Trademarks which may be considered pseudo-foreign and outlines its application by the Russian companies
One of the prerequisites for the profitable sale of goods in today’s commercial spaces is the use of a trademark on products. Such an identity allows buyer to distinguish the product among similar ones and make it memorable and recognizable. The brand identity development is the first of the stages on which the success of the future designation depends.
In the context of this article, using a trademark, an entrepreneur can achieve the following results:
- Let the consumer recognize the product;
- Attract the attention of the consumer to the product;
- Make the product memorable;
- Create the association between trademark, product and manufacturer in the consumer mind;
- Provide the consumer with any information that will interest him or her and stimulate him or her to buy the product.
Based on the above, we can conclude that the trademark is a unique source of information about the product for consumers. And if the entrepreneur will take this into account at the stage of designation, a well-developed design of a visual identity entails the future effective use of the trademark and increase revenue thanks to this.
Civil Code of the Russian Federation does not contain any restrictions on the types of trademarks that can be registered: you can apply for registration of verbal, sound, visual, and even olfactory, gustatory and holographic designations, or their complex as a trademark. It is also important to add that there is no prohibition on registration of a trademark which includes words in other languages than Russian. That is, the limits of creation of a designation are limited to the general conditions of protectability, which are shown to all trademarks registered in Russia. These include the distinctiveness, respect for public interests and consumer rights, compliance with ordinary morality, etc.
Pseudo foreign trademark as a type of visual identity is not specified in the Civil Code. This state of affairs is not accidental, as this is rather a characteristic of the content of the designation itself, rather than one of the types of trademarks. Without referring to additional sources of information, we can conduct an analysis of the concept and conclude that the word “pseudo-foreign” indicates that the designation must include a verbal element in a foreign language and create the impression of a foreign trademark, but in fact it is not.
Examples include the trademark “Chester” which used for the production and sale of shoes, the trademark “Sela”, referring to the field of tailoring and clothing sales, as well as the trademark “Gloria Jeans” in a similar segment and the like.
From the perspective of examination of trademarks, T.P. Sokolova defines it as follows: “A pseudo-foreign trademark is the result of artificial nomination, aiming at disguising the Russian manufacturer of goods and services as a foreign one for the sake of commercial gain.
That is, these are such trademarks, with which Russian companies are trying to give the impression of foreign production of goods. Why may domestic enterprises need such trademarks?
It is worth assuming that there may be the following reasons:
- The rights holder wants to attract increased consumer attention by hinting at the foreign origin of the product;
- As practice shows, many consumers associate the production of goods abroad with good quality. Because of this, products with English names are purchased better, assuming foreign origin. Thus, using a trademark with a foreign verbal element, the entrepreneur can count on attracting this category of customers;
- Perhaps, the entrepreneur plans to enter the markets of other countries and decided to immediately develop and create a universal designation, which will be understandable to both Russian citizens and foreigners.
Analyzing pseudo-foreign trademarks, it is worth noting that in certain cases, such designations may pose a threat of misleading consumers. In such a case, the examiners of the Patent Office may refuse to register the trademark or cancel the certificate afterwards.
Thus, if the designation will use a fancy foreign word, such as in the trademark “Raffaello”, we can say that in this case, the rights holder does not intend to focus consumer attention on the foreign production and rather wants to interest customers with an unusual name. At the same time, for example, the trademark “Carlo PAZOLINI”, widely known in Russia, which was used for the production and sale of shoes in Russia, together with appropriate advertising support caused many consumers to feel that shoes were made in Italy.
In addition, it is also worth noting that modern manufacturers, on the contrary, are increasingly beginning to emphasize domestic production, showing and telling consumers about the strengths of Russian goods. Examples include the domestic clothing manufacturer “ТВОЁ” and the Russian sneakers manufacturing company, using technologies developed in the USSR, produced under the trademark “ДВА МЯЧА”.
To summarize, it should be noted that the registration and use of pseudo-foreign trademarks are not contrary to the Russian legislation and can bring additional benefits to the right holder. However, at the stage of creating a trademark it makes sense to minimize the likelihood of misleading consumers because of the use of foreign words. Otherwise, such a trademark may not be registered.
Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63