LETA

March 14, 2001

Cassation appeal ends dispute over Smirnov vodka trademarks

by Danute Tomsone

The Supreme Court Senate today ended the cassation appeal of Russian company Torgovy Dom Potomkov Postavshchika Dvora Ego Imperatorskogo Velichestva P.A. Smirnova on three complaints against court rulings which revoked the registration of its four Smirnov vodka trademarks in Latvia.

Thus goes into effect the Supreme Court's December 4 ruling to cancel in Latvia the Russian company's three international and one nationally registered Smirnov vodka trademark.

The petition to cancel the trademark registration was brought by US company UDV North America Inc., which demanded that the figurative trademark Smirnov vodka, comprised of the Cyrillic name elements Smirnovskaya vodka Nr. 21, be revoked in Latvia, and that its international registration be applied to the territory of Latvia.

The company also petitioned for the cancellation of the application in Latvia of the international trademarks Smirnov vodka - stolovoje vino Nr. 31, and Smirnov vodka - stolovoje vino Nr. 32, as well as the registration of these marks in Latvia.

The Senate passed its ruling on the cassation appeal based on its conclusion that the Russian company had issued its authorization to patent attorney Abrams Fogels at a later date than that on which the appeal was submitted.

Mr. Fogels was not authorized to submit the cassation appeal of the Court's ruling based on his prior authorization.

Today's Senate decision takes effect immediately and is not subject to further appeal.

The US firm cited evidence of the Russian company's bad faith in 1994, when it applied in Latvia for the registration of its trademarks, which are similar to the US company's Smirnoff vodka brand label. According to the American company representatives, the Russian firm only began distribution of the Smirnov vodka in 1998, while the US company has been advertising and selling Smirnoff vodka in Latvia since 1992.

The Riga District Court rejected the US company's petition in favor of the Russian company, but the Supreme Court overturned this ruling.

Fogels was absent from the hearing because he did not have the appropriate form of authorization to submit the appeal.

On its part the Russian company's cassation appeal referred to a Senate decision passed several years ago, which acknowledged the possibility of coexistence between the two trademarks Smirnov vodka and Smirnoff vodka in Latvia.

According to the US company's counsel Ineta Krodere-Imsa, the Senate decision only revokes four of the Russian company's trademarks, but does not yet revoke its right to distribute vodka labeled with this trademark in Latvia.

If there is evidence that sales of the vodka with the cancelled trademark registration have taken place, the US company will file a complaint against the illegal use of the trademark with the dominant Smirnov vodka name.

As reported previously, the US firm justified its petition to cancel the Russian company's registration on the basis of demonstrated use of these marks made in bad faith.

The Riga District Court last February 9 passed a decision unfavorable to the US company.

In its appeals complaint the US firm showed that the court in the first instance had not objectively considered all of the evidence in its possession. The courts paid insufficient attention to the fact that Latvia has joined a number of international conventions in addition to its own legislation, among which are the TRIPS agreement for the protection of trade-related intellectual property rights and Latvia's Competition Law, which to a certain degree limits the coexistence of similar marks.

Yet the main argument behind all of the petitions to have the Russian company's Smirnov vodka trademark registration cancelled, was the bad faith in which it submitted its application to have the trademark registered.

The Russian company believes that while the US company's objection, citing the fact that it registered the trademarks Smirnoff, Pierre Smirnoff and Smirnoff vodka Nr. 21 at the beginning of the 1990's can be considered valid, the court in fact ruled that the Russian company has the right to distribute its Smirnov vodka , because the marks Smirnov vodka and Smirnoff vodka are not confusingly similar.

LETA reported previously that the Supreme Court Senate had left the previous decision of the Civil Chamber in effect, by which it acknowledged that the figurative Smirnov vodka trademark of the Russian company Torgovy Dom Potomkov Postavshchika Dvora Ego Imperatorskogo Velichestva P.A. Smirnova and the trade name P.A. Smirnov I potomki v Moskve could be registered in the Republic of Latvia.