22 February 2012
Pavel Sadovsky comments on trademarks registering for RIA Novosti

Urals Firm Wants Rights to Playboy Condoms

A company in the Urals has sued for the rights to the Playboy trademark, saying that the current owner, Playboy Enterprises, is not using it to produce condoms and lubricants like it ought to.

Moscow Arbitration Court accepted two lawsuits from Ufa-based Tekhnoservis firm asking it to terminate Playboy Enterprises rights to the trademark, local news website Proufu.ru said on Wednesday.

Playboy Enterprises should get to keep publishing its famed magazine unperturbed, but other companies should get to use the trademark to make condoms and other sex products, a business that the publisher is not involved in in Russia, Tekhnoservis head Azamat Ibatullin told the website.

No date for a hearing was set as of Wednesday. Playboy Enterprises did not comment on the story.

The lawsuit is normal business practice because foreign companies often register “umbrella brand” trademarks, covering many types of goods and services they don’t actually produce or provide, said Pavel Sadovsky, Senior Associate at Egorov, Puginsky, Afanasiev & Partners.

A company can sue to have a trademark annulled for trade in certain goods – including sex products – if it is not used for three years prior to the lawsuit, and it is up to the trademark holder to disprove the claim, Sadovsky said by telephone on Wednesday.

Ibatullin has a track record of unusual trademark hunting. Last year, he sought the rights to Belomorkanal, an ultra-strong brand of cigarettes from pre-war Soviet days, known to be confused with marijuana by uninitiated foreigners due to its heady fragrance.

He also filed a trademark registration request for Analgin, an analgesic also known as Metamizole, another ultra-popular Soviet brand produced by more than 50 companies, none of which moved to obtain the rights to the brand.

The Federal Service for Intellectual Property is considering both requests, Proufu.ru said.


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