Peculiarities of registration of trademarks - geographical denominations

Keywords: intellectual property, means of individualization, trademark, exclusive rights, trademark registration, verbal trademark, registration of a geographical denomination

Legal protection in the territory of the Russian Federation is granted to a trademark provided that it is registered by the federal executive authority for intellectual property - Rospatent [in accordance with the Civil Code of Russian Federation (Part Four) No.230-FL of 18 December 2006 (as amended on 13 July 2015.)].

In theory, trademarks can be divided into separate categories, one of which includes the marks which represent geographical denominations or include the denomination of a geographical object as its element. Such trademarks have certain peculiarities, which lead to appearance of some special aspects within the framework of the registration of such denominations.

According clause 2.4. of the Recommendations on specific issues of examination of requested designations ("Features of examination of designations that consist of geographical names or include them"), certain geographical names may be perceived by a consumer as a reference to the place of production or distribution of goods and the seat of the manufacturer. There are also geographical names which are not perceived as a reference to the place of production or distribution of goods and the seat of the manufacturer, they are perceived as almost fanciful in relation to any goods/services. Besides, there are names which, depending on goods/services for the individualization of which they are used, can be perceived as either fanciful or as indicating the place of production/marketing. However, a large group is represented by the names, which are perceived as indicating a link with a specific geographical object. Such designations requested for registration as trademarks, in their turn, are divided into the designations requested in respect of the goods the characteristics of which are linked to geographical origin, and the goods the characteristics of which are not related to it [Order No.39 of Rospatent of 23 March 2001 (as amended on 6 July 2001) "On approval of the Recommendations on Specific Issues of Examination of Requested Designations"]. The recommendations for registration of each of the designated trademark subcategories containing geographical denominations, and therefore, the requirements to such trademarks differ.

The requirements to trademarks are generally set forth in the Civil Code in the form of grounds for refusal to register. Among others, the absolute grounds for refusal to register include the following prohibition: "The state registration of the designations as trademarks is not allowed if they represent or contain the elements ... 1) that are false or can pass the consumer off as to the product or its manufacturer..." (clause 3 of Article 1483 of Civil Code of RF). 

The designations containing any geographical name without any good reason can be given as examples of false or passing-off designations. For example, the designation contains the name of a particular country or locality the producer of goods and services is not related with either formally or actually, it is not registered there, or it does not carry out any activity there, etc. Hence, the buyer may be passed off, assuming that the inclusion of the geographical name in the trademark indicates the product relationship with a particular geographical object, though no such link exists. Besides, the buyer may think that the goods have special characteristics related to such false "origin", such as high quality, which is not consistent with the reality as well. The manufacturer of the goods or services, in its turn, can receive ungrounded competitive advantages.

In accordance with clause 37 of the Rules of Compilation, Filing and Consideration of the Documents Serving as a Basis for the Performance of Legally Significant Actions of the State Registration of Trademarks, Service Marks, Collective Marks, "... in the course of examination of the requested designation, the compliance of the requested designation with the requirements of clause 3 of Article 1483 of the Code is verified. When considering the falsity or the ability of the designation to pass the consumer off as to the product or its manufacturer, it is considered that such designations include, in particular, designations generating an idea of particular quality of the product, its manufacturer or place of origin in the consumer’s mind, which does not correspond to reality . If at least one of the designation elements is false or passing-off, the designations is recognized false or passing-off "[Order No. 482 of the Ministry of Economic Development of the Russian Federation of 20 July 2015].

Therefore, some problems may appear when registering trademarks containing geographical denominations: Rospatent may refuse to register such a trademark. Although, in practice, it is possible to achieve cancellation of such a decision of Rospatent and get registration of the trademark.

For example, Rospatent refused to register the designation with the word "LONDON" ("LONDON MALL") in the name of the applicant registered in the Republic of Cyprus, since it came to a conclusion that such a trademark could pass a consumer off in relation to an entity providing services, and its location.

The applicant company UK FORT GROUP LIMITED did not agree with the arguments of Rospatent, believing that the consumer's attention is primarily focused on the knownness of the goods, their popularity in Russia. The company drew attention to the fact that currently the production of the goods labeled by known brands in other countries has become a common practice.

