Yandex will acquire the rights to the K Pro trademark, registered 15 years ago, from an electrical engineering plant that operated as part of the French Legrand Group. The foreign company left the Russian Federation amid sanctions and sold the plant. At the same time, the company is trying to register its own “Pro” trademark with Rospatent. Yandex explained that the K Pro trademark does not allow them to do this.
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Yandex LLC filed a lawsuit in the Intellectual Property Rights Court against Kontaktor LLC, a former company of the French manufacturer of electrical products and smart solutions for modern buildings Legrand Group. In 2023, Legrand decided to leave the Russian Federation amid sanctions and sold the business to IEK Holding LLC, which had already begun to change its name.
Yandex decided to acquire the rights to the trademark “K Pro” owned by Kontaktor in blue and black and white, since the plant does not use them, although it extended the validity period until 2028, according to the court file. The company RB.RU explained that this trademark does not allow registering its own “Pro” for the prefix “Alice Pro”
Yandex is demanding to terminate the legal protection of the K Pro trademarks in relation to all goods in class 9 and services in classes 39, 41, 42 of the International Classification of Goods and Services for Trademark Registration (ICGS). Court materials indicate that the parties are taking steps to peacefully resolve the dispute. The court decided to schedule an in-person hearing for August 15.
“We are discussing with Kontaktor the conditions under which both companies, which are engaged in different types of activities, could continue to use the Pro brand. Filing a complaint is only a legal formality for continuing the discussion,” a Yandex representative told RB.RU.
ICGS Class 9 includes computers, gaming devices, microprocessors, memory cards, monitors, screens, keyboards, cables, modems, printers, disk drives, and other equipment. ICGS Classes 39, 41, and 42 include news services, virtual voice assistants, computer programming, file storage, etc.
At the end of 2023, Yandex submitted an application to Rospatent to register its own trademark “Pro” with the unprotected element “Pro”, but as of the end of 2023 it has still not passed the examination.
“Pro” is a common name for premium accounts. Whether it’s “pro”, “premium” or “plus”. It’s an established practice that people understand,” Vadim Dunaev, creative director of the Name Bureau and host of the Telegram channel of the same name, told RB.RU.
The expert noted that Yandex may have the opportunity to register the rights to the graphic element. “Pro” is a commonly used term that is not subject to registration, so it is expected to appear in the “Unprotected elements” column of the Yandex application. Dunaev notes that in fact only a round badge is registered on it. While the patent office is examining the application, the expert must answer two questions:
- Does such a sign have a “distinctive power” as a whole? That is, will consumers be able, thanks to this sign, to distinguish the products of one manufacturer from those of another?
- Has a similar graphic mark been registered previously?
If the answers to both questions are positive for the applicant, then the application has every chance of being successfully registered, Dunaev added.
According to Raisa Donskoy, head of the Property Management Department at the International Research Institute on Management Problems, an attempt to obtain trademarks with the common prefix “Pro” seems very dubious.
“Someone needs to register the rights to the word ‘Internet’ as well, and the whole of Yandex will be out of business,” the expert says ironically.
Earlier, Yandex filed a lawsuit against the owner of the Open Kitchen trademark.
Author:
Ekaterina Strukova
Source: RB
I am a professional journalist and content creator with extensive experience writing for news websites. I currently work as an author at Gadget Onus, where I specialize in covering hot news topics. My written pieces have been published on some of the biggest media outlets around the world, including The Guardian and BBC News.
