Six scholars, three courts, one answer: a distributor who secretly registers the principal's mark loses protection – in full

IP Court of Russia · April 2025 – January 2026 · Case No. СИП-1321/2024

Individual entrepreneur K. Solovyov served as CEO and sole owner of LLC "Gruppa RSK" — the official distributor of German company Sikla GmbH in Russia and the CIS. Alongside his distribution activities, Solovyov registered the mark "sikla" (Russian Certificate No. 823172) in his own name, covering a broad list of services in ICGS classes 35 and 40.

The holder of the conflicting earlier marks — Austrian parent company Sikla Holding GmbH (priority of the senior mark: 27 September 1990) — filed an opposition with Rospatent. The agency upheld the opposition and cancelled Solovyov's registration in full. Solovyov challenged that decision before the IP Court.

The central question — whether it is necessary, for the purposes of Article 6.septies of the Paris Convention, to establish homogeneity of the goods/services of the agent's mark and those of the principal's senior mark — proved sufficiently controversial that the IP Court Presidium consulted six leading IP scholars.

Academic opinion was divided. Murzin, Starzhenetsky and Shebanova held that homogeneity need not be established. Vorozhevich agreed, subject to proof of the agent's bad faith. Voinikanis and Orlova, by contrast, considered homogeneity analysis mandatory and supported only partial invalidation.

A majority of the scholars also characterised the cancellation of the agent's mark as a sanction for abuse of the principal's trust, rather than a mere protective remedy.

The IP Court Presidium sided with the majority and confirmed that Article 6.septies requires proof of only three elements:

1. The opponent holds earlier rights to a mark in a Paris Convention country;

2. Agency, representative, or distribution relationships existed between the proprietor of the contested mark and the opponent (or their affiliates);

3. The identical or similar sign was registered without the principal's consent.

The court held explicitly that homogeneity of goods/services is not required. Imposing such a criterion would undermine the very purpose of the provision — preventing agents from exploiting the trust placed in them. Otherwise, an agent could simply register the mark for dissimilar goods and services to circumvent the prohibition.

The concept of "agency" is construed broadly: any contractual arrangement for distributing goods bearing the mark in Russia, including via affiliated entities, suffices. That the distribution contract was concluded with a legal entity rather than Solovyov personally was immaterial — as its sole director and owner, he formed a single group with the company.

Good news for foreign rights-holders: if your Russian distributor has registered a similar mark without your authorisation, you may seek full cancellation of its protection — even where the distributor's goods and services do not overlap with your own. The fact that you have ceased commercial activity in Russia is irrelevant. The Supreme Court of the Russian Federation upheld the IP Court's position, declining to refer the case (ruling of 12 January 2026).

Case documents:

📎 IP Court judgment, 24.04.2025 · Case No. СИП-1321/2024 (PDF)

📎 IP Court Presidium ruling, 24.09.2025 · Case No. СИП-1321/2024 (PDF)

📎 Supreme Court ruling, 12.01.2026 · No. 300-ЭС25-13799 (PDF)