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Author
Sergey Zuykov

Managing Partner / Patent Attorney of the Russian Federation / Eurasian Patent Attorney

12 October 2022

Overview of trademark cases in which the IP Court Presidium supported the annulment of Rospatent decisions

In practice, the decisions of Rospatent are less likely to be recognized as invalid than the applicant receives a refusal to satisfy the corresponding application. In this regard, it is advisable to consider those recent relevant acts of the Presidium of the Court for Intellectual Property Rights, the adoption of which contributed either to the registration of trademarks, which had previously been denied, or to the re-examination of the objection to the refusal to register a mark.


In case N SIP-977/2021, the refusal to register the trademark "WISMAR" was motivated by the fact that the designation, which is the name of a German city, indicates the place of origin and production of goods and services, and therefore does not have a distinctive ability. At the same time, according to Rospatent, registration is also capable of misleading the consumer about the place of origin of goods, since the mark is registered in the name of a person located in the city of Orel. Rospatent adhered to this position when considering the objection to refusal.


However, the decision was canceled by the court, since both the emergence of associations between Russian consumers between a foreign city and goods (services) and the wide popularity of the city of Wismar to the Russian consumer in connection with the presence in this city of manufacturers of goods for which legal protection is sought were not proven. The court emphasized that the mere fact of the coincidence of a designation with the name of a city cannot serve as a sufficient basis for refusing to register this designation as a trademark, since the legislation does not establish an unconditional ban on the use of geographical names in trademarks, but takes into account existing or probable associative connections arising from consumers in connection with the controversial designation.


The court drew attention to the fact that it is required not only to establish the presence or absence of a geographical object whose name is reproduced in a trademark, but also:

  • its popularity for the target group of consumers;
  • the ability to be perceived by the average consumer as a place of production of a specific product, which depends on whether consumers have associative links between a specific product and a specific designation.


With regard to the argument about the ability of the designation to mislead, the court noted that Rospatent had to prove that in the mind of the consumer, through associations, an idea about the manufacturer of the goods may arise, which does not correspond to reality.


In case N SIP-899/2021, Rospatent refused to register the trademark "MORE! MILK" for dairy products, indicating that the dominant position in the disputed designation is occupied by unprotected elements that do not have a distinctive ability, as they indicate the type, composition, properties, purpose of goods and services.


The court, obliging Rospatent to register a trademark, noted that there is no prohibition on the registration of verbal elements characterizing a product (service) made with a certain graphic study that allows distinguishing the claimed designation from similar ones, including due to the complication of additional elements.


After analyzing the controversial verbal designation from the standpoint of an ordinary consumer, the court found that the only dominant element "MORE!" can be perceived by Russian consumers who are not native English speakers, including as a transliteration of the Russian word "sea". The word element "MORE!" is a protectable, fantasy (non-descriptive) element, and the word element "Milk" can be included as an unprotected element. At the same time, in general, the elements form an original composition, so there was no need to analyze the confirmation of the acquisition of distinctive ability.


Also, the court did not support the position of Rospatent on the unprotectability of both verbal elements (based on the fact that they are perceived as a phrase (“more milk”) that characterizes goods and services). The Court pointed out that writing these words in two lines separated by a punctuation mark and in a different graphic manner precluded the inference of perception as a phrase.


In case N SIP-607/2021 Rospatent made a decision to refuse registration of the trademark "KotoMishki", motivated by the identity of the image to the work of a third party.


Denying an objection to this decision, Rospatent pointed out that the pictorial elements could well be perceived precisely as images of the characters of a particular animated film, and the very characteristic external outlines of round heads with mouths skewed to the side determine their resemblance in general to the characters of the popular children's animated series, which have exactly the same characteristic memorable features that draw attention to themselves.


However, the court ordered Rospatent to register the mark, since in order to conclude that there is a strong associative connection with the opposing works, only “some” similarity due to the use of images of recognizable animals made in a stylized form typical for children's cartoons and illustrations for children's fairy tales is not enough.


The court considered that the conclusions of Rospatent were based on a subjective opinion and were not supported by objective information reflecting the opinion of consumers. At the same time, it was noted that, in itself, information about the wide popularity of the animated series does not predetermine the conclusion about the presence of relevant associations, since the fame of the work can "both generate wide associative connections, and, on the contrary, lead to increased consumer awareness, to its attentiveness and selectivity".


In case N SIP-455/2021 Rospatent refused to register a trademark "AVIATOR" due to confusing similarity with trademarks previously registered in the name of other persons in relation to similar goods. Filing an appropriate objection did not change the situation.


Challenging the refusal to satisfy the objection, the applicant, as in the objection, referred to the agreement reached between him and the right holder of the opposing sign - in the form of an agreement on the alienation of the exclusive right, which was registered with Rospatent.


Obliging Rospatent to reconsider the objection, the court pointed out that the acquisition of the exclusive right to the opposing service mark is the result of a conciliation of persons, which indicates that the legal grounds for opposing the corresponding mark have disappeared.

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