25 April 2019

The well-known trademark: particularities of the registration

The Public Register of Trademarks in the Russian Federation as of 2019 includes 707878 certificates.[1] At the same time, the Public Register of Well-Known Trademarks includes only 204 titles of protection.[2] The difference between the number of the registered means of individualization in both categories is significant. Perhaps, this is a result of the fact that the additional requirements to confirm the corresponding status are imposed to the designations filed for the registration as well-known trademarks. In all fairness it has to be noted that the right holder of such designation is granted a number of additional authorities as compared with the authorities obtained, while registering a conventional trademark.

The well-known trademark: specificity and distinguishing features

Article 1508 and Article 1509 of the Civil Code of the Russian Federation are devoted to the conditions of protection and the registration of well-known trademarks. So, both the designation registered on the territory of Russia or protected in accordance with the international treaties of the Russian Federation and the means of individualization, which has not legal protection on the territory of Russia may be recognized as a well-known one.

To recognize the trademark well-known, the following conditions must be observed:

  • The designation is heavily used.
  • The trademark is widely known in Russia.
  • The consumers identify the trademark with respect to the applicant's products.

The designation that has become widely known after the priority date of the trademark of another person that is identical or confusingly similar to it, which is registered with respect to the homogeneous products can not be registered as a trademark.

Specificity of possessing a well-known trademark

It is obvious that imposing by the legislator the additional requirements to such designations is due to granting the preferences to the holder of the well-known trademark. Such shall include:

  • An unlimited period of protection of the designation.
  • The expansion of the scope of legal protection with the distribution to the products, which that are not homogeneous with those ones with respect to which the designation is recognized well-known. Provided that the use of the trademark by another person with respect to the said products may evoke an association among the consumers with the right holder of the well-known trademark and, as a result, it will lead to infringing the legitimate interests of such holder.

The particularities of the registration of designations as well-known trademarks

The Administrative Regulations that clarify and describe the procedure and conditions for checking the designation as to its compliance with a status of being well-known were adopted in 2015.[3] According to Subparagraph 3 of Paragraph 17 of the said act, in order to confirm the fact that the trademark has obtained the status of being well-known, the applicant must provide the following information to the Federal Executive Authority at the stage of filing an application:

“– on the heavy use of the trademark or the designation, in particular, on the territory of the Russian Federation;

– on the countries, in which the trademark or the designation has become widely known;

– on the expenses incurred for advertising the trademark or the designation (for example, the Annual Financial Reports);

– on the cost (value) of the trademark in accordance with the data contained in the Annual Financial Reports;

– on the results of the surveys of the consumers of products regarding the status of being well-known of the trademark or the designation, carried out by a specialized independent organization, which can be documented taken into account the recommendations posted on the web-site of Rospatent.”

The applicant may also provide the additional information confirming the fact that the designations used is widely known. For example, the company ANO “TV-Novosti” provided an opinion on the results of the analysis of the frequency of mentioning the designation in the mass media and the information on the participation in various public events[4], when filing the application for the recognition of the trademark “RT” (an abbreviated name of the TV channel “Russia Today”) well-known. And the representatives of LLC “Internet Solutions,” who carry out the sale of the products using the web-site ofzon.ru, submitted a report on the proportion of the customers of a “purchase ever made” category (the category of the consumers, who have purchased the product at the indicated online store at least once). According to the report, the number of such customers has reached 6.5 million people.[5]

In the course of the examination, the application for a well-known trademark passes a stage of formal examination (a check of the documents for their compliance with the requirements specified) and a stage of checking and assessing by the Commission of Rospatent the information and the evidence submitted. The maximum period for the consideration of the application is 10 months, in some cases; an extension of the period is permissible, but not more than by 10 months.

The result of the second stage of the examination is making a decision by Rospatent on satisfying the application and on recognizing the designation well-known or the applicant is refused in the registration; making a decision on terminating the paperwork is also possible. If the examination result is positive, the means of individualization is entered into the List of Well-Known Trademarks in the Russian Federation and the right holder is granted a certificate for a well-known trademark.

If the specialists of the Office consider the registration of a well-known trademark to be unacceptable for any reasons, then the right holder is refused in providing legal protection with the indication of the reasons, by which the persons, who have carried out the examination, were guided. Not so long ago, the company Soremartec C.A. attempted to register the designation Raffaello as a well-known trademark with respect to the 30th class of the ICGS (the confectionery products, namely: candy). At the initial assessment, one can conclude that the means of individualization claimed is really well recognized by the consumers and it should be registered as well-known. However, after the thorough study of the reports and other evidence submitted by the applicant, Rospatent concluded that the confectionery products had been manufactured in Belgium and Poland, while the information on the manufacture in Russia had not been specified in the materials submitted by the applicant. Thus, the existence of an associative link “product – manufacturer” at the consumer’s mind causes doubt. Another argument in favor of the refusal to grant the status of being well-known to the trademark was the information indicating that the designation was used in different colour and font solutions within different periods: in 1998-1999 it was in a red colour, in 2003 it was in a gold brown colour range, then again it changed the colour to red. Having analyzed the evidence submitted, the experts of Rospatent refused to grant the status of being well-known to the designation due to the lack of evidence of the identification of the product with the manufacturer in the consumer’s mind and the impossibility of establishing the period of the use of the trademark in the claimed form.

The company Korea Yakult Co., LTD, which had filed for the registration the designation “Doshirak” for the 30th class of the ICGS (namely: instant noodles), also got a refusal in granting the status of being well-known to its trademark. The applicant had submitted the evidence of the popularity of the products at the Russian market, the availability of the manufacture on the territory of the Russian Federation and other information indicating that the means of individualization was widely known. But the representatives of Rospatent did not recognize “Doshirak” well-known motivating their decision by the following circumstances: the original trademark had been registered by the right holder with respect to the following products: macaroni, dumpling, macaroni products, pizza, bread, etc. At the same time, in the application for the recognition of the designation well-known, only instant noodles was indicated, which was absent in the list of the products for which the means of individualization had been registered. The application materials contain the information on the use of the designation in various colour and font solutions, what makes it difficult to establish the fact of the intensity and the period of the use of the indicated trademark in the claimed form. Among other things, the experts of Rospatent noted that the social surveys submitted by the company did not allow concluding that the consumer had the associative link “product – manufacturer.” In connection with the above circumstances, the Board of Rospatent made a decision to refuse granting the status of being well-known to the trademark.

The given examples of the refusals points to the fact that in the course of the examination of the designation for its compliance with the requirements specified, the experts of the Office pay an increased attention to the establishment of such facts as: a unity of the colour, the font or other solution, in which the trademark has been used within the claimed period and the evidence that the consumers have the associative link “product – manufacturer.” However, the refusal to grant the status of being a well-known to the trademark should not be considered as final and unconditional. As in case of the refusal to register or the termination of the paperwork, the applicant is entitled to appeal the decision of Rospatent.

Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63