Russia
In August 1991, the Soviet patent office revoked the Soviet state-owned company's right to use the Stolichnaya name in Russia. However, in 2002, a Moscow court ruled, on appeal, that as a result of the incomplete privatisation, the Russian government should get back the rights to the Stolichnaya brand name from SPI Group since SPI had not obtained the rights from the legal holder.[30] An appeal by SPI to the European Court of Human Rights was rejected.[31]
Austria
In 2014, the Oberlandesgericht (OGL, "higher regional court") of Linz decided that FKP could not base its request on the nullity of the privatization/transformation, as that possibility had a term of limitation of 10 years according to the applicable law in Russia (if the term of limitation defense had been actively relied upon), and thus FKP could not claim that SPI had not obtained the trademarks from the owner.[32]
In 2020, the Austrian Oberste Gerichtshof (OGH, "Supreme Court of Justice") – the highest civil court in Austria – upheld the 2014 decision. SPI has therefore exhausted all options in the Austrian justice system.[33]
Benelux
In the Benelux countries (Belgium, Luxembourg, and the Netherlands), SPI has been the distributor, but use of the trademarks was challenged in 2006 by the FKP Sojuzplodoimport. In 2015 a Dutch court held that, according to Russian and Soviet law (and a term of limitation had not been invoked regarding the transfer), the privatisation had not taken place, and that Benelux law and (when provisions were insufficient) Dutch law applied to the transfer of the trademarks. the court ruled that SPI had obtained the trademarks in bad faith from an entity that wasn't the legitimate owner. The trademarks should be transferred back to FKP Sojuzplodoimport and SPI could not use the term "Russian" on its vodka.[34]
After the verdict, SPI stopped distribution of Stolichnaya and started selling "Stoli" with the motto "Same Vodka. Different label". That was forbidden by a Dutch judge in July 2015, on the grounds that it infringed the rights of FKP Sojuzplodoimport.[35] FKP Sojuzplodoimport planned to start selling Stolichnaya in the Netherlands on 1 September 2015.[36]
The Benelux trademarks were seized in March 2024 to enforce a $50 billion arbitration claim by former shareholders of the oil company Yukos
Other European states
SPI Group holds the rights to several Stolichnaya trademarks in the United Kingdom, Ireland, Italy, Denmark, Portugal, the Czech Republic, Spain, Cyprus, Poland, Norway and Iceland. In a lawsuit before the Court of The Hague, FKP Sojuzplodoimport sought an order to have the trademarks returned to it from several SPI companies. The Hague court assumed jurisdiction based on two Brussels Regime instruments: Brussels Regulation 44/2001 (for the EU countries) and the 2007 Lugano Convention (Norway, Iceland). It ruled that, because the dispute did not relate to trademark validity (for which national courts have jurisdiction) but to trademark registration, it did have jurisdiction, because a main defendant was located in the Netherlands. To evaluate the validity of the trademarks, it would use the national law of the trademarks concerned.[38]
United States
PepsiCo had been the distributor of Stolichnaya based on an agreement with the Soviet government. The change in control of the trademarks and production facilities led to several lawsuits over which company could market vodka under the Stolichnaya name in the United States. On November 20, 1992, a US federal judge ruled that PepsiCo could maintain the exclusive right to the name in the United States, because allowing others to market under the name would bring a "risk of irreparable harm" to the trademark.[39]
In 2009 William Grant & Sons signed an agreement with SPI Group to distribute Stolichnaya in the United States, taking over from PepsiCo. The William Grant & Sons distribution contract expired on December 31, 2013, and was not renewed, due to the desire of the SPI Group to manage its brand directly.[40]
In 2006 FKP Sojuzplodoimport brought an action against the owner of the mark Spirits International N.V., et al. in 2005. The district court dismissed almost all claims on a motion to dismiss, holding that the incontestable status of the registration meant that FKP Sojuzplodoimport couldn't challenge ownership. However, in 2009, the Court of Appeals for the Second Circuit overturned that decision, stating that FKP Sojuzplodoimport could challenge the validity of the assignment of the trademark.[41]
