The opposite is not possible: about the rules for verifying the security of a designation

As early as September 1 of this year, amendments to Article 7 of the Federal Law "On Organic Products" will come into force, which will change the rules for labeling environmentally friendly products and affect the registration of "green" trademarks.

According to the changes, as a general rule, the markers that indicate the organic origin of products will include the word "organic", its abbreviations or derivatives, as well as words and phrases "biodynamic", "biological", "ecological", "environmentally friendly", "green" or similar words or their abbreviations or designations "eco" and "bio".

In the field of trademarks, these amendments mean that in order to register a designation that includes any of the specified markers, the applicant will need to confirm the environmental origin of the goods in respect of which legal protection of the trademark is sought, if the goods relate to food and food products (classes 05, 20, 29, 30, 31, 32, 33, 34 of the Nice Classification). If the applicant does not confirm compliance in the manner provided for in Article 5 of the Law "On Organic Products", the agency has the right to refuse to register a designation as false or capable of misleading the consumer as to the properties/qualities of the product (Clause 1 of Clause 3 of Article 1483 of the Civil Code of the Russian Federation).

The upcoming changes have been known for a long time, because in the original version of the law dated 24.07.2023 N 367-FZ, the amendments were supposed to come into force in September 2024. This is due to the fact that the department has already begun to form a corresponding practice of refusal to register designations that include controversial "green" elements.

In this regard, the case in which Rospatent refused to register as a trademark a combined designation in respect of goods of class 33 of the Nice Classification, which included the element "BIO", is of interest. The Rospatent argued that the disputed element is unprotected on the basis of subparagraph 3 of clause 1 of Article 1483 of the Civil Code of the Russian Federation, since it indicates the properties of the goods. Since the claimed goods are food products, the disputed verbal element can cause consumers to believe that natural organic substances were used in its production. Due to the fact that the applicant did not provide confirmation of the conformity of the production of its products with organic products, there are no grounds for using the word element "BIO" as part of the claimed designation.

The applicant did not agree with the argument of the examination about the need to confirm the legality of the inclusion of this verbal element in the trademark, arguing that as of the date of filing the application for registration, it was not required by law to confirm the legality of the inclusion of the disputed verbal element. In the wording of Article 5 and Clause 2 of Article 7 of the Law "On Organic Products", which were in force at the time of filing the application, such a requirement is established only for designations with the word "organic", so it does not apply to other words or their derivatives, including the disputed "BIO".

The Board of the Chamber for Patent Disputes upheld the decision of the Rospatent. At the same time, the approach of the Chamber, which was expressed in refutation of the applicant's argument that there is no need to confirm the conformity of the production of the goods produced by it, is of particular interest.

Thus, the Chamber pointed out that the person in whose name the trademark is registered (the right holder) has the exclusive right to use it by any means that do not contradict the law, including the right to place the mark on goods (labels, packages) that are produced, offered for sale, etc. At the same time, it can be repeatedly extended after the expiration of the specified period.

Given the date of consideration of the applicant's objections, the disputed designation could be registered only after the entry into force of amendments to the law, according to which the inscription "BIO" also qualifies as a label of organic products. Thus, in the opinion of the Chamber, the registration of the designation would give the applicant unjustified advantages in comparison with other business entities when accompanying organic products with the inscription "BIO", the right to include which in the trademark in this case has not been confirmed.

The applicant appealed the decision of the office in court, and the Intellectual Property Court recognized this approach of Rospatent as illegal.

The IP Court noted that the law does oblige to take into account the circumstances that have arisen on the date of filing the objection (Paragraph 9 of Clause 2 of Article 1512 of the Civil Code of the Russian Federation). However, this rule is applied for the purpose of preventing the invalidation of the granting of legal protection to a trademark that did not meet the conditions of protectability at the time of its state registration, but subsequently began to meet them.

The opposite is impossible: if the trademark met the conditions of protectability at the time of its state registration, a subsequent change in circumstances cannot lead to the cancellation of the trademark before the date of filing an application for this trademark with Rospatent, and this is the consequence that occurs if the opposition is satisfied.

Since, on the date of filing the application, the requirement to confirm the conformity of organic origin applied only to labeling with the word "organic" (its abbreviations and derivatives), and the amendments to the use of the word "bio" had not yet entered into force, therefore, these provisions could not be extended to the applicant.

Thus, the IP Court emphasized the basic approach according to which the protectability of the designation should be checked on the basis of the legislation that was in force on the date of filing the application. This general rule should be applied even if other requirements have already entered into force by the time of registration of the trademark and, accordingly, receipt of the title of protection.

In conclusion, we note that before filing an application for registration of a designation with words (elements) that, according to the new rules, fall under the markers of organic products, we recommend that you read the article "How to register a "green" trademark: ORGANIC, ECO, BIO". From the article you will learn which designations are associated with the ecological origin of the product, and which are not, even if they contain a controversial verbal element, when the environmental label does not require confirmation, etc.