IP Court upholds refusal to register the trademark, despite to the US origin of opposed trademark
In case N SIP-238/2022, the entrepreneur applied to the Intellectual Property Court, challenging the refusal of Rospatent to satisfy the objection to the refusal to register a trademark.
The main reason for invalidating the refusal was the lack of confusing similarity between the potential trademark “ADVENTURE CATS” and the opposite means of individualization “CAT” of another person.
However, the IP Court considered the conclusion of Rospatent about the similarity to the degree of confusion between the claimed designation and the opposing trademark correct, noting that a high degree of similarity of designations along with a high degree of homogeneity of goods increases the likelihood of confusion between designations.
In addition, the applicant drew attention to the fact that the copyright holder of the opposing trademark is the American company Caterpillar Inc (Delaware Corporation).
The failed copyright holder referred to the fact that, according to the order of the Government of the Russian Federation of March 5, 2022, N 430-r, the United States is included in the list of foreign states and territories that commit unfriendly actions against the Russian Federation, Russian legal entities and individuals.
The entrepreneur pointed out that there is no likelihood of confusion between the compared trademarks in the eyes of the consumer, and the refusal to register a trademark “in order to protect the exclusive right to the opposed trademark” is contrary to the national interests of the Russian Federation. At the same time, the applicant referred to the notorious decision in the Peppa Pig case, as well as information about a donation through the fund of the owner of the opposed sign of more than one million dollars to support the needs of the humanitarian crisis in Ukraine and the suspension of Russian production facilities.
However, the IP Court rejected the argument that the provision of legal protection for a trademark owned by an American company and the refusal to register the claimed designation as a trademark violates the national interests of the Russian Federation. The CIP pointed out that the inclusion of the United States in the list of foreign states and territories that commit unfriendly actions against the Russian Federation, Russian legal entities, and individuals does not remove the fact of opposing a trademark registered in the territory of the Russian Federation in the prescribed manner, especially considering that any retortions in the considered area were not introduced.
Originally published in World Trademark Review
Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63