Is it possible to defend a geographical designation as a trademark?

According to the provisions of Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation, the registration of the designations indicating to the place of their manufacture or sale shall not be allowed.  The legislator states that the trademarks consisting solely of a geographical name of the territory, where the product is manufactured or sold shall not be protected.  Such situation is due to a number of the factors that come down to the protection of the interests of the consumers, who can be misled, and to the defense of the holders of other trademarks, whose rights will be impinged. The norms of the above Article contain a clarification regarding the admissibility of the registration of the designation that includes an indication to the place of the manufacture and sale, if this element is claimed as unprotected. Thus, it can be concluded that the registration of the trademark containing the geographical name is not allowed, except in the cases, where the legal protection is not granted to the name directly.

However, a more in-depth and detailed analysis of the legislation and the existing law enforcement practice makes it possible to identify a number of the exceptions to the general rule. Namely:

• Registering a geographical concept as a trademark.
• Granting the protection to the geographical name, when there is not a possibility of misleading the consumer.
• Obtaining a certificate for the trademark that includes the geographical name that is little-known.

  The geographical name or the geographical concept?

 To clarify the above statement, first of all, it is necessary to distinguish between the terms “the geographical name” and “the geographical concept,” since they seem to be synonymous in the course of a superficial analysis.

According to the Great Soviet Encyclopedia, “the geographical names” are described as: “the names, the toponyms, the proper names of continents, oceans, seas, ..., countries, cities, streets, and of all other geographical objects on the surface of Earth.”

In turn, the “geographical concepts” should be understood to mean the terms and definitions related to a branch of geography.

Thus, the geographical names can include: Moscow, Africa, Tula, Volga, etc.  The geographical concepts will be: an ocean, the pole, the sea, a continent, etc.

The reason for distinguishing these terms for the field of trademarks is as follows: the legislator prohibits the registration as the trademarks of exactly the geographical names, as they have a narrow-focused nature. Hence, that they can mislead the consumer regarding the place of the manufacture and sale of the product. At the same time, the geographical concepts (terms) are of a general nature and their use cannot lead to the consequences described above. So, it is indicated in the “The Recommendations on Certain Issues of an Examination” edited by O.L.  Alexeeva that: “The peculiarity of the designations-concepts relating to the field of geography is that they do not indicate to a specific geographical place, and therefore, they cannot perform the function of a descriptive designation indicating to the place of the manufacture of the product and the location of the manufacturer.”[1]

According to the above reasons, the registration as the trademarks of the designations that include the geographical concept as a protected element shall be allowed.

 Granting the protection to the geographical name, if the probability of misleading the consumer is absent.

As explained in the above recommendations, the registration as the trademarks of the geographical names directly is possible in some cases. The following conditions should be observed for such designation to become protectable:

1. The geographical name should not be perceived by the consumer as the indication to the place of the manufacture, sale of the product and the location of the manufacturer.
2. The designation should not have a descriptive function, and it should be perceived by the consumer as a fantasy one.

 The word “KASPIY” can be given as an example. If the right holder claims the trademark with such element for the registration in respect of the 29th class of the ICGS, and, in particular, seafood, it is highly likely that the results of the examination will be negative. The reason is obvious: The Caspian Region is widely known for fishery, therefore, the consumers can assume that the product comes from the Caspian Sea. At the same time, there are no norms for the trademarks that oblige the right holder to fix the place of the manufacture at a certain territorial unit, as in the case of the NPOP. Therefore, the product can be manufactured anywhere, and the customer will consider mistakenly the Caspian region as the place of origin. On the contrary, the registration of the trademark “KASPIY” for the products of such kind as TV sets is quite allowed, because, most likely, the customers will perceive such designation as the fantasy one without being under illusions regarding the place of the manufacture and origin of the product.

Obtaining a certificate for the trademark that includes the geographical name that is little-known

 Special attention should be paid to the registration of the trademarks with the geographical names that have a minimal degree of popularity. These can include: the names of small settlements, tributaries of rivers, streams, and so on. Even in the case, if the product is manufactured within the indicated geographical object, it will be perceived by the consumers as the fantasy one due to the fact that the designated territorial unit is little-known. The low level of popularity of the geographical name can indicate to the fact that “the sources of information do not contain the information on it, or this information is contained in the rare special publications, what allows recognizing the claimed geographical name to be practically unknown to the average consumer.”[2]

 The practice of Zuykov and Partners in obtaining protection for the trademarks with the geographical names.

 There are the examples of the registration of the trademarks with the elements containing the geographical names in the work of the lawyers of our company as well. It is worth noting that the experts of Rospatent check such designations especially carefully. However, even a notice on the existence of grounds for a refusal to grant the protection due to the indication of the geographical object does not mean the final refusal of the state registration of the trademark.

So, in 2013, GSH Trademarks Limited, whose representatives were Zuykov and Partners, filed an application for the registration of the trademark “CHERNOMORSKIY” in respect of the 33rd class of the ICGS (alcoholic beverages). During carrying out the examination, the specialists of the Office concluded on the impossibility of the registration of the designation. The reason for the refusal to register the claimed trademark was that the dominant element was the geographical name “CHERNOMORSKIY.” The notice on the results of the check was sent to the applicant. Having considered the document received from Rospatent, the employees of Zuykov and Partners analyzed the current situation and came to a conclusion on the permissibility of the registration of the designation. Such statement was based on the fact that the indicated trademark had a distinctive ability, and the word element would be perceived by the consumers as the fantasy one, and not as a descriptive one. In support of their position, the lawyers sent a response to the notice to the Office, where they had indicated the arguments deserving the individual attention of the experts, namely: “The word element “CHERNOMORSKIY” is an adjective formed from the noun “Chernoe More” (the Black Sea), which is the name of the sea, i.e. this element is the geographical concept. <...>

Regarding the application under consideration, it is difficult to imagine that the manufacture of alcoholic beverages is located in the Black Sea.

In connection with the above, the designation “CHERNOMORSKIY” will be perceived by the Russian consumer predominantly as the fantasy and semantically neutral one in relation to the claimed products, i.e. it has the distinctive ability.”

The specialists, while considering the application for the registration of the trademark, paid attention to the applicant’s position and as a result, the designation “Chernomorskiy” was registered by Rospatent and it is currently in force.

The registration by LLC “Antares” of the designation “THE MANHATTAN CLUB” for the restaurant business can become another example of obtaining the legal protection by the trademark having the geographical name. Having considered the application and having checked the designation for the compliance with the conditions of protectability, the examination of Rospatent sent a preliminary refusal indicating to the grounds for the refusal to register the claimed designation as the trademark. As one of the reasons for such decision, the notice indicated that the dominant element was the widely known geographical name of one of the parts of the City of New York.

The lawyers of Zuykov and Partners, who represented the interests of the company-applicant, had a different opinion regarding the protectability of the designation and sent a response to the notice to the Office. The lawyers justified their position as follows: the geographical names that can be perceived by the consumer as the indication to the location of the manufacturer of the products or services cannot be registered as the trademarks. In turn, the trademark “THE MANHATTAN CLUB” is planned to be used to indicate the services provided by the Club, which is in the town of Penza, which is located on the territory of Russia. In this regard, there are all grounds to recognize the designation under consideration to be the fantasy one, because the consumers will be unlikely misled in respect of the location of the services being rendered.

Having studied the position of Zuykov and Partners in detail, the experts of Rospatent came to a conclusion on the protectability of the claimed trademark.