The company turned to the Intellectual Property Rights Court (hereinafter, the "IPRC"), referring, among other things, to the fact that the shopping mall it owned "LONDON MALL" had already operating  and had become quite popular in St. Petersburg, in connection with that the requested designation had distinctive ability. In addition, the company pointed to the large number of shopping malls, hotels, restaurants, the names of which used geographical names, including "LONDON."

Rospatent presented a defense to the claim in which it requested to dismiss the submitted claims and referred to the fact that "... the requested designation which includes the name of the capital of Great Britain may cause an association in Russian consumer’s mind with the location of the entity providing the requested services of the 35^th – 42^nd class of the International Classification for Goods and Services for the Purposes of the Registration of Marks... while the applicant is a Cypriot legal entity that does not have any relation to the capital of Great Britain... One of the definitions of the word "MALL" is "Street in the central part of London going from Trafalgar Square to Buckingham Palace, alley in St. James Park in London," ... that contributes to strengthening of false associations caused by the designation "LONDON MALL".”

Rospatent’s objection against the applicant's argument on the acquisition by the requested designation of distinctive ability is of interest as well: Rospatent noted that the shopping mall "LONDON MALL" was put into operation after the priority date of the requested designation, and "... the legislation does not stipulate acquisition of the distinctive ability by the designation which is not protectable on the grounds referred to in clause 3 of article 1483 of the Civil Code of the Russian Federation."

The applicant company UK FORT GROUP LIMITED submitted the following arguments to IPRC: "...knowing the geographical object itself is not enough to pass off", "in order to perceive the name of a geographical object as the location of the entity providing the services, the consumer shall know that this geographical object is known by provision of the services in respect of which legal protection is requested". Besides, "... it is necessary to distinguish between those geographical names which can be perceived by the consumer as indication of the location of the entity providing services and those which cannot be perceived as such". In this regard, "... within the framework of the examination of the requested designation, emphasis shall be placed on whether the city of London is known for providing the services specified in the list of the application..."; "...despite the fact that the name of the mall contains a geographical name, it will not be false to the consumer, because the consumer is not willing to believe that the entities providing services in the mall are located in London". Consequently, the registration of such a designation, according to the applicant, does not violate anyone's rights, and does not pass Russian consumer off. The court adjudication in this case is very interesting: the Intellectual Property Rights Court decided to satisfy the demands of the plaintiff, since it was found that although the controversial verbal element may raise in the consumer’s mind a false association regarding the location of the service provider, however, this association does not have the attributes of soundness, in connection with which the vast majority of consumers having certain life experience are not able to believe that indication of a geographical name shows the location of the entity providing the services, which gives the designation a fanciful nature [adjudication of the Intellectual Property Rights Court of 5 December 2014 under case No. SIP-837/2014]. The Presidium of the Intellectual Property Rights Court considering an appeal under this case, decided to affirm the Intellectual Property Rights Court adjudication, and dismiss the cassational appeal of the Federal Service for Intellectual Property [adjudication of the Presidium of the Intellectual Property Rights Court No. S01-119/2015 of 30 March 2015 under case No. SIP-837/2014].

Another interesting example of the trademark containing the geographical denomination concerns the designation "AMERICAN GREEN."

The trademark "AMERICAN GREEN" was registered in the name of the company NORTH AMERICAN SEED LLC in respect of the goods of the 31^st class (mixture of seeds) under MKTU (the International Classification of Goods and Services). Rospatent received the objection from Feldsaaten Freudenberger GmbH&Co. KG. against granting of legal protection to the specified trademark. The objections were based on the fact that the disputed trademark is confusingly similar to the designation "AMERICAN GREEN" established and owned by the company Feldsaaten Freudenberger GmbH&Co. KG., which had been used by it for a long time (since 1997) on the Russian market before the priority date of the disputed trademark for similar goods labeling - lawn grass seeds, and therefore, the consumers have stable association between the designation "AMERICAN GREEN" and the company. Rospatent made a decision to satisfy the objections and invalidate granting of legal protection to the disputed trademark.

