ALVOGEN PHARMA TRADING EUROPE, a company belonging to Zentiva Group a.s., has successfully defended in court its rights to the trade marks АФЛУБИН / AFLUBIN and managed to have registration of the domain name aflubin.ru cancelled, the defendant not having actually used it.

ALVOGEN PHARMA TRADING EUROPE is the right holder of the trade marks AФЛУБИН / AFLUBIN. For many years, these designations have been used for medicines of the same name for treatment and prevention of ‘flu and respiratory diseases and for treating a number of inflammatory and rhematic diseases. Within Russia, Zentiva Group a.s. is represented by ZENTIVA PHARMA LLC.

The company discovered that, in March 2022, a third party acquired, without its knowledge and consent, the right to administer the domain name aflubin.ru.

No actual use was made of the site and no hosting was carried out. At the same time, existence of an “empty” site administered by a third party creates a number of difficulties. It confuses consumers, reduces attention to official resources and entails risks that the bad faith administrator might place counterfeit medicines on it in the guise of original ones and information discrediting the company or otherwise causing harm.

Failure to use a site for homogeneous goods and services is not, according to the general rule, deemed a breach of trade mark rights and entails dismissal of a claim, which required development of a non-standard legal position.

The right holder, under the guidance of Liudmila Atnagulova, ZENTIVA PHARMA LLC head of legal for Russia and the CIS, and lawyer Sofia Berezovskaya, developed a dispute strategy connected with having the administrator’s actions judicially recognised as unfair competition.

An anonymous offer was sent to the administrator to purchase the domain and they expressed readiness to sell it at a high price exceeding reasonable administration costs many times over. Subsequently, the company endeavoured to achieve a pre-trial settlement of the dispute, offering a reasonable sum to acquire the domain name, but the defendant ignored this.

This dialogue with the defendant made it possible to demonstrate that the defendant had registered a domain analogous to the trade mark not for its own lawful activities but exclusively to derive benefit from abusing its rights. It was specifically the defendant’s unfair competition actions that enabled the right holder to have its claim granted: recognition of infringement on the rights to the trade marks, a ban on administration of the domain and its cancellation.

The company was advised on the procedural aspects of the dispute by BGP Litigation IP and Dispute Resolution Practice’s Senior Associate and Advocate Anastasia Dudko and Paralegal Polina Bychenok.

This was not the first high-profile case involving protection of the rights to Zentiva Group intellectual products in recent times. In 2022, the company won a dispute against a bad faith counterparty that, after production site transfer, used the company’s utility model to produce its own medical device Duolor, a virtual copy of the ZENTIVA PHARMA Dolphin device.