On July 11, 2017 the Civil Disputes Judicial Board of Russian Supreme Court published a long-awaited Ruling in case No. 53-KG17-12.
Under the merits of the case, in 2016 the charity fund for helping children with oncohematological and other serious diseases “Podari Jizn” (CF “Podari Jizn”) filed a lawsuit against a copycat, non-profit charity fund «Podari Jizn» (NP CF “Podari Jizn”), seeking to prohibit the same word combination in the naming.
The plaintiff alleged that NP CF «Podari Jizn» contravened the exclusive right to non-profit organization name when it registered and used the same naming.
However the courts of the first and appeal instances denied the claims on the ground that non-profit organization name is not de jure listed as an IP asset in the Civil Code and therefore is not subject to judicial protection.
This conclusion was strongly criticized by the Supreme Court. The superior instance noticed that a unique non-profit organization name shall be classified as a non-property civil right, rather than an IP asset. Therefore, those non-profit organizations, which registered their names in due course, shall enjoy the exclusive right to use and protect them against any copycat.
To succeed in such dispute, the plaintiff shall evidence a few facts:
- the plaintiff has duly registered its non-profit organization name
- the defendant has used the same name
- the defendant’s intent is to use the name for misleading purposes
If evidenced, registration and use of a non-profit organization name by the defendant shall be prohibited by court as an act of bad faith and infringement.
It should be noted that the same issue was already raised in para. 58.2 of the Supreme Court Plenum’s Resolution No. 5, Supreme Arbitrazh Court Plenum’s Resolution No. 29 as of March 26, 2009, under which non-profit organizations were deprived of the “traditional” right to company name. However the courts did not offer an alternative remedy, which for a long time made it almost impossible to enforce non-profit organization names against copycats.
We believe that the recent clarification of the Supreme Court has brought a positive impulse for further development of court practice in the disputes of protection of brands of non-profit organizations.