Yandex is seeking through the court to cancel the protection of the Swiss brand Ultima in Russia

Yandex is seeking through the court to cancel the protection in the Russian Federation of the Ultima brand, owned by the Swiss operator of luxury housing. The Russian company assured that it had discussed with the defendant the issues of using brands in different markets, and called going to court a formality. The company uses the Ultima brand to designate Yandex Go tariffs for an increased level of service. The dispute also concerns the use of the word in tourism and rental housing. According to experts, we may be talking about expanding the Yandex brand to these categories of services.

Yandex filed a lawsuit with the Intellectual Rights Court (IPR) against the Swiss Ultima Capital, which is engaged in the rental of chalets and luxury housing, regarding the Ultima trademark registered in its name, it follows from the court database.

The Russian company is seeking to cancel trademark protection for four out of five classes of services. The claims include the use of the word Ultima in the areas of car rental and catering, as well as other services such as hotel management, temporary rental real estate services and beauty salons. The SIP left Yandex’s claim pending until September 28 for formal reasons. Ultima Capital did not answer Kommersant.

Yandex explained that it had already discussed with Ultima Capital the terms of using the Ultima brand, given that the companies are engaged in “different types of activities in different countries.” A Yandex representative assured that filing a claim with the IP was a legal formality: “As a result of the discussion, an agreement should be concluded, but the formal deadline for signing it ended at the end of August. At that time, we did not have time to discuss all the details, so in order to negotiate further, we had to file a lawsuit.”

Yandex uses the Ultima brand in the Yandex Go services to designate ordering a taxi with an increased level of comfort and delivering food from restaurants. In the field of real estate rental and tourism, the company is represented by the Yandex Rental and Yandex Travel services, respectively.

By going to court, Yandex wants to “strengthen its negotiating position and speed up the process of agreeing on formalities,” believes intellectual property lawyer Anastasia Skovpen: “If the copyright holder company did not actually use the trademark in Russia and did not grant the right of use to third parties in relation to the disputed classes, then the plaintiff’s chances are quite high.” She clarified that use in this case means an offer to provide services in Russia.

Yandex’s explanations seem logical, since Art. 1486 of the Civil Code of the Russian Federation provides for certain actions and deadlines for their implementation as part of the procedure for early termination of legal protection, notes Alina Akinshina, CEO of Online Patent. She noted that it would be wrong to evaluate the progress of negotiations based on the fact of filing a claim: “Even if the negotiations are proceeding in the most positive manner, it is both reasonable and advisable to comply with formal deadlines.”

A lawsuit in a Russian court could be the only option for Yandex, even if Ultima Capital was not against signing the agreement, confirms the owner of the Kaufman brand agency Stanislav Kaufman: “I do not rule out that the Swiss company wants to avoid a situation in which it would could be accused of voluntary agreements with the Russian one.” In his opinion, Yandex can use the Ultima brand within the framework of partnerships with resorts, as well as for the development of “a club system operating on the all-inclusive principle in several services at once – from taxis to hotel accommodation.”

General Director of Infoline-Analytics Mikhail Burmistrov notes the prospects of expanding the Ultima umbrella brand not only in the areas of rental and tourism, but also in all Yandex verticals: “Brand differentiation is very logical – it makes the product offered under the Ultima brand more attractive to target audience, and at the same time provides greater flexibility in working in the basic price segment.”

Yuri Litvinenko