Grounds for Refusal to Register Trademarks in Case of Identical/Confusingly Similar Trademarks or Designations Registered/Used for Non-Similar Goods.

When it comes to the grounds for the refusal to register a trademark, the first thing which is remembered is Clause 6 of Article 1483 of the Civil Code of the Russian Federation, which reads that: the designations shall not be registered as a trademark, if they are identical or confusingly similar to the trademarks of other persons applied for the registration with respect to the similar goods and which have an earlier priority, unless the application for the official registration has been withdrawn or has been deemed withdrawn, or the decision on the refusal to register it has been made. 

However, this wording can not be considered exhaustive and in practice there are situations that can not be settled using this rule. How, for example, should the person act when the designations are identical or confusingly similar, but the goods and services with respect to which they are registered are not similar? After all, the clients often want to register in their name the designation that is already used by a third person and which is on the market, but with respect to other categories of goods or services.

Below, we shall consider the cases when the goods and/or services with respect to which the applicant wants to register a trademark are not similar to the goods and/or services with respect to which the identical or confusingly similar trademark has already been registered in the name of another right holder.

First of all, let us consider the case when the applicant wants to register in his name the trademark, which is identical or confusingly similar to the trademark recognized in accordance with the procedure stipulated by law, as commonplace (Article 1508 of the Civil Code of the Russian Federation). In accordance with Clause 3 of Article 1508 of the Civil Code of the Russian Federation, the legal protection of a commonplace mark shall be extended also to the goods, which are non-similar to the goods with respect to which it has been considered to be commonplace, if the use by another person of this trademark with respect to the aforesaid goods is associated by the consumers with the right holder of the exclusive right to the commonplace trademark and may infringe the lawful interests of such a holder.

Thus, the right holder of a commonplace trademark registered for a particular category of goods and/or services may prevent the registration of a confusingly similar or identical trademark in the name of another person, even if the legal protection of this mark is claimed for another class of goods and/or services.

Clause 4 of Article 1512 of the Civil Code of the Russian Federation reads: that the grant of the protection to a trademark can be attacked and recognized as invalid fully and during the whole period of validity of the legal protection, provided that the legal protection has been granted to the trademark with a later priority with respect to a recognized commonplace registered trademark of another person, the legal protection of which shall be carried out in accordance with Clause 3 of Article 1508 of the Civil Code of the Russian Federation.

In other words: in case of filing an application for such a trademark, the examiner of Rospatent can either refuse to register himself, referring to the existence of a commonplace trademark as a factor misleading the consumer with respect to the manufacturer of goods, or on the basis of the opposition received from the right holder of a commonplace trademark. If, nevertheless, the mark has been registered, the right holder of the commonplace trademark may appeal against such a registration and attack it legally.

What is there to be done, if the protected trademark does not yet have the status of being a commonplace trademark? Here the situation is somewhat different, however, if such a designation is still well known to the consumer (it sounds familiar, there is a lot of information about this mark on the Internet, it is recognizable by the consumer), the examination can also refuse to register the trademark, which is identical to the registered one or confusingly similar to it, referring to Clause 6 of Article 1483 of the Civil Code of the Russian Federation. In this case, the examiner shall recognize that the goods/services that are attributed to different classes of the ICGS are similar. This is due to the fact that, to the examiner’s opinion, in case of the registration of a similar/identical trademark, the consumer will have an association with the designation that is already widely known. As a result, the consumer will perceive the new trademark and the goods marked by it, as the extension of the line of the goods/services of the right holder of the already promoted and well-known brand. Although, here there may be the exceptions to this rule due to the influence of the human factor.

Examples are the easiest way to understand the essence of these legal norms. So, the right holder of the trademark to the name of a multi-copy glossy magazine will most likely successfully challenge the registration of the identical trademark for tobacco products on the mere grounds, that the false semantic relationship with the manufacturer of cigarettes will definitely do a lot of harm to his reputation as a publisher.

You must admit, that it is true, as otherwise too resourceful merchants with the greatest pleasure would have produced a broad range of consumer goods under the names of the federal TV channels, women's magazines or the commonplace brands, which have spent time and money developing and promoting their designation, creating their own name.

From the aforesaid, we can conclude that if you are the right holder of a well-known trademark and want to protect your brand and its reputation to the fullest possible extent, all other things being equal, it is more expedient to spend time and obtain the status of being commonplace for your trademark, ensuring thereby an extended legal protection for it. This is not quick and a labour-intensive procedure, but its result is worth it. Its main criteria are the duration of the use of the trademark, the volumes of sales, the territory of distribution and the recognition, what shall be confirmed by the results of the relevant sociological surveys. After passing the examination successfully, the commonplace trademark shall be inserted in the Register of Commonplace Trademarks and shall get a broad legal protection.

At the same time, the applicants who want to register in their name a trademark that is identical or confusingly similar to the trademark of another right holder, even in case of non-similarity of goods and/or services, should take into account the risks of refusing to register such a designation.