In a previous post titled Trademark Squatting in Kazakhstan: From Russia with Love, we explored how Swedish telecom giant Ericsson successfully defended its trademarks against a Russian company’s attempt to cancel their registration in Kazakhstan. That company, LLC “R-Climate”, a member of the Rusklimat group, had filed lawsuits seeking the early termination of several Ericsson trademarks for alleged non-use. While the Kazakhstani courts saw through the plaintiff’s strategy and rejected the claims, the same dispute happened in Russia — but with a strikingly different outcome.
The Arguments: Non-Use or Bad Faith?
LLC R-Climate filed a lawsuit before the Intellectual Property Court (IPC) in Russia, seeking partial cancellation of Ericsson’s trademarks
(National Registrations No. 205234 
,
207822 
,
253069
and
International Registration No. 1024858 
)
for non-use in relation to Class 11 goods — “devices for heating, refrigerating and ventilating.”
LLC R-Climate asserted its legitimate interest as a leading distributor and importer of climate control equipment in Russia and the Commonwealth of Independent States (CIS). It argued that its application to register a similar mark («Ericsson») had been rejected by Rospatent due to Ericsson’s existing registrations.
Ericsson claimed that its marks were in use through telecommunications equipment incorporating cooling and ventilation components, such as base stations and climate-controlled cabinets. It also pointed to the presence of its marks in customs declarations, license agreements, and promotional materials. Additionally, Ericsson accused LLC R-Climate of engaging in bad faith litigation, referencing similar lawsuits filed in Kazakhstan and suggesting an intent to capitalize on Ericsson’s global reputation.
The Court’s View: Evidence and Territorial Limits
The IPC, acting as both the court of first instance and cassation in intellectual property matters, ruled in favor of R-Climate. On 23 October 2024, its Trial Chamber found that Ericsson had failed to demonstrate genuine use of the disputed marks in connection with Class 11 goods during the relevant three-year period. The court adopted a narrow evidentiary standard, holding that embedded cooling components in telecom equipment did not amount to standalone use for Class 11 goods. Customs declarations, license agreements, and marketing materials were also deemed insufficient due to their lack of specificity and territorial relevance. This position was later upheld by the Presidium of the IPC on 12 February 2025, reinforcing a formal and jurisdiction-specific approach to non-use cancellation claims.
The court also rejected Ericsson’s bad faith arguments. It concluded that LLC R-Climate’s actions did not constitute abuse under Article 10 of the Russian Civil Code or Article 10bis of the Paris Convention. The mere existence of parallel proceedings in Kazakhstan was not enough to prove dishonest intent, particularly since R-Climate had demonstrated active business operations and a legitimate interest in expanding its trademark portfolio.
Ericsson had also invoked the 2002 Chisinau Convention, asserting that Kazakhstani court findings — which upheld Ericsson’s trademarks and deemed LLC R-Climate’s actions abusive — should be recognized in Russia. However, the IPC declined to give preclusive effect to these judgments, noting that the cases involved different evidence and were decided under distinct legal systems. Similarly, the court dismissed arguments based on the Eurasian Economic Union (EAEU) Treaty, affirming that use of a trademark in Kazakhstan could not substitute for use in Russia.
Ericsson further contended that international sanctions had prevented the use of its marks in Russia. The court found this argument unpersuasive, concluding that Class 11 goods — as civilian products — were not subject to any specific import bans. Moreover, Ericsson failed to demonstrate any use even before such restrictions became relevant, weakening its reliance on force majeure.
Conclusion
This dispute illustrates how courts in different jurisdictions can reach opposite conclusions based on similar facts and legal claims. In Kazakhstan, LLC R-Climate’s actions were deemed abusive, while the Russian court focused strictly on whether Ericsson had proven actual use of the marks for relevant goods, without engaging substantively with claims of bad faith.
The Russian court also rejected Ericsson’s sanctions defense, finding no legal barrier to the import or sale of Class 11 goods. The decision reflects a formalist approach: in the absence of clear, jurisdiction-specific evidence of use, neither brand reputation nor external constraints may suffice to preserve trademark rights.
These contrasting outcomes underscore the complexities multinational companies face in managing global IP portfolios — particularly in the current context of the Ukraine–Russia conflict. At the same time, the case offers a valuable example of the types of evidence a Russian court may consider decisive in non-use cancellation proceedings.
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