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Sergey Zuykov

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

16 August 2022

Qualification of designations as false or capable of misleading about the product (its manufacturer) in IP Court practice

In accordance with paragraphs 1, art. 3, Article 1483 of the Civil Code of the Russian Federation, state registration as trademarks of designations that represent or contain elements that are false or capable of misleading the consumer about the product or its manufacturer is prohibited.

This prohibition follows from the provision of Article 6-quinquies (B-3) of the Paris Convention for the Protection of Industrial Property, according to which trademarks may be rejected at registration or declared invalid if the marks are contrary to morality or public policy and, in particular, if they may mislead the public.

At the same time, judicial practice focuses on the fact that about verification of the designation for compliance with the "registration" requirements is based on the perception of this designation by the addressees of goods/services for the individualization of which legal protection of the designation is requested - by average consumers, but specifically by Russian ones, even if the designation is made in a foreign language.

It is also important to note that a designation is considered false or misleading if at least one of its elements is such.

When evaluating designations for falsity/ability to mislead, the key category is plausibility-according to the Recommendations on certain issues of examination of the declared designations if an element is found to be false or misleading, it is advisable to evaluate whether the false indications or associative representations are plausible and whether the consumer will believe the false indications and associative representations.

If elements of a designation can be classified as false or misleading, but are implausible, it is not appropriate to recognize the designation as false or misleading.

For example, Rospatent recognized the designation "CHUDO PIZZA" in relation to goods of the 30th class MCTs that are not pizza (pancakes, noodle-based dishes, etc.) are a false indication of the type of product. But the court in N SIP-543/2021 proceeded from the fact that the word element "pizza" is not able to evoke in the consumer's mind plausible associations in relation to the named products, which obviously do not belong to the dish "pizza" and cannot be perceived by the consumer in this capacity, taking into account the prevalence of this word and a clear understanding of its meaning for the absolute majority of consumers.

In case N SIP-1140/2020, the designation was also not recognized as false – the court indicated that the phrase "PROFITABLE CLEANING" in terms of goods of the 3rd class of ICTU related to cosmetics, perfumes, face care cannot be perceived as plausible when marking any cosmetic product from the registration list.

In another case, the Agency erroneously refused to register the trademark "Passport Brand", on the grounds that the claimed designation can be misleading consumers on the type and destination of the goods and services, and the applicant insisted that the designation is fictional, not having a definition in the dictionary, therefore will not enter the consumer confusion regarding the type and purpose of the claimed goods and services; two separate entities, "passport" and "brand" do not form a really existing object or applicable anywhere concept.

The court supported the arguments of the future copyright holder, pointing out that the verbal designation is a fantasy, invented designation that does not cause the consumer to have plausible associations with any specific goods and services, which follows from the evidence provided by the applicant in the case file.

On the contrary, if false and misleading elements are perceived as plausible, reliable indications of the type and nature of the product, information about the manufacturer, etc., they may be considered false or misleading.

For example, in the case of N SIP-1066/2020, it was noted that for the product "wine" the designation "FIRE WATER" would be false (but at the same time plausible), and in the case of N SIP-24/2021, such signs were established for the designation wine "Neapol" because the information contained in it may create a distorted view of the place where the relevant services are provided, and through associations, mislead the consumer; thus, “Neapol" can obviously cause the Russian consumer to have plausible associations associated with the place of origin of services, as well as with the location of the person providing them, which do not correspond to reality.

In the case of N SIP-864/2020 the court upheld the view of Rospatent on the ability to refer to the "Police" to mislead consumers regarding the service provider as came to the reasonable conclusion about the origin of the consumers is untrue, but the most likely associations between the declared designation and the same name on the rule of law (given the fact that the trademark was planned for legal services, guard services and security).

