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Author
Olga Plyasunova

Trademark attorney

04 September 2017

Acquiring distinctiveness by trademarks

Keywords: intellectual property, means of individualization, exclusive rights, trademark, registration of a trademark, distinctiveness, protectability of a trademark, acquiring distinctiveness

 

Trademarks are developed, registered and used by entrepreneurs to increase the recognition of their products and services. In accordance with Article 1482 of the Civil Code of the Russian Federation, word, figurative, three-dimensional and other designations or combinations thereof may be registered as trademarks; the trademark can be registered in any colour or colour combination. However, the registration may take place only if the selected designation corresponds to the criteria of protectability. In other words, designation should not fall under a number of restrictions, contained in Article 1483 of the Civil Code of the Russian Federation.

One of the main criteria of protectability of a trademark is its distinctiveness, namely such property of the designation, which allows a consumer to distinguish the products or services of one manufacturer from the similar products of other manufacturers.

Thus, in accordance with Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation, “...No state registration as a trademark shall be granted to the designations, which do not have distinctiveness or which consist only of the elements that:

1) have come into a general use to designate the products of a certain kind (the designations, which have become an indication of a certain kind of product as a result of a prolonged use for the same product by different manufacturers).

2) are common symbols and terms;

3) characterize the products, including the ones that indicate to their kind, quality, quantity, property, purpose, value, as well as to the time, place and method of their manufacture or sale (it should be noted that descriptive designations may include not only word, but also figurative designations, for example, a simple naturalistic image of the product)

4) represent the form of products that is determined exclusively or mainly by the property or purpose of products (the form of the product must be original, but not traditional, used by all manufacturers of similar products. Such traditional form, which the product usually has or highly likely may have, does not have distinctiveness).

To perform the function of a trademark, such form of packaging should be original, but not traditional, used by all manufacturers of similar products. The form does not have distinctiveness, if it is simple, or if it is a combination of simple forms. To recognize distinctiveness the form should not be traditional. The more the form resembles the form, which the corresponding product will most likely have, the more grounds for recognizing the fact that the form lacks distinctiveness.

The indicated elements may be included in a trademark as unprotected elements, unless they dominate therein.”

The Paris Convention for the Protection of Industrial Property of March 20, 1883 also contains a provision stating that “The trademarks falling within the scope of this Article may be rejected upon the registration or invalidated only in the following cases ... if the trademarks lack any distinguishing features or are composed solely of the trademarks or indications that can serve in commerce to designate the kind, quality, quantity, purpose, value, origin of the products or the time of their manufacture, or that have become common in the colloquial language or in bona fide and conventional commercial customs of the country where the protection is sought ...”

In accordance with the Rospatent Rules (Order of the Ministry of Economic Development and Trade of the Russian Federation of July 20, 2015 No. 482 “On approval of the Rules of composing, filing and considering the documents, which are the base for committing legally significant acts related to the state registration of trademarks, service marks ...”), during the examination of the designation applied for the registration it shall be defined whether the applied designation refers to the objects, which do not have distinctiveness or which consist only of the elements stipulated in Paragraph 1 of Article 1483 of the Code.

The designations, that do not have distinctiveness, include:

  • “... simple geometric figures, lines, numbers; separate letters and combinations of letters, that do not have a word character or are not perceived as a word;
  • common names;
  • realistic or schematic images of products applied for the registration as trademarks to designate these products;
  • the data concerning the manufacturer of products or characterizing the product, weight proportions, material, raw material from which the product is manufactured;
  • ... the designations, which have lost such distinctiveness at the date of filing an application as a result of a wide and prolonged use by different manufacturers with respect to identical or similar products, including in the advertisement of products and their manufacturers in the mass media.

Meanwhile, it shall be defined, in particular, whether the designation applied or its separate elements have come into a general use to designate the products of a certain type ...”

As we can see, the Civil Code divides trademarks into two categories: “not having distinctiveness” and “consisting of certain elements” (stipulated in Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation). However, it should be noted that in practice these two categories are “superimposed” on each other, there is no any clear boundary between them. The trademarks consisting of the elements stipulated in the Code do not have distinctiveness.

In any case, the stipulated elements may be included in a trademark as unprotected elements, unless they dominate therein.

When assessing the “dominance” of the element in the designation applied, the following shall be assessed: its spatial position, overall visual perception of both the element separately and the designation as a whole, taking into account all other elements. Its colour, graphic design, its size, position, etc. shall be taken into account.

