There is a company in St. Petersburg that assumed an Italian-style name Fortezzo. Fortezzo trades in industrial equipment. In 2021 it registered the Chinese-looking word SHIJING as a trademark No 798022 in Class 07.  

Several years later, Zhejiang Shijing Tools Co., Ltd. appealed against the registration. The reason for the appeal was that the trademark Shijing is part of the company name of the Chinese company. The word Zhejiang is the name of a Chinese province, while the word Shijing has no meaning. At least that was the explanation given by the Chamber of Patent Disputes, while other sources say that Shijing is actually classic Chinese poetry – the oldest collection of Chinese poetry, in fact, translated as the Book of Songs, allegedly compiled by Confucius. 

Shijing is the main distinguishing part of the company name, while other elements point to the origin of the company and its specialization. The trademark literally reproduces the distinguishing part of the company name.  

The right to the company name Zhejiang Shijing Tools Co. emerged in 2011, long before the priority date (2019) of the disputed trademark. The company manufactures and sells metallic tools, pneumatic and electrical tools, measuring equipment and many other tools, selling its products on the Russian market through intermediaries. To confirm this statement, the company submitted a number of documents showing the presence of its products on the market. 

Some of the goods relative to the tools in the disputed trademark are similar to the products manufactured and sold by the company in Russia. 

The Chinese company was recognized as an interested person because it manufactures and sells the above products. The owner of the disputed trademark may derive unlawful advantages from the use of the similar trademark. The Chinese company may lose consumers and profits because of such unlawful use. 

The Chamber of Patent Disputes agreed that registration of the trademark had been made in violation of the law, given that the name of the Chinese company predates registration of the trademark. The Chinese company asked the Chamber to cancel registration of the trademark in respect of the goods in Class 07, i.e., those goods that it sells in Russia. 

The trademark owner objected to the appellant’s arguments. He put in question the interest of the Chinese company in filing the appeal which, in theory, is a sufficient basis for dismissing the appeal. 

As for protection of the company name, according to Article 8 of the Paris Convention, the trademark owner argued that protection of the company name shall be available only if the company does business in Russia.  

According to the trademark owner, presence of the goods of the company on the market cannot confirm that those goods came to the market as a result of activity of the Chinese manufacturing company. 

On the contrary, the disputed trademark, according to the trademark owner, became known in Russia  because of the manufacturing activity of Fortezzo company, which is proved by some statistical data. 

The trademark owner stated that behaviour of the appellant – his claim to cancel the trademark – shows his bad will as an actor in economic relations. 

To counter those allegations the Chinese company provided a copy of the contract dated April 2019 with Fortezzo company (sic), according to which, it was selling its product to Fortezzo, which means that it was present in the Russian market. The contract was signed in the Russian territory in St. Petersburg and proved that the company name is used in Russia. 

The documents on file show that the Chinese company collaborated with several Russian companies and supplied goods to them under its name. The contract concluded with Fortezzo is a standard supply contract and it does not contain any provisions regarding special rights given to Fortezzo. There are no documents showing permission of the Chinese company to register the trademark in the name of Fortezzo. 

The Chamber of Patent Disputes heard the arguments of both parties and concluded that the law (Article 1483 of the Civil Code) does not allow registration of the trademarks similar or identical to company names protected in Russia.  

The company name was registered in 2011 and has been protected in Russia since then. 

The trademark owner argued that the name of the company is not widely known in Russia, to which the Chamber explained that the law does not require that the company name be famous.  

As for the arguments regarding unfair competition and abuse of rights by the Chinese company, the Chamber of patents Disputes explained that those issues are outside the competence of the Chamber. 

Finally, the appeal of the Chinese company was satisfied. The question remains: why a company wishing to sell goods in Russia or concluding contracts with Russian counterparts neglects registration of its trademark.