The Ninth Arbitration Court of Appeal has left the decision of the first instance standing. In accordance with that Rado Uhren AG (Switzerland), the producer of prestigious chronometers, won an action within the hearing with Holmrook ltd (British Virgin Islands). RADO trademark was subject of the dispute. The Ninth Arbitration Court of Appeal dismissed Valentina Merkushina’s appeal. She was the third party within the bounds of the case. The proceeding was terminated on the analogous appeal filed by Nikolay Mikhailuk, the third party.
The disputed decision was taken by Moscow Arbitration Court of Appeal on September 9th, 2011. Rado Uhren requested annulment of rado.ru domain registration. This domain was owned by Holmrook. The Moscow court prohibited the British company from using “rado” designation in its network domain. The court also made a decision to recover 50 000 RUR in favor of Rado Uhren as a compensation for unlawful trademark use. In accordance with the case documents (А40-4517/2011) that was held by the judge, Lubov Barabanshikova, Rado Uhren is the right holder of the exclusive rights on RADO word trademark, under the international registration, that covers Russia as well. The priority date is May 14th, 1987 in respect of goods at Class 14 of the Nice Classification (Watches and Clockworks).
Rado.ru domain, that has been owned by Holmrook, was registered in 1999, thus it was later then the Plaintiff’s trademark was registered. Currently the site about Tibor Rado, the Hungarian mathematician, is placed on the domain. The court considered rado.ru domain as confusingly similar with RADO, the Plaintiff’s trademark. Even though, Holmrook does not compete with Rado Uhren in the sphere of watch production, the Defendant abuse its rights, established The Moscow Arbitration Tribunal.
The court addressed to the Article 10 bis under the Paris Convention on industrial property protection by making the decision in favor of Rado Uhren. In accordance to that “all the actions that can cause by any means confusion in respect of companies, products, industrial or trading activities of a competitor are subject to prohibition”. The court has taken the decision that because of the popularity of the Plaintiff’s trademark and business name, rado.ru domain, that was owned by Holmrook, attends potential customers of Rado Uhren’s goods which use Internet. The customers while searching information on the Plaintiff’s goods go to the page www.rado.ru and observe that there is no information related to Rado Uhren watches. The court adjudicated that because of this circumstance the Plaintiff can loose potential customers of the chronometers produced. In this connection claims were satisfied. The decision was appealed, now the decision is expected.
Another Swiss watch brand that is Tissot has the analogous claims to Holmrook Limited. Holmrook owns tissot.ru address. The Moscow Arbitration Tribunal took the Tissot’s side and bound the Defendant by a commitment. Holmrook is obliged to terminate domain use and compensate 50,000 RUR in favor of the Plaintiff. The Moscow Arbitration Tribunal denied Holmrook company a right on longines.ru domain; the company is also obliged to pay the analogous compensation in favor of Longines Watch.