NORTH AMERICAN SEED LLC appealed to IPRC. The Court, having examined the evidence presented by the parties, concluded that the consumers could not have stable associative relation between "AMERICAN GREEN" and the right holder of the disputed trademark – the company NORTH AMERICAN SEED LLC, but such a relation had appeared regarding the company Feldsaaten Freudenberger GmbH&Co. KG. (although that German company did not have grounds for using the geographical denomination in the designation): "... The applicant's argument that the use by German company Feldsaaten Freudenberger GmbH&Co. KG. of the designation containing the geographical denomination "AMERICAN" passes consumers off in relation to the place of the goods production is rejected by the court due to the fact that the subject of this dispute is to provide legal protection to trademark No.457316 and its ability to pass the consumer off with respect to the manufacturer of the goods, rather than the place of their production." The court upheld the decision of the Federal Service for Intellectual Property [Adjudication of the Intellectual Property Rights Court of 30 April 2014 under case No. SIP-71/2013].

Besides inclusion of a "simple" geographical denomination in the trademark, there may be cases where the designation contains the protected designation of origin (hereinafter, the "PDO") - an independent items of intellectual property.

Thus, the relative grounds for rejecting a trademark registration include confusing similarity of the requested designation to the protected designation of origin (clause 7, Article 1483 of the Civil Code of RF). Consequently, when holding the examination of applications, focus is placed on the designations which represent or include the elements which reproduce or are confusingly similar to the registered PDO. To date, Rospatent's position on this issue is as follows: any mark which includes the registered PDO, provided that the applicant is not entitled to use PDO under the application cannot be registered as a trademark.

In this respect, the case about the combined trademark with the verbal designation "ararat" under international registration No.1081108A, registered in the name of "Ararat" FoodFactory LLC (Armenia) is of interest. Subsequently, the company "Yerevansky Konyachny Zavod" became the owner of the mark.

Rospatent rejected to grant legal protection to the international trademark on the territory of the Russian Federation because of its non-compliance with the provisions of subclauses 2 and 3, clause 6 and clause 7 of Article 1483 of the Civil Code of RF. Rospatent found confusing similarity between the international trademark and the means of individualization opposed to it – PDO  "ARARAT", the exclusive rights to which belong to the company "Ararat Group" on the basis of certificate No. 115/1 of the Russian Federation in respect of the goods "mineral water". Rospatent concluded that "...the named designations are similar due to the fact that they contain in their composition a phonetically and semantically identical verbal element "ararat". The most significant element of the combined designation is a verbal element, figurative differences are minor in nature, and therefore the means of individualization compared are similar as a whole, despite certain differences."

Under these circumstances, Rospatent, pointing to the absence of the need to establish the similarity of goods, in respect of which PDO "ARARAT" is registered and legal protection of the international trademark "ararat" is sought on the territory of the Russian Federation, nevertheless, acknowledged their similarity due to the same purpose, similar sales conditions and circle of consumers. Rospatent also took into account that the company "Yerevansky Konyachny Zavod" did not have the right to use PDO "ARARAT". In view of the above, Rospatent concluded that the requested designation did not comply with the requirements of clause 7 of Article 1483 of the Civil Code of RF.

The Court also stressed that the right to use PDO "ARARAT" belonged to the company "Ararat Group", and therefore the provision of legal protection for the disputed trademark on the territory of the Russian Federation could affect the rights acquired by the named entity. Thus, the Court dismissed the application of the Closed Joint-Stock Company "Yerevansky Konyachny Zavod".

As follows from the above, the conditions for registration of trademarks - geographical denominations (or those containing geographical denominations) are quite peculiar. That is why before applying for registration of a designation containing such a "problem" element as the name of a real existing geographical object, it shall be checked for compliance with the Russian Federation legislation, in particular: such a trademark shall not pass a consumer off and shall not create false idea in his mind of its manufacturer or place of origin. In addition, the requested designation shall not have confusing similarity with the protected designation of origin the applicant has no right to.