Features of Registration of "Family" Trademarks

In June 2023, the Civil Code of the Russian Federation was amended, according to which individuals were able to register trademarks, regardless of whether they have the status of an individual entrepreneur.

In this regard, the trend of registration of the so-called "family" trademarks – designations consisting of the name and surname or only the surname of the applicant – has recently increased. As a rule, the applicants of such designations consider the "family" trademark not only as a means of individualization of goods (works, services), but also as a tool for the development of a personal brand.

However, the registration of a "family" trademark is not an easy matter, and applicants often receive refusals from the office, despite the fact that the law does not prohibit the registration of surnames as a trademark. In most cases, the reason for refusals is the lack of distinctiveness of such designations, which does not allow their registration by virtue of Clause 1 of Article 1483 of the Civil Code of the Russian Federation.

At the same time, there are successful cases of registration of such marks. For example, the patent attorneys of Zuykov and Partners have registered many "family" trademarks, including, in particular, "Dima Bilan", "Viktor Belan", "Yana Rudkovskaya", "Evgeny Plushenko", "Plushenko Angels", etc., and we were able to register the corresponding trademarks not only in Russia, but also in China.

Based on our own experience, this article will show you what you need to consider when filing an application for registration of a "family" trademark in order to increase the chances of success.

How is the distinctiveness of the "family" designation assessed?

In order to assess the distinctiveness of any, including "family" designation, the Supreme Court of the Russian Federation has developed a universal methodological approach, according to which it is necessary to establish how the designation is perceived by ordinary consumers - the addressees of goods, for the individualization of which legal protection of the designation is sought, in relation to specific goods.

Following this method, when assessing the distinctiveness of a "family" designation, it is necessary to establish how the average consumer perceives or can perceive the semantic meaning of the designation as of the date of filing an application for trademark registration with Rospatent.

However, since the methodological approach provides only a general guideline, it is important to be aware of the specific circumstances that are taken into account when assessing the designation for distinctiveness. Let's consider the most typical of them.

Does the prevalence of the surname affect the estimate?

Often, as an argument for the presence of distinctiveness, it is indicated that the surname is not widespread in the relevant territory and vice versa – the presence of a surname in the lists of common indicates that it does not have distinctiveness.

As a rule, the prevalence of the surname is checked against publicly available sources of information, in particular, by making a corresponding request on the Internet, including social networks. Thus, in one of the cases, the department pointed out that the applicant's surname of a verbal "family" designation is widespread, since 793 accounts with identical surnames are registered on the social network VKontakte, and 58,515 namesakes were identified on the social network Odnoklassniki.

As noted by the courts, common surnames do not have distinctiveness in themselves, and in addition, they affect the public interest, since it is reasonable to assume that the surname will be used by other persons in relation to goods and services.

The good news is that there are examples when the owners of common surnames (Sokolov, Zaitsev, etc.) registered a "family" trademark. This means that the factor of the prevalence of the surname itself is not decisive for assessing distinctiveness.

At the same time, the low prevalence of a surname also does not mean that the designation has distinctiveness - there are cases when the owners of rare surnames were refused by the department. However, this circumstance can be taken into account along with the others.

Does the identity of the designation with the surname of a famous person affect the assessment?

As a general rule, the coincidence of the "family" designation with the name (including the surname and proper name) of a well-known person in the Russian Federation is the basis for refusal of state registration of a trademark by virtue of Clause 2 of Clause 9 of Article 1483 of the Civil Code of the Russian Federation, since such registration is allowed with the consent of the person himself or his heirs.

At the same time, the interested party has the right to challenge the legal protection of the trademark after its registration, including on the basis of subparagraph 1 of Clause 3 of Article 1483 of the Civil Code of the Russian Federation – misleading the consumer regarding the product, its manufacturer or place of production. Such a situation may arise when the information contained in the "family" trademark is able to influence the consumer's decision to purchase goods (work, services), creating a distorted impression that they are related to a well-known person in the Russian Federation or his heirs, and such permission is absent.

Thus, a trademark can be registered if a well-known person in Russia or his heir has provided the appropriate consent. For example, the patent attorneys of our company, with the consent of the heirs, registered a series of trademarks in relation to such well-known persons as Valery Chkalov and Lev Yashin.

Does the indication of the surname in letters of a foreign alphabet affect the grade?

There are cases when the surname in the designation is indicated not in Russian, but in letters of a foreign alphabet. However, this in itself does not increase the chances of success if the surname is common.

So, for example, the designation "Kovalev" will coincide with the transliteration of the common Russian surname Kovalev and in terms of semantic meaning it will be defined simply as a surname.

The situation is similar with foreign common surnames - Smith, Miller, etc.

Thus, a designation that is perceived exclusively as a surname will not have distinctiveness, even if this surname is not widespread in the relevant territory and is indicated in the designation with letters of a foreign alphabet.

At the same time, we note an interesting case from our practice of interaction with the office for the registration of a foreign "family" designation. For example, we applied for registration of the designation "JOHN TRIGGER" as a trademark. However, according to the results of the examination of this designation, the department found that it is the name and surname of film actor John Trigger. According to the agency, John Trigger is a well-known actor, so the registration of a designation that coincides with his name can mislead consumers about the manufacturer of goods and the person providing services, since the applicant has nothing to do with this actor.

