Misleading consumers about the manufacturer of goods/service provider: applying paragraph 3 of Art.1483 of the Civil Code

This article is written in response to comments from our readers on social media. We will examine the issue of whether legal protection can be granted to a mark that, or a confusingly similar mark to it, was previously used and/or is being used by parties other than the applicant as of the application date. What challenges might the applicant face?

It is not uncommon for marks submitted for registration to have been previously used by others or to imitate such marks. Consider the following examples:

• The mark has been used for some time by several competitors without acquiring legal protection, and then one of them submits an application to register the trademark in their name.
• A foreign company exits the market, its trademark lapses, and a local business begins producing similar goods and applies to register a similar mark.
• An application for a trademark is submitted by one of the distributors/importers of foreign products marked with a trademark that does not have legal protection in this territory.

How is the examination conducted?

After submitting the application and receiving the decision to accept it for consideration, the examination phase of the claimed mark begins. From which sources can the examiner obtain information about the use of the mark prior to the priority date?

First, an informal objection (so-called protest) against the registration of the trademark may be submitted by any party. Such a party could be, for example, a foreign rights holder, another distributor/importer of foreign products, or a competing company using the mark for identical goods and/or services prior to the priority date.

Information provided in an informal objection must be documented. For instance, official company documents, commercial and marketing documents, and media information regarding the promotion of goods and/or services marked with the claimed mark may be attached. In this case, the arguments of the objection may be taken into account during the examination and affect its outcome.

Second, the examiner independently refers to information available in the public domain, including on the internet, to identify the presence of information about the claimed mark and evaluate its use by third parties for marking goods and/or services identical to those claimed.

If there are sufficient grounds, the examiner first issues a notification of the results of the compliance check of the claimed mark with legal requirements, referencing Paragraph 3 of Article 1483 of the Civil Code of the Russian Federation – misleading consumers about the manufacturer of goods/service provider, and if the applicant does not provide sufficient evidence refuting the argument of misleading, a refusal to register the trademark on this basis is issued.

What guides the examination in recognizing a mark as misleading consumers about the manufacturer of goods/service provider?

According to the Guidelines approved by the Order of FIPS dated January 20, 2020, No. 12, marks that may mislead regarding the manufacturer of the goods include those whose elements indicate a specific manufacturer or create an impression of a specific manufacturer through associations that arise in the consumer's mind. The same applies to service providers.

Thus, to conclude that misleading the consumer is possible, the examiner needs to find evidence that the consumer was aware of the mark before the priority date and associates it with a specific party other than the applicant.

The second criterion determining the possibility of misleading consumers about the manufacturer of goods/service provider indicates the need for the applicant to introduce goods with a similar mark into civil circulation. Although this criterion is controversial in scientific literature, it is often referenced in the practice of Rospatent.

At the same time, the mere fact of using a designation before the filing date of a trademark application does not indicate the possibility of misleading the consumer. As Rospatent notes, “for consumers to have a misconception about the source of origin of goods, the average consumer must be at least familiar with it, that is, hear about it from advertising, see it in sales offers, see mentions of it in the media, Internet networks, etc.”

That is, designations that can mislead consumers regarding the manufacturer of goods and/or services will most likely include designations that are identical or similar to the point of confusion/imitation of such designations, known to consumers and used for marking goods and/or services, as well as designations and their imitations that are not registered as trademarks, but are widely used in civil circulation by persons other than the applicant.

Also, with regard to the registration of designations identical/similar to the designations of companies that have left the market of the Russian Federation, Rospatent notes that this fact “does not cancel the creation of a threat of confusion and misleading the consumer regarding the manufacturer of the goods.”

So, during the examination, the presence of elements in the designation that can lead to misleading the consumer is assessed, and if the information indicating the manufacturer/service provider is not true, the declared designation may be recognized as capable of misleading.

It is important to note that the presence or absence of a designation’s ability to mislead consumers regarding the manufacturer/person providing services is always considered in relation to the declared list of goods and/or services.

How to overcome rejection in the registration of a trademark with reference to clause 3 of Article 1483 of the Civil Code of the Russian Federation?

You can try to overcome a preliminary refusal to register a trademark as part of a response to the examination notification. If this was not possible and Rospatent decided to refuse registration of a trademark, this refusal can be challenged by filing an objection with the Chamber of Patent Disputes.

In this case, it is necessary to document your position, and the list of evidence will depend on the situation.

If an application for registration of a trademark is filed in relation to a designation that has been used or is used not only by the applicant, then in this case he will need to submit:

• documents confirming its actual activities in the sale of declared goods/provision of declared services (lease/purchase and sale agreements for premises, agreements for the sale of goods/provision of services indicating the territory and volumes, advertising agreements, etc.);
• documents indicating that the applicant is recognized by consumers in Russia as a manufacturer of goods/persons providing services marked with the applied designation (advertising information, media publications, information about participation in exhibitions, etc.). In addition, it is highly desirable to provide information from independent sources, for example, data from a sociological survey of consumers.

If the application was submitted by a distributor/importer of goods produced by a foreign company, then you will need to provide as evidence:

• documents confirming his connection with the manufacturer (contracts/invoices/work completion certificates, etc.);
• a document in which a foreign manufacturer expresses his consent to register a trademark in Russia in the name of the distributor/importer. It is important to remember that a distribution or licensing agreement that includes the authority to use a manufacturer’s trademark does not constitute consent to its registration.

The specified list of documents is not exhaustive and is formed in relation to each specific case separately.