Background

R. K. Dewan & Co (RKD) represents ‘KamaSutra’, India’s second largest condom brand owned by J.K. Ansell Limited (J.K.Ansell), which is a joint venture between the ‘Raymond Group’, India’s largest fabric and branded apparel company, and Ansell Limited, a world leader in barrier healthcare protection. The ‘KamaSutra’ brand was launched in the year 1991 and J.K.Ansell exports condoms to over 70 countries worldwide. R. K. Dewan & Co. assisted J. K. Ansell in registering the brand in almost every market in the world.

Facts

The trademark ‘Kama Sutra’ was registered in Russia since the year 1995 in respect of ‘condoms’. Close to the end of 2012, one PromBusinessGroup LLC (PromBusiness) of Russia filed a trademark Cancellation lawsuit before the Moscow Arbitrazh Court against the ‘Kama Sutra’ registration on the ground of alleged non-use. Apparently, the cancellation suit was filed and taken up without any notice to J. K. Anssell. During the preliminary hearing in May 2013, the Court found that there was no evidence of proper notice to J. K. Ansell. The Court ordered the claimant Petitioner to take measures to serve a proper notice on J.K. Ansell so that it could be heard and file its say before passing any order. Accordingly, the case was postponed to August 2013 for serving notice as well as for filing J. K. Ansell’s reply. The Petitioner merely served the Court Notice without any suit papers on J.K. Ansell in the first week of August 2013, with only a few days left for the scheduled hearing. Since a Consular legalized Power of Attorney is a must for representing a foreign party before the Moscow Court, it was a herculean task to even arrange the basic minimum documentation, let alone file the Respondent’s reply to the Suit or collate use evidence, within such a short notice. But as is usual for us, in a swift action with the client’s support, R. K. Dewan & Co. could file a proper representation before the Moscow Court in a timely manner. The cancellation suit was based on the ground of alleged non-use of the mark by J.K.Ansell in the Russian Federation within the last 3 years before the filing of the cancellation action and PromBusiness referred to the filing of its trademark application for registration of the mark KAMASUTRA as a ground to establish its lawful interest. As part of the strategy, RKD advised J.K. Ansell to vehemently oppose the Cancellation action on the ground that PromBusiness is not a ‘person aggrieved’ to challenge the subject registration in the first place. Like many countries, Russian Trademark law too provides that a non-use cancellation action can be initiated only by a ‘person aggrieved’. In the instant case, the extracts obtained from the local tax records of the Petitioner revealed that the business activity of PromBusiness related to real estate, and not to the manufacturing of condoms. Therefore, the claimant’s business was far from manufacturing of condoms and consequently, PromBusiness could not be considered as ‘person aggrieved’ to seek cancellation of J.K. Ansell’s registration. Mere filing of a trademark application does not automatically entitle the claimant to be an aggrieved person. J.K. Ansell prayed for dismissal of the Cancellation lawsuit. After considering the arguments, the Court dismissed the Cancellation suit on the ground that PromBusiness could not prove its legitimate interest in the cancellation of the “Kama Sutra” registration owned by J.K. Ansell. PromBusiness went in appeal to the Russian Court of Appeal challenging the Decision of Court of the First Instance. The Court of Appeal confirmed the first instance decision and dismissed the Appeal. R.K. Dewan & Co. assisted J.K. Ansell both in defending the Cancellation lawsuit and for the Appeal.

 

-- Authors: Advocate Dinesh Nair & Dr Mohan Dewan

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