04 October 2022
#Visual Identity Usage

IP Court overrules Rospatent’s finding of similarity for marks in different classes

The Presidium of the IP Court has, on appeal, overturned an earlier refusal to register an entrepreneur’s trademark registration by both Rospatent and the IP Court. The complainant had questioned the court’s finding that specific goods and services for the sale of goods were homogenous, without specifying their types.

The entrepreneur challenged Rospatent’s refusal to register the trademark ("Myasnoy Edem") in relation to services in Class 35 of the Nice Classification – “sale of goods, including through stores; advertising” (decision of the Presidium of the IP Court 26 July 2022 N C01-850/2022 in case N SIP-1061/2021 decision of the IP Court 28 February 2022). The mark was refused registration due to its similarity with another mark ("Myasnoy Edem") (N 571978), which was registered for goods in Class 29 of the Nice Classification, “meat”.

Rospatent considered the goods being applied for in Class 29 in the applications of both the entrepreneur and the owner of an existing mark. The IP Court determined that the marks were too similar, which would therefore likely to lead to confusion.

Rospatent and the IP Court cited homogeneity in both instances. The court of first instance did not exactly agree with Rospatent with regard to the homogeneity of the declared services of Classes 29 and 35, since the purpose of the services in Class 35 is the direct sale and promotion of various goods on the market, and maintaining interest in such goods. The services of this class contain no indications of the type of goods and may belong to different part of the market, which creates interest among a wide consumer base – not merely those interested in purchasing meat. Rospatent noted that the declared services of Class 35 are for the promotion and sale of goods, including meat and meat products.

The IP Court Presidium stressed that when establishing similarity of services, it is advisable to be guided primarily by the purpose of the service provided for a specific type of activity. However, one should also bear in mind that services belonging to the same type can be provided in different areas and thus cannot be said to be the same. Under certain circumstances, goods and services can be recognised as homogeneous among themselves if the services are formulated with clarifications on the range of goods sold or on the field of activity (eg, food retail services). However, services without such clarifications − as a general rule − cannot be homogeneous.

As a result, the IP Court Presidium concluded that the services for the sale of goods and advertising specified in the registration − without specifying the list of goods − can be associated with any type of good, and, accordingly, cannot be recognised as homogeneous for a particular product. Therefore, goods in Class 29 of the Nice Classification, meat, are distinct from the declared services of Class 35 of the Nice Classification “sale of goods, including through stores; advertising”.

It should be noted that the IP Court Presidium’s actions may affect Rospatent’s registration practice, since the office has recently tightened the requirements for uniformity at the examination stage. Today where a mark contains an identical verbal element and is registered in relation to Class 35, the sign can be compared to classes of product categories.

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