The Letter of Consent as a tool for granting the legal protection for a trademark

Keywords: intellectual property, means of individualization, exclusive rights, trademark, registration of a trademark, refusal of the registration of a trademark, confusing similarity, letter of consent to the registration of a trademark

            The trademark is the main means of individualization of the products and services of one manufacturer among the products and services of other manufacturers. The person in whose name the trademark is registered has an exclusive right to use it. The right holder may also freely dispose of his rights to the registered designation, permit or prohibit its use by third parties.

            For the successful registration of a trademark, it is necessary that it meets particular criteria. Thus, in accordance with Article 1483 of the Civil Code of the Russian Federation, “The designations shall not be registered as trademarks, if they are identical or confusingly similar to: 1) the trademarks of other persons applied for the registration ... with respect to the homogeneous products and which have an earlier priority, if the application for the state registration of the trademark has not been withdrawn, not recognized as withdrawn or the decision on the refusal of the state registration has not been made for it; 2) the trademarks of other persons protected in the Russian Federation, including in accordance with the international treaty of the Russian Federation, with respect to the homogeneous products and which have an earlier priority; the trademarks of other persons recognized in the manner stipulated by this Code as well-known trademarks in the Russian Federation, with respect to the homogeneous products with the date, which is earlier than the priority of the applied designation.”

            If the results of the preliminary search carried out before filing the application have revealed identical or similar designations, registered/applied with respect to the homogeneous products or services, one of the ways to increase the chances of the registration of the mark is, of course, to change it – so that it will become less similar to the found designations. But what is there to do, if the preliminary search has not been carried out and the applicant learned about such problem only from the notification of the Office – a preliminary refusal of the registration? Or has he deliberately filed the chosen designation for the registration, knowing about the presence of similar marks, because any circumstances (the company policy, the funds already spent for the development and advertisement of the brand, etc.) were justifying such a risk?

            One of the ways to overcome a preliminary refusal based on the fact that the examination has revealed a similar registered mark is obtaining by the applicant of the consent from the right holder for the registration of this mark. Thus, in accordance with Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation, “The registration as a trademark with respect to the homogeneous products of the designation, which is confusingly similar to any of the trademarks... shall be allowed with the consent of the right holder, provided that such registration may not be a reason for confusing the consumer. The consent can not be withdrawn by the right holder.” Thus, the applicant, who is aware of the presence of a confusingly similar trademark with an earlier priority, may submit to Rospatent either at filing an application, or during the examination, or at filing an objection to the Chamber for Patent Disputes a document confirming the consent of the right holder of such similar trademark for the registration of the applied designation.

            The consent of the right holder takes the form of a Letter of Consent – a tool to which the applicants often resort so that to overcome preliminary refusals of the registration.  The issuance of such Letter of Consent can be carried out both for a fee and for free. In practice, foreign individuals and legal entities are more willing to give Letters of Consent for free. The Russian entrepreneurs, as a rule, require some monetary compensation.

            Because of the “popularity” of Letters of Consent, it has been necessary to regulate them more thoroughly. For the consideration of this issue, the Recommendations on the Application of the Provisions of the Civil Code of the Russian Federation Concerning the Consent of the Right Holder to Register a Similar Trademark, adopted by order of Rospatent No. 190 dated 30.12.2009 have a direct relevance.

            Thus, the Recommendations establish that the consent of the right holder of a similar trademark is made in a simple written form, and arbitrary. In practice, it can be a unilateral written statement or even a bilateral civil law agreement. Such document must include: the full information about the right holder, who is giving his consent to the registration; the full information about the applicant of the application; the very expression of the consent for the registration – with the condition that it can not be withdrawn; the application number (or, if the application has not yet been filed, the applied designation and its description must be enclosed), a particular list of products and services, as well as the conditions under which the right holder consents to the registration. The document must contain obligatory the date of drawing it up and the signature of the authorized person(s), for legal entities, as usual, the seal is necessary.

