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Author
Olga Plyasunova

Trademark attorney

10 March 2021

Benefits of Using Notorious Trademarks

Without referring to the current rules of law and analyze the term “notorious” (well-known) trademark, we can conclude that it is a visual identity which has an immediate connection in the minds of the consumers with a specific product or service and the source of that product or service. It is worth assuming that the risk of confusion of such a trademark with other, similar designations is higher. In this regard, it is logical to combine such visual identities in a special category and provide a special legal regime for them.

Such assumptions are also confirmed by the existing norms of the Civil Code of the Russian Federation (Articles 1508 and 1509 of the Civil Code).  In order to register a trademark as notorious, the right holder must provide evidence that the designation is known. Click here to find out more about the peculiarities of registration of notorious trademarks.

The following circumstances may be an obstacle to registering a trademark as notorious:

  • Confirmation of a notorious status requires significant tangible investments. For example, to confirm the claimed status, the trademark owner must submit to Rospatent the data of a sociological survey, information on the intensive use of the designation, etc.
  • Consideration of the application for legal protection of a notorious trademark in the Russian Federation requires the payment of the state duty in the amount of 40 thousand rubles [1].
  • The federal government agencies pay additional attention to the activities and goods of a company possessing a well-known trademark.

The last of these reasons should be considered in detail. A comprehensive analysis of law enforcement practice reveals that some foreign companies could not register well-known designations simply by filing an application and documents with Rospatent. To do so, they had to come into conflict with the patent office and defend their interests in court. Examples include such well-known marks as DOSIRAK, RAFFAELLO and ROLLTON [2]. For these trademarks, Rospatent refused to grant a notorious status. Then the companies appealed against the decision of the federal government agency.

The case of Lindt, a well-known manufacturer of chocolate products, can be considered as another example of control by the federal government agencies over the activities of major manufacturers. As it is stated in the material published on the Federal Antimonopoly Service of the Russian Federation (hereinafter the Federal Antimonopoly Service) official website: “When promoting Lindt chocolate, the company emphasized long-standing traditions of production, immaculate reputation of the manufacturer and guaranteed quality of products[3]. Representatives of the antimonopoly service believed that such a statement caused a false sense among consumers that the company’s products supplied to the domestic and foreign markets had the same quality. As a result, the Federal Antimonopoly Service issued a reprimand in December 2019: “On the Need to Stop Actions That Bear Attributes of Violating Antitrust Law” [4]. However, the manufacturer did not agree with the stance of the federal government agency and challenged the administrative act in court. [5] As Izvestia newspaper noted, representatives of Lindt chocolate noted: “...We supply the same products to Russia as we do to other countries of Europe and the world. It is produced in four factories: in Switzerland, France, Germany and Italy” [6].

Such a rigid stance of the federal government agencies is due to the fact that the quality of goods produced abroad and products supplied to the Russian market under the same trademark may differ, sometimes dramatically. If we look at it from the perspective of the patent office or the Federal Antimonopoly Service of the Russian Federation, as representatives of citizens’ interests, the reason for controlling such companies is obvious: the state protects consumers from being misled about the qualities and characteristics of the goods. After all, many buyers believe that a foreign firm is supplying goods of foreign manufacture or similar qualities.  

However, it is worth noting that many big companies are ready for control by authorized institutions, seek recognition of the notorious status of their trademark and achieve that. This position is due to a number of substantial advantages of a notorious trademark compared with ordinary trademarks, as follows.

  • Registration of a designation as notorious is a public recognition and confirmation of the widest popularity of the brand and goods on the territory of the Russian Federation and their unambiguous association with the right holder company.
  • Both registered in Russia and unregistered trademarks may be recognized as notorious. This provision allows foreign companies not registering a designation in our country to provide the necessary level of protection for the reputed or famous visual identity and to prevent possible unfair practices by third parties.
  • When a trademark acquires the notorious status, the object receives a legal protection without limit of time. Obviously, this is due to the fact that once the designation is widely known, then the rights holder has spent a lot of effort and money on the reputation of the trademark, the quality of products and is unlikely to stop using the designation.
  • Yes, the recognition of a trademark as notorious requires tangible investments, but the indefinite validity of legal protection does not require renewal of registration every 10 years and accordingly pay the state duty for the maintenance of the trademark in force.
  • Paragraph 3 of Article 1508 of the Civil Code indicates that the scope of protection of a well-known trademark applies to all classes of goods and services, provided that the use of the designation: "...will be associated with the owner of the exclusive right to the well-known trademark and may infringe the legitimate interests of such owner". The said norm aims to protect the interests of the right holder, as well as consumers who may be misled.
  • Also, the provisions of the above rule of law allows the holder of a notorious trademark to deal with the so-called dilution by blurring of the designation. That is, trying to reduce the number of identical registered designations for other classes of the Nice Classification and prevent the registration of new trademarks that could lead to mixing of designations.
  • Transfer of rights to use a notorious trademark brings much more profit than the conclusion of a license agreement for a standard trademark. This is due to the degree of familiarity of the designation and, consequently, the perceived high level of consumer demand for products highlighted by a notorious trademark.

Zuykov & Partners have a successful track record of registering notorious trademarks. For example, over 2019-2020, thanks to the efforts of the company’s employees, Rospatent recognized such notorious trademarks as trademark No. 218 Слобода, trademark No. 214 Вязанка and trademark No. 210 ZARINA. As a patent attorney specializing in the recognition of notorious trademarks, I would like to note that the procedure of registration of a designation requires efforts and participation of a competent specialist, but the benefits of using a notorious trademark definitely pay off.


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