IP Court clarifies partial refusal due to risk of confusion

There are two main consequences of a partial refusal to register a trademark: the denial of protection to the right holder who received such a refusal, as well as the significance of the early termination of the legal protection of the opposing trademark, which took place after the refusal to register the disputed mark.

In the decision of the Court for Intellectual Property Rights dated 6 February 2022 in Case SIP-1152/2021, the trademark owner learned that Rospatent did not register his mark (No 826493, "Aleksandra") in relation to all the goods that were indicated in the application. Some of them were refused due to being confusingly similar to the previously registered trademark (No 658784, "AleXandRA"). The copyright holder tried to challenge the partial refusal of registration, but to no avail.

The main argument of the right holder was the early termination of the protection of the opposing mark, so, according to the right holder, the mark can no longer be taken into account when considering an application for registration of a designation. Rospatent insisted that the early termination of the protection of the opposing mark does not affect the assessment of the legality of the contested decision.

Rospatent also referred to the fact that contesting the decision is not an appropriate way to protect a violated right and cannot lead to the restoration of rights. Rospatent pointed out that since legal protection for a trademark had already been granted, the right holder cannot exercise the right granted by Clause 1 of Article 1500 of the Civil Code of the Russian Federation. This possibility exists only before the registration of the mark. The mechanism for challenging the protection is specified in articles 1512 and 1513 of the Civil Code of the Russian Federation.

The IP Court, considering this argument, noted that Rospatent misinterpreted the applicability of the two methods of challenging the decision to register a trademark. According to Rospatent, to challenge the decision to register a mark in accordance with Paragraph 1 of Article 1500 of the Civil Code of the Russian Federation is impossible if the mark has already been registered, even if such a decision contains a refusal in relation to some part of the goods or services.

At the same time, such a non-normative legal act actually contains two decisions - on the registration of a mark in relation to some goods, and on the refusal to register in relation to others. Indeed, if the mark is registered, an exclusive right arises to it, and the subsequent challenge to protection of it can be carried out by another person (not the applicant) in accordance with articles 1512 and 1513 of the Civil Code of the Russian Federation.

However, if the registration is denied, the exclusive right does not arise, and the applicant retains the right to challenge the decision regarding the refusal to register the claimed designation on the basis of Article 1500 of the Civil Code before the expiration of the period established by law (four months from the date of sending the decision to the applicant).

Regarding the significance of the termination of the legal protection of the opposing mark, the court noted that on the date of refusal of registration and on the date of consideration of the objection, the legal protection of the mark was in effect. A successful claim for early termination of legal protection was only made after the registration of the disputed mark. The court pointed out that even taking into account the above mentioned, the termination of legal protection entails the impossibility of its opposition to the designation in respect of which an application for registration has been filed.

Since the opposing trademark was the only obstacle to the registration of the disputed mark, the court reversed the decision of Rospatent, emphasising that the state body could not take into account the future termination of legal protection; therefore the cancellation of the decision does not indicate its illegality.

It should be noted that this trend was recently reflected by the IP Court in one of the private definitions due to the systematic mistakes of Rospatent in similar situations. The court noted that the position of Rospatent is “obviously erroneous and contrary to both the law and common sense”, and that the proper way to protect a mark if the right holder disagrees with a partial refusal is to challenge the granting of legal protection to their own mark in accordance with articles 1512 and 1513 of the Civil Code of the Russian Federation. These norms:

• do not provide for the grounds for the right holder to challenge such registration; and
• do not imply an expansion of the scope of legal protection of a mark in the event of a challenge to its registration, but only annulment or reduction of the legal protection.

Thus, the court concluded that the application of this procedure cannot lead to the restoration of rights that the right holder considers violated.

Orginally published in World Trademark Review