Until recently, Aqua Investments Group, a client of the Firm, in cooperation with Kavminkurortresursy JSC, had successfully protected their exclusive geographical indication (GI) rights to the products Yessentuki N4 and Yessentuki N17 (GI Yessentuki). In most cases, the holder of the GI rights had managed to prevent competitors from launching counterfeit products attempting to use the well-known healing diets and mineralized healing water brands.
However, in a recent dispute, the client faced particular difficulties in proving that its geographical indications had been infringed upon by the Yessentuki-based Universal Mineral Water Bottling Plant Aqua-Vait LLC. Despite including the geographical indication “Yessentuki” in their product’s title, the infringing company was extracting mineral water from other wells, and its composition was different from that of the original Yessentuki N4 and Yessentuki N17 mineral waters.
The Stavropol Krai Arbitrazh Court, which considered the client’s claims in the first instance, denied protection of its lawful rights saying that the infringing company was using its own trademarks Spring Alley N4 / N17, and that the word “Yessentuki” – written on the counterfeit labels – only referred to the general area where the mineral waters were being produced with no links to the well-known GI Yessentuki. One decision was upheld by the appellate-instance court; the other decision was overruled but then successfully challenged by the opponent in the cassational court. At this point the client sought legal assistance from the Firm.
The strategy developed jointly by Egorov Puginsky Afanasiev & Partners and the client reversed this practice at the Intellectual Property Court (cassation instance) and proved that the geographical indication used by Universal Mineral Water Bottling Plant Aqua-Vait LLC infringed upon the exclusive rights of GI Yessentuki N4 and Yessentuki N17 held by the client’s companies. The court decided that the infringing company’s products shall be withdrawn from the market and destroyed at its expense.
The client was represented in the Intellectual Property Court by Irina Kosovskaya, IP / TMT Counsel at the Firm, under the supervision of Partner Dmitry Dyakin. Junior Associate Stepan Abramov assisted in the project.