In accordance with subparagraph 3 paragraph 6 article 1483 of the Civil Code of the Russian Federation , registration as a trademark in relation to homogeneous goods of a designation confusingly similar to a trademark is allowed with the consent of the copyright holder, provided that such registration cannot be a reason for misleading the consumer.
In the case SIP-798/2022, it was the issue of letters of consent that became the key to invalidating the refusal of Rospatent to register a trademark for a part of goods. According to the circumstances of the case, based on the results of consideration of the application for registration of the designation "MaMate" as a trademark, Rospatent decided to register a trademark in respect of all declared goods and services, except for goods of the 5th class of the Nice Classification, since the designation is confusingly similar to a number of other trademarks signs - "Amate", "Momate Rino", "Momate Rino", "Damate", " Mammut ", " MixMate " and "MAMAVE" in relation to homogeneous goods.
Challenging the refusal, the failed right holder submitted, before the start of the court session, letters of consent from the right holders of all opposing trademarks for registration "MaMate", in which they informed about the consent to register the claimed designation as a trademark in relation to the goods of the 5th class of the Nice Classification requested by the applicant, since such registration will not entail a violation of rights.
The court noted that neither Art.6 septies of the Paris Convention for the Protection of Industrial Property, nor the Civil Code of the Russian Federation establish requirements for the form of consent to register a trademark; in p.3 of the Recommendations on the application of the provisions of the Civil Code of the Russian Federation regarding the consent of the right holder to register a similar trademark , documentary evidence of the consent of the right holder to register a trademark is drawn up in any form.
The panel of judges, having evaluated the submitted consents to the registration of the disputed designation, found that the documents were legally signed either by representatives under notarized powers of attorney, or by persons entitled to act on behalf of the respective legal entities without a power of attorney.
After examining the contents of the letters, the court noted that they contained all the necessary information, namely:
As a result, the IP Court came to the conclusion that the letters of consent from the right holders of the opposing trademarks made it possible to establish the existence of the real will of the right holders to provide appropriate consent to register the disputed designation as a trademark.
Thus, taking into account the proper letters of consent received by the court, the IP Court considered it necessary to oblige Rospatent to register the designation in relation to the named goods of the 5th class of the Nice Classification.
It should be separately noted that in accordance with paragraph 6 of Art. 1483 of the Civil Code of the Russian Federation, another important requirement is imposed on letters of consent - irrevocability. This requirement is intended to ensure the stability of the registration process, and practice confirms that failure to comply with it can also become the basis for, for example, recognition of behavior in bad faith .
1.Civil Code of the Russian Federation (Part Four) dated December 18, 2006 N 230-FZ
2.Recommendations on the application of the provisions of the Civil Code of the Russian Federation regarding the consent of the right holder to register a similar trademark, approved. by order of Rospatent dated December 30, 2009 N 190
3.Ruling of the Court for Intellectual Property Rights dated 03.06.2022 N C01-795/2021 in case N A60-8612/2020