Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63
IP Court declared illegal the refusal to recognize the well-known trademarks "MEZIM"
In accordance with paragraph 1 of Art. 1508 of the Civil Code of the Russian Federation, a trademark may be recognized as well-known if, as a result of intensive use, it became widely known in Russia among the relevant consumers in relation to the goods of the applicant as of the date specified in the application. Thus, several evaluative concepts are subject to analysis (intensity of use, breadth of fame, the proper circle of consumers, fame precisely in connection with the applicant's goods), and the probability of disagreement in such a multivariate analysis is quite high.
An example of a case in which the positions of Rospatent and the court diverged on the well-knownness of a trademark is the recent case on trademarks "MEZIM" N 152521 (in relation to pharmaceutical and medicinal products) and "MEZIM" N 248463 (in relation to digestive aids, enzymes for pharmaceutical goals).
The right holder, a foreign company, challenged Rospatent's refusals to recognize these trademarks as well-known. In refusing to satisfy the applications, Rospatent came to the conclusion that the applicant did not provide evidence proving that the signs acquired the properties of well-known trademarks.
Disagreeing with the said decisions of the administrative body, the foreign person applied to the Intellectual Property Court.
First of all, the IP Court noted that the relevant administrative regulation includes an exemplary, non-exhaustive list of evidence of the well-known trademark, therefore, the applicants are not limited only to the information listed in it (for example, the names of the settlements where the sale of goods was carried out, in respect of which the use of the trademark was carried out). sign or designation, indicating the volume of sales of these goods, etc.).
The IP Court also emphasized that the duration of the use of a trademark does not matter - neither national legislation nor international treaties contain such a requirement for recognition of a mark as well-known. Duration can be only one of the factors that influences the formation of a certain idea in the minds of consumers, but not the only and not decisive.
The Court paid special attention to the fact that the establishment of the relevant range of consumers is one of the key tasks of Rospatent in assessing well-knownness. This circle may include actual and / or potential consumers of the type of goods and / or services for which the mark is used, persons involved in providing channels for their distribution, “business circles” involved in the type of goods and / or services for which the mark is used.
One of the numerous grounds for invalidating a refusal pointed out by the IP Court was a change in the position of Rospatent regarding the amount of evidence. At the court session, the representative of Rospatent noted that the case materials contained only “fresh” packages, while samples of packages issued before the requested date were not presented; however, in response to a clarifying question from the court, the representative corrected his position, indicating that there were packages before the legally significant date, indicating the applicant as the manufacturer in the case file, but they were not enough to draw conclusions and recognize the means of individualization as well known. The IP Court noted that such a change in position cannot be taken into account, since the first option is reflected in the decision of Rospatent.
Rospatent also demonstrated a change in its position on another issue - in another case, it had previously admitted that the trademarks in question were used by the right holder and that consumers associate them with the right holder, while at the same time, in the decisions on the current case, the position of the administrative body turned out to be exactly the opposite. The IP Court pointed out that under such circumstances, Rospatent is not entitled to change its position in the absence of proper grounds.
The IP Court also drew attention to the burden of proof, noting that the administrative body is not entitled to independently seek evidence of the well-known means of individualization or to refute this circumstance.
One of the central issues of the case was the question of what is evidence of the well-known trademarks; Rospatent analyzed the popularity of marks in relation to the applicant as such, and not in relation to his goods.
The IP Court stressed that the well-knownness of a trademark should not be determined in relation to a specific manufacturer, which may not be the trademark owner and/or the person introducing the product into civil circulation and ensuring its delivery to the consumer, but in relation to the subject perceived by consumers as a source origin of goods under the designation declared for registration. However, the norms of the legislation do not connect the recognition of a trademark as well-known with the condition that the applicant as a specific person is known to consumers of the relevant goods/services marked with a trademark - consumer awareness should consist in the fact that the goods come from the same source, but the consumer does not have to identify the product with a specific applicant.
Rospatent referred, among other things, to the fact that the evidence submitted by the applicant contains a designation that is different from the trademark (which is part of the mark). Despite the formal significance of this argument, the court noted that one statement is not enough - the administrative body is obliged to assess whether the essence of the trademark (from the point of view of consumer perception) was affected by the difference between the trademark and the image used on goods, therefore Rospatent cannot limit itself to a statement of the fact of the difference between the trademark and the designation used on the goods.
At the same time, Rospatent additionally referred to the fact that a simple "withdrawal" of a verbal element from a combined trademark cannot automatically indicate the well-knownness of this verbal element, since the well-knownness of the combined designation in itself does not indicate the well-knownness of a separate part of the combined designation. With regard to this argument, the CIP noted that this legal position does not conflict with the need for Rospatent to assess whether the essence of the trademark, from the point of view of consumer perception, was affected by the difference between the designation under study and the one declared as a well-known trademark.
As a result, as part of the restoration of the violated rights and legitimate interests of the applicant, the court ordered Rospatent to re-examine applications for recognition of trademarks as well-known.