            Since all office work in Rospatent is carried out only in Russian, the Letter of Consent also must be drawn up in Russian. If, however, it is submitted in another language, the certified translation into Russian must be enclosed to it.

            It must be remembered that the compliance with the formal requirements is not enough. As it has been indicated above, the acceptance of the Letter of Consent by the examination and the removal of the opposition to the similar trademark are possible only if it is not a cause of confusing the consumer. Accordingly, the higher the probability of the confusion of designations in the civil circulation is, the lower the chances of registering a mark on the basis of a Letter of Consent are.

            According to the Recommendations, "The probability of the confusion of the applied designation and the opposed trademark increases significantly, in particular if: the applied designation and the opposed trademark have a degree of similarity, close to the identity; there is no doubt about the homogeneity of the products; the opposed trademark is widely known among the potential consumers of the product and is associated with a particular manufacturer (for example, if it is recognized as a well-known trademark in the Russian Federation); the opposed trademark is intended for the individualization of consumer products and fast moving consumer products (for example, for cosmetic and hygiene products, food, wine and tobacco products)..."

            Thus, if the designations are identical (they coincide in all elements), it is impossible to overcome the opposition of the identical mark to the applied designation on the basis of the Letter of Consent. But even if the designations are not identical, the more similar they are – the lower the chances of the registration are. Although, it all depends on the circumstances of the case – “in some cases, in the presence of particular special circumstances, the probability of confusing the consumer may be excluded, or confusing in these cases can not lead to negative consequences for the consumer.” The examination considers each particular case individually, and its conclusions can be quite different.

            If the applied designation is almost identical to the registered mark, in accordance with the Recommendations, the registration is appropriate only if the applicant and the right holder are somehow connected legally, for example, they are affiliated entities: this removes the probability of confusing the consumer. The new application and the already available certificate in this case can be perceived simply as “variations” of the same mark, when the differences are only in the colour, fonts, transliteration, etc. However, even the presence of “family ties” will not save the situation if the opposed trademark, for example, is widely known among consumers and associated with a particular manufacturer, intended for the individualization of consumer products/fast moving consumer products or medicines and in some other cases.

            In addition to the kind of a trademark, the list of products and services is of great importance. According to the Rospatent's Methodological Recommendations for Determining the Homogeneity of Products and Services During the Examination of Applications for the State Registration of Trademarks and Service Marks approved by Rospatent order No. 198 of December 31, 2009, “...When determining the homogeneity of products, the principal possibility that the consumer will start to perceive these products as belonging to one manufacturer shall be determined. To establish the homogeneity of products, the following circumstances shall be taken into account: in particular, the nature (kind) of products, their consumer properties and the functional purpose (the scope and purpose of the use), the kind of material from which they are made, the complementarity or interchangeability of the products, the conditions for their sale (including the general place of sale, the sale through a retail or wholesale network), the circle of consumers, the traditional or preferential way of using the products and other characteristic features."

            Obviously, the products from the lists of the application and the similar trademark are more homogenous, the higher the probability of their confusing is and the lower the chance of the acceptance of a Letter of Consent by the Examination is. In this case, the right holder of the opposed trademark may give his consent to the registration of a confusingly similar designation only for a part of the homogeneous products or services. The Recommendations contain the following example: “... the designation with respect to the product “vehicles” has been applied for the registration as a trademark. The opposed list of products has included the homogeneous products “buses, cars.” The right holder of the confusingly similar trademark submitted his consent for the registration of the designation for the products “bicycles, baby carriages.” In this case the registration of the applied designation can be made for the particular products indicated in the document confirming the consent, namely, for the products “bicycles, baby carriages.”

            Summing up, it can be said that the Letter of Consent is a sufficient effective tool to overcome the refusal of the registration on the basis of the presence of a confusingly similar trademark registered in the name of a third party with respect to homogeneous products or services. However, it does not guarantee obtaining the registration (the higher the probability of the confusion of the marks is – the lower the chances are), and the acceptance of a Letter of Consent always remains at the discretion of the examiner.