19 January 2023
#Visual Identity Usage

Registration of trademark does not exclude that the company name is in conflict with requirements of Civil Code

According to paragraph 4 of Art. 1473 of the Civil Code of the Russian Federation it is prohibited to include in the company name of a legal entity the official name of the Russian Federation or Russia, as well as words derived from this name, if there is no permission issued in the prescribed manner.

Otherwise, the body that carries out the state registration of legal entities has the right to force a change in the company name of the organization on the basis of a court decision (clause 5, article 1473 of the Civil Code of the Russian Federation).

Such a risk, in particular, is exposed to organizations whose corporate name contains the letter combination "ros". The court will oblige the organization to exclude the appropriate combination from its trade name if it comes to the conclusion that it evokes in the consumer a strong association about the participation of the state in the activities of the organization or about the special significance of such activities for the public interest.

This is due, among other things, to the stable position of the courts that the abbreviation "Ros" is often used in the names of organizations in which the Russian Federation is a member, or in the names of organizations that perform state functions or particularly significant activities for the state interests, for example, Rosreestr, Rospatent, Roskosmos, Rosnano, etc.

A similar position was expressed by the IP Court in case N А40-288364/2021 at the request of the authorized body to Rosdent-CHLH LLC to change the company name.

The organization (private dental clinic) was unable to convince the IP Court judicial board that the letter combination "Ros" in its company name is an abbreviation of the phrase "Russian General Dentistry".

The IP Court canceled the lower court decisions and supported the registration authority, agreeing with its arguments that the decoding of this abbreviation was not brought to the attention of potential consumers, is not indicated either in the Unified State Register of Legal Entities or in the charter of the organization, in connection with which consumers perceive its name as a derivative of the names "Russia" and "Russian Federation".

It is noteworthy that the appellate instance took into account that the defendant is the owner of the exclusive right to the trademark (service mark) "ROSDENT". The appeal pointed out that the fact of state registration of the trademark testifies to the position of the authorized body, according to which the trademark "ROSDENT" does not include, does not reproduce, does not imitate any official name, and is not derived from the word "Russia", "Russian Federation", "Russian".

However, the IP Court recognized this approach as untenable, noting that a trade name and a trademark (service mark) are independent objects of intellectual property, the purpose of which is to individualize, in the first case, a participant in civil circulation, and in the second, goods and / or services produced by him. A trade name included in a trademark or service mark is protected regardless of the protection of the trademark or service mark (Clause 2, Article 1476 of the Civil Code of the Russian Federation).

Thus, the fact of registering a trademark with a combination of letters, which is similar to the corporate name of the organization, does not in itself exclude the conclusion that such a name contradicts the requirements of paragraph 5 of Art. 1473 of the Civil Code of the Russian Federation.

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