The category of possible delusion is one of the most difficult in practice. Such designations include, in particular, designations that generate in the consumer's mind an idea about a certain quality of the product, its manufacturer or place of origin, which does not correspond to reality, therefore, in order to conclude that the average Russian consumer can be misled by the fact that the designation is used by another manufacturer, it must be established at least that this manufacturer uses a specific designation in the Russian Federation and that the average Russian consumer knows it.

The information note prepared based on the results of the analysis and generalization of judicial practice, approved by the decision of the Presidium of the Intellectual Property Rights Court of 05.04.2017 N SP-23/10, specifies the criteria for analysis – paragraph 2.3 emphasizes that consumer confusion regarding the manufacturer of goods can also occur in relation to designations that individualize heterogeneous goods. The help highlights important factors that affect the likelihood of a mistake.: These are the relevance of goods to categories of general consumption or industrial and technical purposes (the probability of mixing in the first case is higher) and the duration of use of goods (the shorter the service life, the higher the probability of mixing).

This explanation appears to be situation-specific, and its formal application may lead to incorrect conclusions. So, in case N SIP-212/2018 Rospatent refused to register the trademark "Molodostroy", citing the ability of the designation to mislead consumers in relation to the person providing services – due to possible confusion with the housing and construction cooperative "Molodezhnaya Stroika".

With regard to the argument of the failed right holder about the absence of a detailed assessment of the uniformity of goods and services in the contested decision, Rospatent pointed out that in order to refuse registration of a designation as a trademark, it is sufficient to establish the probability of occurrence in the consumer's mind of an idea about a person providing services that does not correspond to reality, and therefore the uniformity of goods and services in such a situation is not taken into account.

However, the court recognized that this legal approach should not be applied automatically to any situation and that the true meaning of the explanation is that the absence of the need to take into account the uniformity of goods and services arises in exceptional cases when the designation applied for registration as a trademark had a high degree of popularity and was associated with a certain person among a wide range of consumers before the priority date.

Evidence presented in the cases of this category is quite complex; practice emphasizes the that conclusion about the origin of the consumers Association of a particular trademark with a particular manufacturer requires not only the presence of evidence to support the introduction into civil circulation of goods (services) with a similar designation of a different manufacturer, but also a confirmation of the consumers stand associative link between the product (service) and its producer (contractor).

As an example of the applicant's success against granting legal protection to a trademark capable of misleading consumers in relation to the manufacturer, we can cite case No. SIP-564/2019.

The objector pointed out the existence of an exclusive right to the well-known trademark No. 129 "LEGO" and a series of trademarks LEGO/ LEGO, referring to its long history, the company's popularity among consumers, and the use of the "LEGO City" designations for marking goods (thematic series) in its business activities, presented a report on the results of a sociological survey of consumers conducted by VTsIOM, which, in the company's opinion, confirms the conclusion about the popularity of the "LEGO" trademark and the presence of an associative link between the disputed "LEGOROD" trademark and the person who filed the objection.

Rospatent rejected the objection, referring to the results of the VTsIOM report and pointing out that only 20% of respondents assumed that the owner of the designation "LEGOROD "is a company, while 21% of respondents believe that the owner of the designation" LEGOROD "is not related to the company, 30% of respondents believe that the owner of the designation" LEGOROD " is not related to the company, but conducts its activities under the control or under license or with the permission of the company, and the remaining 29% of respondents could not decide on the answer.

But the court, on the contrary, considered that the ability of the sign to mislead the consumer about the person who makes goods and provides services was proved, since it was confirmed by the VTsIOM report in conjunction with an average degree of similarity of designations and a high degree of uniformity of goods and services, as well as with information about a series of opposed signs of the company and their popularity.

Considering the VTsIOM report, the court noted that Rospatent mistakenly did not take into account that the number of respondents who consider the person using the disputed sign to be the company itself, a person controlled by the company or its licensee is 50% of respondents in aggregate. Thus, the report contained information about consumer associations between the disputed designation and companies as producers of goods and performers of services for registering the disputed mark, and confirmed the wide popularity of the opposed trademarks, including the well-known "LEGO" trademark in the Russian Federation.

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