The Intellectual Rights Court has ruled on the trademark OCULUS / ОКУЛЮС

Facebook Technologies LLC had brought an action before the Intellectual Rights Court against ECO LLC claiming early termination of legal protection of the trademark Oculus/Окулюс which is registered in the Russian Federation for a number of services in Сlass 41, due to its non-use for more than three years before the proceedings.

To substantiate its interest in the outcome of the case, the plaintiff submitted inter alia evidence that following acquisition of Oculus VR, LLC (virtual reality game development company), it had been providing services under the OCULUS brand worldwide, similar to those services in respect of which the disputed trademark was registered (providing recreation facilities, entertainment, education, sports, cultural events and other services in Class 41 of the Nice Classification). Facebook intends to develop this business, including in Russia, which requires termination of legal protection of the said trademark. The CIP action was preceded by an offer by the plaintiff to ECO LLC to abandon the trademark, or enter into an agreement for assignment of the exclusive right thereto. 

ECO LLC owns a chain of veterinary clinics in St. Petersburg and the trademark Oculus/Окулюс registered in 2016, which expires in 2025. Despite an attempt to defend its registration, the company failed to prove in court that it had been actually using Oculus/Окулюс trademark.

The court satisfied Facebook’s claims partially and ruled for early termination of the trademark protection in relation to certain services of class 41 (such as education, entertainment, organization of sports and cultural events). Still, ECO LLC retained the right to use Oculus/Окулюс mark for provision of animal training services, modelling for artists, publication of books, videotape editing, film production, etc.

Here is the comment by the patent attorney Svetlana Koroliova:

In Belarus, trademark non-use cancellation actions are lawsuit cases to be resolved by the Intellectual Property Chamber of the Supreme Court. A plaintiff must prove that he has an interest in the outcome of the case (most commonly, that he is a manufacturer of respective goods), as well as that the disputed trademark has not been in use during the whole period in question. As for a defendant, he does his best in order to prove actual trademark use. The Court shall satisfy a lawsuit only in part related to those goods, for which both non-use and plaintiff’s interest have been proven.