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The peculiarities and problems of the registration of trademarks in the situation, when the grounds for a refusal of the state registration stipulated by Paragraph 7 of Article 1483 of the Civil Code of the Russian Federation are identified

March 30, 2020

A trademark is an individualizing designation for products or services that belongs to a single right holder.

An applicant may include another means of individualization – a name of the place of origin of the products (hereinafter referred to as the NPOP) – in the designation that will be filed for the state registration of a trademark. 

Unlike the trademarks, the NPOP may be used by different manufacturers independently of each other. Also, unlike the trademark, which is the designation for various products or services, the NPOP is the designation of a certain territory in relation to a certain product manufactured on this territory.

It is not unusual, when the applicants, without analyzing the availability of the registered NPOP in advance, filed the application for the state registration of the trademark and received a refusal on the grounds stipulated by Paragraph 7 of Article 1483 of the Civil Code of the Russian Federation (hereinafter referred to as the C.C.R.F.).

In accordance with Paragraph 7 of Article 1483 of the C.C.R.F., “The designations shall not be registered as the trademarks in respect of any products*, if they are identical or confusingly similar to the name of the place of origin of the products protected in accordance with this Code, as well as to the designation claimed for the registration as such before the priority date of the trademark, except the case, if such name or designation being confusingly similar to it is included as unprotected element in the trademark registered in the name of the person having an exclusive right to such name, provided that the registration of the trademark is carried out in respect of the same products, for the individualization of which the name of the place of origin of the product is registered.”

*Any products in the said provision shall be understood to mean not only the products, but also the services according to Paragraph 2 of Article 1477 of the C.C.R.F.

The manufacturers wishing to register the trademark that will include the NPOP or the similar designation must have the exclusive right to the use of the indicated NPOP and know that the trademark will be protected only in respect of the products, for the individualization of which the NPOP is registered.

According to Paragraphs 42, 47 of the Rules for Drafting, Filing and Considering the Documents that are the Basis for Performing the Legally Significant Actions for the State Registration of Trademarks, Service Marks, Collective Marks (approved by order of the Ministry of Economic Development of the Russian Federation of July 20, 2015 No. 482), while checking the similarity of the word designations and the word elements of the combined designations with the NPOP or with the designation claimed for the registration as such, the similarity shall be estimated based on the phonetic, semantic and graphic features. The homogeneity of the products is not examined at that.

The lack of the comparison of the homogeneity of the claimed products/services can lead to the problematic and sometimes curious situations.

Let us imagine the following situation.

A legal entity, we shall call it LLC “Maykopskaya Companiya,” has filed an application for the registration of a combined designation consisting of a dominant figurative element and the word element “Maykopskaya” as a trademark. The application is filed in respect of the products of the 20th class of the ICGS – “furniture.”

According to the results of the examination of the claimed designation, Rospatent sends our manufacturer a notice on the results of the check of the designation for the compliance with the requirements of the legislation. According to the notice, the claimed designation with the word element “Maykopskaya” cannot be registered in respect of all claimed products, as it is confusingly similar to the NPOP “Maykopskaya” under certificate No. 181. It should be noted that the NPOP has become well-known as a result of its use in respect of the product – “mineral water.” The applicant in its response to the notice indicates that the consumers will not confuse in the civil circulation the claimed designation and the NPOP “Maykopskaya,” because furniture and mineral water are not homogeneous. But, following the famous phrase “Dura lex, sed lex” – “The law is harsh, but it is the law,” Rospatent refuses to register the claimed designation on the grounds that the homogeneity of the products is not examined in identifying the grounds stipulated by Paragraph 7 of Article 1483 of the C.C.R.F.

Such situation with the refusal to register the trademark can occur again, even if the application would be filed only in respect of the services, for example, the construction services, which are obviously not homogeneous to the products – mineral water.

When analyzing the practice of Rospatent and the judicial practice with regard to the application of Paragraph 7 of Article 1483 of the C.C.R.F. of the Russian Federation, the following interesting acts of these authorities have been identified: the decisions of Rospatent of 29.12.2015 regarding application No. 2013709108; of 21.05.2019 regarding application No. 2018740491, the decisions of the Intellectual Property Court of 18.10.2016 in case No. SIP-450/2016; of 18.07.2018 in case No. SIP-147/2018.

A uniting factor of these acts is that they apply a partially disputable legal position in comparing the word elements and the NPOP, which consists of several words, such as, for example, Tula Gingerbread, Altai Honey, etc. According to this legal position, the main individualizing function in the NPOP is borne by the name of the territory (Tula, Altai), and another word in such NPOP (gingerbread, honey) is an indication to the product. In this regard, while estimating the similarity, the indicated name of the territory and the word element are compared, and another word included in the NPOP is “lost” track of.

The lawfulness of such approach generates doubts and it can be a topic for heated discussions in narrow circles. Thus, the legislation does not establish the availability of “strong” and “weak” elements in the NPOP, the NPOP is protected in the form in which it is registered, respectively, it is necessary to estimate the word element and the NPOP, with all the words included in it. On the other hand, while estimating the similarity of the word elements and the NPOP, it is necessary to take into account the perception of the compared designations on the analogous products, in view of the fact that the very registration of the NPOP indicates to the fact that the name of the territory is widely known in respect of the product for the individualization of which it is registered. 

The analysis of the provisions of Paragraph 7 of Article 1483 of the C.C.R.F. and its application in practice have shown that this provision has its “pitfalls” due to the specifics of the protection of the NPOP, and before filing the application for the registration of the trademark, it is better to check and recheck your designation for the absence in it of the word elements that are identical or similar to the NPOP.

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Author of article

Rifat Madaminov

Rifat Madaminov