Problems of the Registration of trademarks performed in Latin entered on behalf of Russian applicants

22 OCTOBER 2005

Key words: property, the results of intellectual activity, exclusive rights, trademarks, registration of trademarks, a trademark in Latin, a trademark in a foreign language

Trademark –is “designation designed for individualization of goods of legal entities or individual entrepreneurs" ["Civil Code of the Russian Federation (Part Four)" No. 230-FL dd. 18.12.2006 (as in force from 13.07.2015)]

Throughout the Russian Federation an exclusive right to a trademark is valid, which is resisted by federal executive service for intellectual property– Rospatent. Accordingly, to ensure the legal protection of the designation that you are going to use as a trademark for the individualization of goods or services you produce/render, it is necessary to register it at Rospatent.

However, in the process of registration of some designation or other as a trademark one can face a number of problems, as for example, problems with registration of designations designed in Latin characters.  Though at the present moment registration of such designations grows in popularity, as in general, use of foreign words and Latin letters increases the attractiveness of a trademark, allows the manufacturer to enter the world markets more actively. Thus, designations in Cyrillic characters are difficult to perceive for foreign consumers and they do not perform to the full extend a distinct individualization function for the goods of a particular manufacturer. 

The decision to register a designation as a trademark shall be made as a result of the state examination of the trademark application, which is performed by Rospatent. In accordance to article 1483 of the Civil Code of RF, state registration as a trademark is not allowed for designations which by itself or individual elements thereof are false or able to confuse a consumer about the product or its manufacturer. And in the process of a designation examination requested as a trademark, the compliance of the requested designation with the requirements of article 1483 of the Civil Code is verified in particular.

Designations designed in Latin characters and registered for the name of a Russian person, the expertise can designate as a trademark able to confuse a consumer about the entity that produces goods or renders services. So, the consumer may think that the goods marked with such a trademark are of foreign origin, imported from abroad and is of different quality from Russian ones. And Russian manufacturers who pretend to be foreign companies get unjustified competitive advantages, making the consumer to feel a strong connection of the marked product with a certain country.

Particularly with regard to designations whose legal protection is asked for such products as cosmetics, perfumes, clothing, accessories.  Also there are refusals on this basis in relation to designations whose legal protection is asked for provision classes, drinks included.

For example, Rospatent has made a decision to refuse in state registration a trademark to verbal designation "Escadero" designed in Latin characters, on the following basis: “…designation does not correspond to the requirements of clause 3 (1) of article 1483 of the Code, for it is able to confuse the consumer about the origin of the product and location of its manufacturer; the given argument is motivated by the fact that the requested designation is designed in a foreign language, in this connection it is associated with the foreign origin of the products, which does not correspond to reality, since the applicant is a Russian company; when using the requested designation as a trademark to identify goods of classes 32 and 33 MKTU ( International Classification of Goods and Services), designation is able to generate in the mind of the consumer the idea of a particular place of the product origin, i.e. as of a foreign state, which does not correspond to reality as the applicant is located in Russian Federation…”

Very often when registering marks for identification of the above-mentioned goods by Russian companies request for designations that present name and surname of foreign origin and it is exactly such registrations that expertise acts against, believing that the consumer can fall into deception, not without reason.

For example, Rospatent has made a decision to refuse in state registration as a trademark to a name containing verbal elements "РОБЕРТОРОНЕТТИ","ROBERTORONETTI".  It is interesting to note Rospatent’s opinion:  in its opinion, the required designation “…is a coherent spelling of the name and surname of a foreign (Italian) origin and has a phonetics characteristic of the Italian language, at the same time name "ROBERTO" (Роберто) is known to Russian consumer; concerning goods of class 25 MKTU (International Classification of Goods and Services)the analysed verbal elements are able to generate in the minds of consumers the idea of a foreign manufacturer of the goods, due to the high reputation of Italy as the world leader in fashion, which does not correspond to reality as the applicant is a Russian individual entrepreneur. Today, Italy is one of the largest manufacturers and suppliers of high-quality clothes and footwear to the world market; marking with the requested designation of goods of class 25 MKTU (International Classification of Goods and Services)is able through associations to generate in the minds of the consumer the idea of the foreign origin of these goods, their production in Italy; registration of the requested designation as a trademark for the requested of goods of class 25 MKTU (International Classification of Goods and Services) can confuse the consumer about their manufacturer and the country of origin."