However, we managed to convince the registration authority that the mention of the name of this actor on some Internet sites does not mean that he is known in Russia. Having studied in detail the open sources of information, we came to the only possible conclusion that this actor is not only not known in the Russian Federation, but also cannot be a well-known person in the relevant territory due to certain circumstances. In particular, the bibliographic information about the actor - years of life, citizenship, and finally, photography (how he looked in life and, in the cinema, in his roles) are simply absent; his acting career lasted about 10 years, during which time he starred in 6 films (mainly television series), playing episodic supporting roles in them; since the date of the last film, where he also played a secondary role, 40 years have passed. In addition, his film career fell on a period that, due to the well-known features of that time and the political situation, allows us to assume with a high degree of probability that films with his participation were not shown on the territory of the Soviet Union at all.

Thus, we managed to refute the position of the department that the disputed designation will mislead consumers and convince the registration authority to continue processing the application. As a result, the designation "JOHN TRIGGER" was successfully registered as a trademark.

After the example, it's time to talk about ways that will help increase the chances of registering a "family" designation.

How to add originality to a "family" designation

You can register a personal brand if you add originality to the designation. In particular, this can be done in one of the following ways or a combination of them:

• add fantasy or other protected elements to the verbal designation. In addition, the surname itself can be perceived as fantasy in relation to the product in respect of which registration is sought, for example, the designation "Bochkarev", if it is registered for beer;
• slightly modify the surname so that it differs from the usual structure and sound of surnames, taking into account the traditions of word formation and phonetics. In particular, the easiest way to "finalize" the designation is to change the traditional for Russian surnames ending "ov" to "ff" or "ff". So, at one time, our patent attorneys registered the trademark "DOBROFF" using this method;
• execute the designation in an original font, in a special graphics, color combination, etc;
• add a name to the surname. Such marks are easier to register than those that include only the surname.

However, it should be borne in mind that the name and surname that are included in the designation must coincide with the name and surname of the applicant or be directly related to it, for example, the applicant is the heir of the person whose name and surname he uses in the designation. Otherwise, the Office may refuse registration on the basis of paras. 1 of Clause 3 or Clause 9 of Article 1483 of the Civil Code of the Russian Federation.

Examples of successful registrations of "family" designations as trademarks include the following:

(No registration 889558)

(No registration 600107)

Also, we must not forget about the similarity - even if the applicant's surname is included in the designation, but there is a similar trademark, then registration will be refused, so it is recommended to conduct a preliminary search.

How to prove the intensive use of a personal brand

The most difficult but effective way to register a personal brand as a trademark is to convince the Office that the "family" designation has acquired distinctiveness as a result of its intensive use in relation to the goods (works, services) for which registration is sought.

As the courts point out, in such a case, the public interest is not affected, since the target group of consumers begins to associate a specific designation with the source of origin - one specific person or affiliated persons.

The relevant Guidelines of Rospatent indicate that in order to assess this fact, the Office may take into account materials that, in particular, contain the following information:

• volumes of production and sales of goods (works, services) marked with the claimed designation;
• the territory of promotion of goods (works, services) marked with the claimed designation;
• duration of use of the claimed designation for labeling;
• the amount of expenses for advertising goods (works, services) marked with the claimed designation;
• information on the publication in open sources of information about goods (works, services) marked with the claimed designation, including advertising nature;
• information on the display at exhibitions in the Russian Federation and abroad of goods marked with the claimed designation;
• information on the degree of consumer awareness, including the results of sociological surveys. For example, in one of the cases, the applicant proved a high degree of consumer awareness by providing information about a significant number of views and responses of his pages on social networks, through which he provides and promotes his services under a personal brand.

In addition, you can provide photos of advertising posters, souvenirs (watches, T-shirts, caps, etc.), booklets with images of the claimed designation. However, in this case, it is additionally necessary to provide contracts for the placement of advertising, orders for the production of booklets and souvenirs, as well as other documents that can be used to confirm that it was the applicant who appropriately used the designation in a certain period in a certain territory.

At the same time, it should be borne in mind that the office does not recognize the presence of distinctiveness if the use of the designation is proven only in one territory (for example, the city or region in which the applicant is located). This is due to the fact that the exclusive right to a trademark is valid throughout the territory of Russia, accordingly, it is not granted to a designation that has acquired distinctiveness only in one specific territory.

It is important to note that the list of documents listed above is not exhaustive. The applicant has the right to submit any documents reflecting the ability of the designation to evoke associations in the minds of consumers associated with a particular manufacturer of the labeled products. However, it is best to prove the acquisition of distinctiveness with the help of professionals who can give specific recommendations on the collection of documents in the form in which they are accepted by Rospatent as such evidence, etc.

In conclusion, it should be noted that it is better to register "family" designations with the participation of patent attorneys, since such registration in most cases requires special knowledge and understanding of what documents Rospatent may require in order for the registration of a commodity name to be successful. In addition to direct assistance with registration, the patent attorneys of our company will preliminarily check the designation for uniqueness, and, if necessary, can offer options for its improvement, which will increase the likelihood of registration of the trademark.

We hope that our recommendations will help potential applicants to avoid many problems when registering trademarks, but even if they arise, we will overcome them together, since it is necessary for all market participants who care about the reputation and prospects of their business to register intellectual property, thereby securing their exclusive right.