In a welcome show of unity, three different Russian courts have upheld the rejection a trademark that contains the prefix ‘ros’ – holding that it is misleading to consumers.
Article 1,473 of the Russian Federation’s Civil Code states that company names must not include full or abbreviated names of official federal government bodies or entities, or offensive labels that are contrary to public interest or moral principles. In 2019 the Russian Supreme Court went even further, holding that in accordance with Paragraph 148 of the Decree of the Plenum, the word ‘Russian’ and its derivatives cannot be included in company names without official permission. This provision also applies to the abbreviation ‘ros’ if this is intended as a short version of ‘Russia’ or ‘Russian’ or to represent those words (see IP Court’s rulings of N C01-446/2021 of 20 May 2021 N C01-446/2021, in case N A50-11396/2020 of 24 December 2020, N C01-1652/2020, in case N A40-23208/2020 of 8 November 2019, N С01-1050/2019, in case N А51-17617/2018). At the same time, if such an abbreviation is not derived from these words and is not associated with them, the practice is to approve such trademarks (see, for example, the IP Court’s rulings of 8 March 2020, N С01-745/2020, in case N А32-38939/2019 of 19 March 2020, N С01-26/2020, and in case N А32-22388/2019).
In a recent case, the tax inspectorate filed a lawsuit against the company ROS-PRAVO, petitioning that it change its name to remove the ‘ros’ element from it (see rulings of the IP Court on 30 August 2022 N С01-1233/2022, in case N А41-81743/2021, 10th Arbitration Court of Appeal on 6 April 2022 N 10AP-4171/2022 and the Arbitration Court’s decision in the Moscow region on 19 January 2022).
ROS-PRAVO pointed out that the courts had initially rejected the expert linguist's conclusion that the prefix ‘ros’ did not come from the same root as the words ‘Russia’, ‘Russian’ or ‘Russian Federation’, nor was it a derivative of them. According to the company, not all words in the Russian language that have this prefix are associated with these words, and thus qualify as official names.
Despite this, three different courts came to the unanimous decision that the ‘ros’ element of the company’s name could cause consumers to strongly associate the business with Russia. Therefore the name failed to adequately meet the requirements of the law.
The courts all held that the expert opinion could not be relied upon because the assessment of whether a company name complies with the Civil Code is not conducted by linguistic specialists, but is viewed from a consumer standpoint. The courts emphasised that the abbreviation ‘ros’ is most often included in the names of organisations in which the Russian Federation is a participant, or that carry out important state functions or activities (eg, Rosreestr or Rospatent). The courts held that this concept is a generally known and accepted by consumers.
Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63