“Unprotectability” of the element means that it can be used freely by all other interested parties without any negative legal consequences. The presence of an unprotected element in your trademark, respectively, does not grant you the right to prohibit the use of this element by any third parties.

Further, the above provisions of the Civil Code (concerning unprotected elements) shall not be applicable to the designations, which:

“...1) have acquired distinctiveness as a result of their use;

2) consist only of the elements stipulated in Subparagraphs 1-4 of Paragraph 1 of this Article and form a combination that has distinctiveness.”

Thus, the Russian legislation allows granting the legal protection to the designations, the distinctiveness of which has not existed initially, but which they have acquired as a result of their wide use in the market. And, consequently, the opportunity has appeared for such designations to distinguish the products of a certain manufacturer from a homogeneous mass and associate it with a certain manufacturer.

Assessing the presence of the acquired distinctiveness, the following data can be accepted, as a whole or in part:

  • the volumes of production and sales of the products/services marked with the designation applied;
  • the territories of sale of the products/services marked with the designation applied;
  • the duration of use of the designation applied for marking products/services;
  • the costs for advertising the products/services marked with the designation applied;
  • the data on the level of the consumer awareness, including the results of sociological surveys;
  • the data on publishing the information on the products marked with the designation applied in the public press;
  • the data on exhibiting the products marked with the designation applied at the exhibitions in the Russian Federation and abroad, etc.

The enumerated list of documents is not exhaustive. Any materials and documents that demonstrate the ability of the designation applied to individualize expressly the products or services of a certain company or individual entrepreneur will be suitable.

Thus, in accordance with the Paris Convention “...To determine whether the trademark can be an object of protection, it is necessary to take into account all actual circumstances, especially the duration of the use of the trademark.”

The above information, which confirms the acquired distinctiveness of a trademark, should not be merely declarative. The documentary confirmation of each argument made by the applicant is required. At the same time, merely marketing, advertising materials that do not contain an unambiguous indication of the legal connection of the applicant with the trademark shown on such materials are not enough.  In this regard, the indicated materials can be taken into account by the examination together with the following documents: agreements for advertising the use of the designation applied (indicating the territory on which the advertisement should be placed); orders for the production of booklets, souvenirs; invoices; account statements, etc.

The above information and materials can be taken into account by the examination, both as a whole and in part: it all depends on certain circumstances of the case. The legal protection of the designation applied is provided, if the documents represented by the applicant confirm that such designation has performed a clear individualizing function, that is, it has been perceived by the consumer as a designation of products s of a certain manufacturer before the date of filing an application with respect to the items of the list of such application.

In some cases, the applicant can prove that the designation applied has acquired distinctiveness with respect to a much narrower list of products and services, than it has been indicated in the application originally (for several classes or several items) – then the trademark can be registered with respect to the products or services for which the acquired distinctiveness is proved.

It should be noted that the acquisition of distinctiveness is recognized for the designation as a whole and not for its separate elements. If the designation consists of two initially unprotected elements, for example, of a letter and an indication to the kind of products, in recognizing the fact that it has the acquired distinctiveness, the right holder does not obtain the exclusive rights to these elements separately, independently or in combination with other verbal or figurative designations.

Finishing the consideration of this issue, it should be noted that the Rospatent's practice with respect to the designations that do not have distinctiveness is ambiguous. The same can be said about “unprotected elements.” In Russia, for example, there are no “unprotected elements as a default” (for example, there are no words “super,” “classic,” “group,” etc.), therefore, the legal protection of a trademark is determined exactly as it is indicated and it is limited in the certificate. If any element is not indicated in the certificate as unprotected, it means it is included in the legal protection. And if to compare such certificates, the same element of both trademarks, executed by roughly the same way and located in the same place, can be recognized as unprotected in one case and protected in another case.

In addition, there are examples of the registered trademarks, the protection of which was subsequently challenged by the interested parties and invalidated due to the lack of distinctiveness, but the difference in the approaches used by the examination reflects the lack of uniformity in the Rospatent's practice in assessing protectability of trademarks.

Thus, the distinctiveness of some or other elements or designations is examined each time individually, during the examination of a certain designation applied for recognition as a trademark, and very often the recognition of distinctiveness depends directly on how correctly the applicant has managed to justify his position.

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