Some people view such a bit “biased” attitude of Rospatent to the applications in Latin characters as unfair and infringing upon the rights of the applicants, because it is based on the assumption the producer of goods and services being dishonest. In addition, Russian entrepreneurs seeking to enter the international market have to register different trademarks:  separately for "internal" and separately for "external" use; rights to international registration of a trademark are violated.

The arguments of the examination can be tried to overcome if you provide documents confirming the foreign origin of the goods or their components. Among other things, the presentation of documents on the joint production of goods or services with a foreign person, on the use of foreign technology under the contract can be an argument.

In the case of cosmetics / perfumes, clothing and accessories it is also desirable to provide documents confirming that foreign companies or foreign designers are directly involved in the creation of new fragrances or a new design of clothing and accessories is made by foreign companies or foreign designers specifically on request of the Russian applicant company.

In any case one must bear in mind the fact that the question whether to accept or not the arguments for the designation's defence is still within the competence of the expertise.

Thus, despite the fact that, according to Russian legislation and in accordance with existing international agreements, a trademark in the Russian Federation can be registered in any language, nevertheless, when developing a particular designation for the individualization of goods or services, it is necessary to take into account the position of expertise on this issue:  It is necessary to be prepared for the fact that, most likely, one will have to justify the use of the Latin alphabet.

There are also other options for solving this problem, for example, filing or assignment of an application for a foreign person.

The "measure of last resort" is to appeal against Rospatent's decision to reject to register a trademark designed in Latin characters and this way is rather effective, thought complicated. Thus, it can be proved that there is no verbal element of a designation to be registered as a trademark in dictionaries and it does not carry information in itself about a particular country or any other geographical associations, therefore, it does not confuse the consumer and can be registered.

So, the above mentioned trademark containing verbal elements "РОБЕРТОРОНЕТТИ",  ROBERTORONETTI, was finally registered and the decision of Rospatent to refuse to register it was cancelled accordingly. It is interesting to know the motivation to cancel Rospatent's decision: "...analysis of public sources ... showed that the verbal element "РОБЕРТОРОНЕТТИ", "ROBERTORONETTI" of the claimed designation is not a lexical item of the Italian language. ...The artificial combination of elements "РОБЕРТО"/"ROBERTO" with elements "РОНЕТТИ"/"RONETTI"  in the way of joined-up handwriting as name and surname of foreign origin on its own terms does not encourage direct associations with any specific person - a person working in the field of the fashion industry, designer clothes, shoes, hats, including ones from Italy... The analysis of the practice provided by the applicant ... showed that such registrations existed, including also that of the homogeneous goods of class 25 MKTU (International Classification of Goods and Services) ... Brand "Carlo Pazolini" known to most consumers and serving to identify shoes was founded by a Russian entrepreneur  and exists since 1990 (the year of the trademark registration) ... Thus, the collegium of the Chamber for Patent Disputes has reason to suppose that registration of the requested designation in the name of the applicant will not cause in the minds of the consumer a misconception about the manufacturer or the place of origin of the requested goods of class 25 MKTU (International Classification of Goods and Services). Therefore, the collegium does not see contradictions of the requested designation with the requirements of clause 3 (1) of article 1483 of the Code".

The 'silent" prohibition to register a trademark designed in Latin is used by Rospatent in a very differentiated way and is defined in every particular case by a large number of subjective factors, often without any analysis of factual situation and sufficient grounds. At the same time, until now Rospatent has not yet developed a common practice of registering trademarks designed in the Latin: there are cases of cancellation of decisions to refuse to register