No Trademark Pirate Can Avoid CANON Fire by Vladimir Biriulin

No Trademark Pirate Can Avoid CANON Fire by Vladimir Biriulin, Partner at Gorodissky & Partners, Russia. In The Global IP Magazine Issue 24, Vladimir Biriulin, Partner at Gorodissky & Partners, Russia, analyses a significant Russian court case in which Canon successfully defended its well-known trademarks against cancellation and imitation attempts by a local company. The case provides timely insight into non-use cancellation claims, proof of legitimate interest, and the risks faced by foreign brands that temporarily suspend operations in volatile markets.

Canon’s Longstanding Presence in Russia

Canon entered the Russian market more than 25 years ago, establishing itself as a trusted supplier of optical, imaging, and high-tech equipment. Through sustained market presence and strategic expansion, Canon built strong brand recognition among both amateur and professional consumers. Over time, the company secured multiple trademark registrations in Russia, covering goods in Class 9, including cameras, printers, scanners, and related equipment. Market Suspension and Emerging Risks

In 2022, Canon temporarily suspended business operations in Russia amid geopolitical and economic volatility. Russian trademark law permits cancellation of a mark if it has not been used for three consecutive years, provided that an “interested person” can demonstrate a legitimate intention to use the mark. This legal framework has created opportunities for opportunistic filings when foreign companies reduce or suspend activity.

The Cancellation Attempt

Stroyresurs Ltd., a Russian company, filed a similar trademark application in Class 9 and later initiated non-use cancellation proceedings against Canon’s registered marks. To demonstrate its “interest,” Stroyresurs submitted preliminary contracts and documentation suggesting plans to market electronic locks and related goods under a similar designation. Canon argued that the plaintiff’s true intent was to exploit the reputation of its well-known marks rather than to engage in genuine commercial activity. Court Analysis: Interest and Similarity

The court examined whether Stroyresurs had demonstrated a legitimate and timely commercial interest. Crucially, the documentation supporting its claimed intent was created only after a formal request that Canon abandon its trademarks. The court concluded that this sequence undermined the credibility of the plaintiff’s claimed interest. Additionally, consumer survey evidence demonstrated that a significant percentage of respondents associated the disputed designation with Canon, reinforcing the company’s strong market recognition and the likelihood of consumer confusion. A Pattern of Aggressive Filings

The case was not an isolated attempt. Stroyresurs had previously succeeded in cancelling another Canon trademark in a different class, emboldening further action. However, in this instance, the court dismissed the claim, finding that the plaintiff had failed to prove genuine interest and that the similarity between the marks risked misleading consumers.

Strategic Lessons for Foreign Trademark Owners

The decision underscores a key lesson for international brands operating in Russia and similar jurisdictions: temporary market withdrawal can expose trademarks to non-use challenges. While the court rejected the cancellation claim in this case, the risk remains for companies that fail to demonstrate ongoing use within the statutory period. Some businesses have responded by refilling marks to reset the non-use clock, while others strategically maintain limited but genuine sales activity through authorised agents to preserve their rights.

Conclusion

Canon’s successful defence highlights the importance of proving legitimate interest in non-use cancellation proceedings and demonstrates how courts scrutinise opportunistic filings aimed at capitalising on well-known brands. For foreign companies navigating uncertain markets, maintaining demonstrable trademark use even at a minimal level may be the most effective safeguard against cancellation and imitation.

Read the full article in The Global IP Magazine Issue 24, essential reading for trademark practitioners, brand owners, and international businesses facing non-use challenges and bad-faith filings in complex jurisdictions.

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