” found in the file of arbitration cases information that the Russian manufacturer of air conditioners LLC R-Klimat (Rusklimat) filed an appeal to the intellectual property court on March 25 against Telefonaktiebolaget LM Ericsson (the Swedish legal entity of the telecommunications equipment manufacturer Ericsson). Rusklimat requests early termination of the protection of the company’s trademarks due to non-use. The meeting is scheduled for May 6, Rospatent is involved as a third party. Rusklimat declined to comment. Ericsson confirmed that it was aware of the lawsuit, declining to comment further. Rospatent did not answer Kommersant.

After the outbreak of hostilities in Ukraine, many foreign manufacturers left the Russian Federation and froze supplies, including Ericsson. At the end of 2022, the company liquidated its Russian legal entity. Kommersant’s interlocutor at the market clarifies that Ericsson equipment is imported into the Russian Federation through parallel imports, however, according to him, in 2023 deliveries “fell significantly.”

Director of Strategic Communications at Irtei (develops base stations) Alexander Sivolobov believes that the lawsuit will not affect the operation of Ericsson base stations operating in the Russian Federation: “It is impossible and makes no sense to create counterfeits, since in the foreseeable future Russian stations will be produced in the country.”

The founder of the household appliances manufacturer Jacky’s, Huseyn Imanov, connects Rusklimat’s interest in the Ericsson trademark with the desire of the Russian company to produce equipment under this brand, without agreeing with the Swedish manufacturer. “But even if the court’s decision is positive, Ericsson can appeal and protect its rights in the Russian Federation,” he emphasized. A Kommersant interlocutor close to Rusklimat claims that the company filed a lawsuit “at the request of a foreign partner who plans to import its equipment into the Russian Federation under the Swedish brand.”

Examples of early termination of protection of trademarks, including foreign ones, due to their non-use can be considered “common practice,” says Denis Krauyalis, adviser in the dispute resolution practice of the law firm Tomashevskaya and Partners. However, he clarifies, “in the context of the departure of foreign companies from the Russian Federation,” this is one of the first things to do. “Early termination of trademark protection is permissible in case of non-use for three years. The copyright holder, that is, Ericsson, must prove the opposite,” the lawyer explained.

Sergei Uchitel, partner of the Pen & Paper Bar Association, agrees with this. According to him, “under certain conditions” foreign companies may lose the rights to their brands in Russia. However, the lawyer emphasizes, three years have not yet passed since Ericsson left the Russian Federation, so “it is still difficult to understand the grounds and prospects of the case.”

Timofey Kornev, Daria Andrianova