21 February 2017

Trademarks: Fantasy and Descriptive

Keywords: intellectual property, means of individualization, trademark, exclusive rights, registration of a trademark, application for a trademark, protectability of a trademark, fantasy trademark, descriptive trademark, distinctiveness, examination of application for a trademark

The trademark shall be “a designation that serves to individualize the goods of legal entities or individual entrepreneurs” [“The Civil Code of the Russian Federation (Part Four)” of December 18, 2006 No. 230-FZ]. It is possible to register as trademarks words and phrases, images, the form of packaging, even colors and melodies– all, that helps to distinguish the goods and services of some manufacturers from the goods and services of other manufacturers, to fight an unfair competition.

Trademarks are developed, registered and used by entrepreneurs to increase the visibility of their goods and services; however, the lack of information about the peculiarities of the procedure often leads to numerous problems. Such concepts as “descriptive” and “fantasy” trademarks cause particular difficulty, while assigning the mark to one or another category may affect the chances of its registration significantly.

At first, it should be noted that the registration of a trademark can only take place if the selected designation meets the criteria for the protectability. In other words, the designation should not fall under a number of restrictions, which are contained in Article 1483 of the Civil Code of the Russian Federation. It is on the basis of this Article, that the examination of trademarks shall be carried out.

So, in accordance with Clause 1 of Article 1483 of the Civil Code of the Russian Federation:

“The official registration as trademarks shall not be allowed with respect to the designations which do not possess distinctiveness or consist only of the elements that:

1) have fallen into public domain to indicate the goods of a particular kind;

2) are generally accepted symbols and terms;

3) characterize the goods, including specifying their kind, quality, quantity, property, purpose, value, as well as the time, place and manner of their manufacture or sale;

4) represent the form of the goods, which is determined exclusively or mainly by the property or purpose of the goods.”

However, in accordance with Clause 1.1. of this Article, the provisions of Clause 1 of this Article shall not be applied to the designations that:

“... 1) have acquired distinctiveness as a result of their use;

2) consist only of the elements specified in Subclauses 1 to 4 of Clause 1 of this Article and form a combination which has distinctiveness ...”

 Within the framework of the issue under consideration, it is necessary to stop on such a general property of a trademark as distinctiveness. As follows from the text of the Article, the designations that do not have distinctiveness can not be registered. They can be included in the trademark only as unprotected elements, but provided that there is no dominance in the applied designation.

The “descriptive” designations include just the designations, which characterize the goods, including the indication to “... their kind, quality, quantity, property, purpose, value, as well as the time, place and manner of their manufacture or sale.”

In accordance with the Recommendations of Rospatent [Rospatent Order of March 23, 2001, No. 39 “On the approval of the Recommendations on particular issues of the examination of the applied designations”], the applied designations, which consist only of the descriptive elements, shall not be provided with the legal protection, and the manufacturers shall not be granted the exclusive right to use them, as in the economic turnover any person may need use the designations, which describe the goods.

Therefore, when attempting to register a descriptive designation, there is a significant risk of the refusal to register, because the designation does not have distinctiveness.

The “fantasy” designations, in a narrow sense, include the designations, which are the words invented by the applicant. Such designations do not have any semantic meaning in the language before they start to be used for these goods/services (an example: “Google” for the search system on the Internet). The designations that consist of such new, “invented” words have protectability of a high degree and in the absence of the similarity to the already registered trademarks/filed applications with respect to the similar goods, have high chances of being registered.

Generally, the fantasy designations also include the designations, which are not invented/new words, but for the applied list of goods/services they are not descriptive: the use of such designations for these goods is original, fantasy.

These, of course, may be the designations that are not linked with the list at all and associative designations as well. That is the designations that do not directly specify the goods/services for which the registration is claimed. However, they can evoke in the minds of the consumer the association with them, for example, cosmetics (first of all, facial cleansers) “Clean & Clear” (a literal translation from English “clean & clear”). In the absence of the similar trademarks, this designation, as a rule, is provided with the legal protection.

The designations that raise the greatest difficulty in the process of carrying out the examination are the designations that, at the date of filing an application, presumably have lost their distinctiveness as a result of a widespread and prolonged use by different manufacturers in respect of identical or similar goods, including in the advertisements of goods and their manufacturers in the mass media (Clause 34 of the Rospatent Rules [The Rules for drawing up, filing and considering the documents that are the basis for committing legally significant actions for the official registration of trademarks, service marks, collective marks), Order of the Ministry of Economic Development of the Russian Federation of July 20, 2015 No. 482].) Are they descriptive or fantasy?

The example may be the Rospatent Decision of 2014 on trademark “BlackRussian,” the legal protection of which has been claimed for the alcohol beverages. Cocktail “Black Russian” (containing vodka and coffee liquor) was first manufactured in 1949 by a Belgian barman. Rospatent has refused to register the mark on the grounds that this mark is descriptive for particular cocktails: it specifies a certain kind of a cocktail with a particular formulation (while the cocktails of another kind with a different formulation can not be marked with it). Therefore, this designation does not have distinctiveness.

The court did not agree with the conclusions of Rospatent, based on the fact that designation “Black Russian” is not a kind of the product, does not describe its properties, composition and purpose; therefore, it is not descriptive, but fantasy (for example, word “cocktail” may be a descriptive designation). Therefore, the evidence presented by Rospatent does not confirm that the consumers associate this designation with certain characteristics of a particular kind of the product.

Thus, the fact of a widespread use of the designation and even the availability of the information about it in reference systems shall not enough to recognize this designation as descriptive and, therefore, not having a distinctiveness.

But for each designation the situation will be absolutely individual: there are examples, when the examination has excluded a verbal element “Mojito” from the independent legal protection of the applied designations, as, in Rospatent's opinion, this element was descriptive.

In any case, as we see, when trying to register the designation that directly or indirectly specifies the kind, properties, purpose or other characteristics of the goods/services indicated in the list, the applicant must take into account a large number of factors in order to avoid the refusal to register. First of all, it is necessary to evaluate the perception of this designation by specialists and consumers.

To avoid unnecessary temporary and material costs, numerous problems and to reduce the chances of refusing the registration significantly, it is recommended to contact specialists in this field, who know all subtleties of the examination of applications for trademarks.

Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63