For a decade ophthalmologic products of URSAPHARM, one of global leaders in ophthalmologic pharmaceuticals, have been present in the Russian market.
After filing an application for registration of its trademark in Russia, the company received the refusal of registration from the Russian PTO which cited a prior similar trademark “Helamax” owned by a small same-name Russian company.
As both trademarks are similar indeed, it was not possible to overcome the refusal by mere arguments, and URSAPHARM did not wish for obvious reasons to do a rebrand after a decade of successful presence in the market.
Under the circumstances, the AGP team first worked out a strategy for protecting the interests of URSAPHARM by delineating the interests of the two companies. An attempt was made to settle the conflict amicably.
Helamax LLC was dead set against negotiations and AGP lawyers brought a legal action for cancelation of the trademark “Helamax” due to non-use for pharmaceutical products relevant to URSAPHARM.
Deep knowledge of subtleties of the procedural law allowed our team to handle in parallel two interrelated proceedings in the IP Court: for cancelation of the prior registration of the trademark “Helamax” and for overcoming the Russian PTO’s refusal of registration of “Hylomax-COMOD”.
Thanks to the tactics chosen, first the cancelation lawsuit against “Helamax” was won, which then secured success in overcoming the Russian PTO’s refusal of registration of “Hylomax-COMOD”.
As a result, the Russian PTO has registered the trademark “Hylomax-COMOD” for pharmaceutical products in which URSAPHARM is interested, while the Russian company’s trademark registration “Helamax has been declared valid for veterinary products only.
AGP partner Elena Gorodisskaya, head of Intellectual Property, and senior lawyer Veronika Popelenskaya represented URSAPHARM.
