Registration issues of trademarks incorporating official symbols

From time to time, objects that are part of the official symbols are included in trademarks - accidentally or intentionally, in order to attract the attention of consumers.

In accordance with Art. 1231.1 of the Civil Code of the Russian Federation [1], objects that include, reproduce or imitate official symbols, names and distinctive signs (or their recognizable parts) cannot be registered as a trademark, namely:

• state symbols and signs (flags, emblems, orders, banknotes, etc.);
• names of international and intergovernmental organizations (including abbreviations), their flags, emblems, other symbols and signs;
• official control, guarantee or hallmarks, seals, awards and other insignia.

Such objects, their recognizable parts or imitations may be included in a trademark as an unprotected element, if there is the consent of the relevant competent state body, body of an international or intergovernmental organization.

It is interesting to follow in practice, the consent of which particular subjects Rospatent accepts as appropriate. Here are some examples:

• for the registration of a trademark АТФ, the consent of the Heraldic Council under the President of the Russian Federation - the State King of Arms was required, since the designation contained the Russian flag [2];
• in order to register a trademark RUOPT.COM, including the designation of the ruble, it was necessary to provide the consent of the Central Bank of the Russian Federation [3];
• the consent of the Green and Red Cross, respectively, was required for the registration of the designations ЕВРОМЕД КЛИНИКА [4] and ADОННИС [5];
• the registration of the designation OLIMP LABS was granted the consent of the International Olympic Committee [6].

Cases in which the decision of Rospatent containing the assessment of the designation in accordance with Art. 1231.1 of the Civil Code of the Russian Federation, are not numerous, but are of practical interest.

For example, in cases of 2022 N SIP-1079/2021 and N SIP-1080/2021 [7], trademarks РБ N 777957 and РБ Рейтинг Букмекеров N 668247 were registered in the name of the LLC, but their registration was challenged under paragraph 2 of Art. 1483 of the Civil Code of the Russian Federation (registration of designations that relate to objects not subject to legal protection in accordance with Article 1231.1 of the Civil Code of the Russian Federation) - but Rospatent refused to satisfy the objections. This served as the basis for the applicant's appeal to the Court for Intellectual Property Rights.

The main argument of the applicant was the following: the letter combination "RB" is used as an abbreviation for the name of the subject of the Russian Federation - the Republic of Bashkortostan, in connection with which the registration of the element "RB" of the disputed trademark contradicts paragraph 2 Art. 1483 of the Civil Code of the Russian Federation.

However, the IP Court, like Rospatent, considered that the letter combination "RB" could act as an abbreviation for various designations, including such as the Republic of Bulgaria, the Republic of Belarus, the Republic of Bashkortostan, the Republic of Buryatia, etc. At the same time, the unambiguous perception of the specified letter combination as “Republic of Bashkortostan” has not been proven, therefore, the grounds for concluding that the registration of the letter combination “RB” does not comply with the provisions of paragraph 2 Art. 1483 of the Civil Code of the Russian Federation are absent.

Moreover, the court noted the absence of the applicant's interest in challenging the granting of legal protection to the trademark on the basis of the norm under consideration. The IP Court pointed out that, if signs, including official symbols, names and distinctive signs, are registered as a trademark, then the person interested in challenging the granting of legal protection to the trademark may be the relevant competent state body, body of an international and intergovernmental organization, while as the applicant did not have such a status.

Also interesting is the practice in which the Chamber for Patent Disputes evaluated the designation differently than Rospatent during the examination process, and recognized registration as possible, refuting the inconsistency of Art. 1231.1 of the Civil Code of the Russian Federation.

For example [8], the designation IPEK was recognized by Rospatent as similar to the official emblem of APEC (eng. Asia-Pacific Economic Cooperation), however, the failed copyright holder objected, citing the lack similarities.

The Board of the Chamber noted that APEC trademarks are indeed protected designations, but the difference in sound in the initial part of the designations is a significant factor due to the small length of words; at the same time, the word element "Ipek" is fantasy and is not associated with the designation APEC in a semantic sense. The board also pointed out the difference in the overall visual impression.

As a result, the Board of the Chamber considered that the designation could not be considered as inconsistent with Art. 1231.1 of the Civil Code of the Russian Federation and canceled the decision of Rospatent.

In the case on the designation MOCEUTICALS [9] Rospatent also refused to register on the basis of paragraph 2 Art. 1483 of the Civil Code of the Russian Federation due to the fact that the pictorial element in the form of a red cross is confusingly similar to the official emblem of the International Committee of the Red Cross, and the applicant did not provide the consent of the relevant competent authority.

In the objection, the applicant referred to his own request to amend the application materials by changing the color scheme of the applied for designation, in connection with which the legal protection of the designation is requested in black and white. According to the Applicant, these changes further reinforce the original differences between the declared designation and the official emblem of the Red Cross.

The Board of the Chamber accepted these arguments and drew attention to the fact that the first and main emblem of the ICRC is a red cross on a white background, however, the change in the declared designation was carried out in such a way that the new designation "MOCEUTICALS" no longer contains a red cross, and the exclusion of this element from composition of the claimed designation eliminates the reasons for refusing registration.

Thus, it can be concluded that the reason under consideration for refusing registration or invalidating it is not the simplest and most unambiguous, like any reason requiring a comprehensive comparison of designations.

Sources:

1.Civil Code of the Russian Federation (Part Four) dated December 18, 2006 N 230-FZ

2.Conclusion of the Chamber for Patent Disputes dated 11/18/2021 (Appendix to the decision of Rospatent dated 12/18/2021 on application N 2020727969)

3.Conclusion of the Chamber for Patent Disputes dated April 17, 2019 (Appendix to the decision of Rospatent dated May 16, 2019 on application No. 2017731803)

4.Conclusion of the Chamber for Patent Disputes dated March 16, 2020 (Appendix to the decision of Rospatent dated April 6, 2020 on application No. 2018732277)

5.Conclusion of the Chamber for Patent Disputes dated May 12, 2021 (Appendix to the decision of Rospatent dated May 28, 2021 on application No. 2019727793/33)

6.According to international registration No. 1478790, from the author's archive

7.Decisions of the Intellectual Property Rights Court dated May 26, 2022 in case No. SIP-1079/2021, dated March 28, 2022 in case No. SIP-1080/2021

8.Conclusion of the Chamber for Patent Disputes dated 08/29/2022 (Appendix to the decision of Rospatent dated 10/23/2022 on application N 2020738288)

9.Conclusion of the Chamber for Patent Disputes dated 06/30/2022 (Appendix to the decision of Rospatent dated 08/12/2022 on application N 2020741305)

Originally published in Trademark Lawyer Magazine