Role of generalized approaches of Rospatent in litigation related to similarity of designations

According to paragraph 10 of Art. 1483 of the Civil Code of the Russian Federation [1] cannot be registered as trademarks in relation to homogeneous goods designations, the elements of which are means of individualization of other persons protected in accordance with the Civil Code of the Russian Federation, similar to them to the degree of confusion.

The similarity of the compared designations and the likelihood of their confusion in civil circulation is determined by the registration authority in accordance with the methodology established in the relevant Rules [2] and Guidelines [3], which consolidates the generalized approaches of Rospatent in order to ensure a uniform practice of examination.

The courts [4] use such generalizing materials of Rospatent to compare the legal position in a particular case with the position that this body considers to be a cut of its uniform practice, and in case of a divergence of the position in a particular case from the generalized position, to check whether there are motives for changing the approach of the administrative body.

Obviously, the unmotivated discrepancy between the decisions of Rospatent and the indicated methodological approaches leads to litigation, in which the courts, recognizing such decisions as invalid, note, among other things, that Rospatent does not take into account its own practice.

In particular, a deviation from the methodology occurs when comparing combined notation. According to the Rospatent Guidelines (clause 7.1.2.4.), combined designations are compared with combined designations, as well as with those types of designations that are part of the combined designation being checked as elements.

To determine similarity, compared designations must be considered as a whole, i.e. the overall visual impression that these designations make on the average consumer of the relevant goods or services is assessed [5].

At the same time, in the case of comparing similar elements of the compared designations, their location in the designation is taken into account, that is, it is determined whether similar elements are dominant, whether they occupy a central place in the overall composition of the designation, etc.

The IP Court has repeatedly noted [6] that in the case of establishing strong (dominant) and weak elements in a combined designation consisting of a figurative and verbal element, the main element, as a rule, is a verbal element, because it is easier to remember than the pictorial one and it is on it that the consumer’s attention is focused when perceiving the designation. At the same time, only a reference to the presence of a figurative element in a combined designation or a reference to the absence of a distinctive ability of parts of a verbal element is clearly not enough to assess the individualizing ability of a verbal element as low compared to a figurative element.

Thus, if the approach of Rospatent in determining the dominant element is based on the position of the insignificance of the individualizing function of the verbal element in the controversial combined designation, such a position cannot simply be stated, but requires appropriate justification. Otherwise, there is a risk of recognizing such a decision of the registration authority as illegal due to a violation of the methodology for comparing symbols.

Thus, in case No. SIP-443/2022 [7], the court invalidated the decision of Rospatent, adopted as a result of consideration of the company's objection to the refusal to state registration of a combined trademark. According to Rospatent, which recognized the dominant pictorial element, the verbal element has a weak distinctive function, because is a compound word composed of two generally accepted abbreviations (abbreviations) logically separated in it that do not have a distinctive ability. However, the Court noted that simply referring to the lack of distinctiveness of parts of a word element is clearly not enough to assess the position in the designation of a word element, since elements made in the form of a single word are subject to evaluation without division into component parts. In this case, Rospatent did not take into account its own methodological approaches to assessing the dominant element, according to which the verbal element of the designation, made in a larger font, occupying the central place from which the examination of the designation begins, is recognized as dominant, unless otherwise specified.

Thus, when determining the similarity of designations, it is necessary to take into account, among other things, the generalized practice of the administrative body, and in case of a different position, it is necessary to motivate its divergence from the basic (generalized) approaches.

Sources:

1."Civil Code of the Russian Federation (Part Four)" dated December 18, 2006 N 230-FZ (as amended on December 5, 2022) // ConsultantPlus SPS

2.Rules for the preparation, submission and consideration of documents that are the basis for the performance of legally significant actions for the state registration of trademarks, service marks, collective marks, approved. Order of the Ministry of Economic Development of Russia dated July 20, 2015 N 482 (as amended on November 23, 2020) // SPS "ConsultantPlus"

3.Guidelines for the implementation of administrative procedures and actions in the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates, approved. Order of FGBU FIPS dated 01/20/2020 N 12 (as amended on 03/25/2022) // SPS ConsultantPlus

4.See, for example, the Resolution of the Presidium of the SIP dated 01/24/2022 N С01-2195/2021 in case N SIP-762/2021, the decision of the SIP dated 10/18/2022 in case N SIP-443/2022 // ConsultantPlus SPS

5.P.37 of the Review of judicial practice in cases related to the resolution of disputes on the protection of intellectual property rights, approved. Presidium of the Supreme Court of the Russian Federation 23.09.2015 // SPS "ConsultantPlus"

6.See, for example, Decision of the Presidium of the SIP dated 07.06.2021 N C01-345/2021 in case No. SIP-476/2020, Decision of the SIP dated 27.02.2023 in case No. SIP-858/2022, Decision of the SIP dated 16.02.2023 in the case N SIP-966/2022, Decision of the Court for Intellectual Property Rights dated February 9, 2023 in case N SIP-816/2022 // ConsultantPlus SPS

7.Decision of the Intellectual Property Rights Court dated 10/18/2022 in case No. SIP-443/2022 // ConsultantPlus SPS