Trademarks in Latin and Cyrillic Alphabet: What is More Preferable?

Keywords: intellectual property, trademark, exclusive rights, registration of a trademark, application for a trademark, use of a trademark, examination of a trademark, trademark in Cyrillic alphabet, trademark in Latin alphabet

Manufacturers of goods and services, having made a decision to register a trademark, often face the question of what is preferable: to register a mark in Cyrillic or in Latin? And is it possible to use a word element in one application both in Latin and in Cyrillic, thus reducing the expenses, having ensured the maximum legal protection for their designation?

According to the Russian legislation and in accordance with the existing international treaties, the trademark in the Russian Federation can be registered in any language. To be more precise, the law contains neither any permission to register a mark, for example, in the Latin alphabet, nor a specific prohibition on the registration.

It should be noted here that currently the registration of trademarks in the Latin alphabet is gaining popularity: the use of foreign words and the Latin letters increases the attractiveness of the trademark, allows the manufacturer to enter the world markets more actively. The designation in Cyrillic is quite difficult perceived by the foreign consumers and does not fully perform the function of a clear individualization of the goods of a specific manufacturer (although, of course, for the “home”, Russian market, the registration of a mark in Cyrillic has undeniable advantages). In addition, foreign companies and individuals register their trademarks in the Russian Federation, as a rule, performed in Latin.

The indication in one application of the mark in the Latin and Cyrillic alphabet is possible, but in practice we do not recommend registering marks in this form for the following reasons.

Trademarks should be registered in the form in which you use them. That is, if you use the Latin alphabet separately, and the Cyrillic alphabet separately, then you should file two applications. In case of registration of both the Russian and English spelling in one mark, you will have to use the mark exactly in this form. Otherwise it may be difficult to prove the use of the mark in Court, if any person undertakes actions to an early termination of its legal protection.

So, in accordance with Article 1486 of the Civil Code of the Russian Federation (“Consequences of Non-Use of a Trademark”), “The legal protection of a trademark may be early terminated with respect to all goods or a part of goods for the individualization of which the trademark has been registered as a result of the non-use of the trademark continuously within any three years after its official registration. The application for an early termination of the legal protection of a trademark as a result of its non-use may be filed by an interested person to an arbitration court after the expiration of the aforesaid three years, provided that the trademark has not been used before such application was filed.” [“The Civil Code of the Russian Federation (Part Four)” of December 18, 2006 No. 230-FZ (as amended on 03.07.2016)].

Thus, if the mark is registered in Cyrillic and Latin simultaneously, there is a possibility that the use of the mark only in Cyrillic or in Latin can not prove its use as a whole, just as the use in Cyrillic does not prove unambiguously the use in Latin, and vice versa. You may lose your rights to the registered mark, if you do not use it as it has been, in fact, registered. Although, in addition, if you have registered your designation in Latin and Cyrillic as a single trademark, but you use it either in Cyrillic or Latin, this certainly does not contradict the law in no way, although it creates additional risks.

At the same time, it is possible to carry out a preliminary search (in order to assess the chances of registering a designation, if the marks are a transliteration of the Russian word made in the Latin letters) only for one mark, as the search will give all possible variants, first of all, phonetically identical/similar, regardless of the letters of the language in which they are expressed.

However, the registration of a trademark expressed in the letters of the Latin and Cyrillic alphabets is two independent registration procedures, and their examination will in any case be carried out separately. Unfortunately, filing two applications will double the costs; however, the presence of two trademarks will allow you to obtain more complete legal protection and greater opportunities for exercising exclusive rights to your designation.

At the same time, it is worth remembering, that if the trademark uses a name (a word element) in a foreign language, then the applicant shall present its translation in case, when the word unit is relevant, and the transliteration in Russian (according to the Rules for drawing up, filing and considering the documents, which are the basis for undertaking 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].

It is interesting that obtaining the legal protection for your trademark and using it the way helping to avoid the risks of invalidation are in completely different “areas.” The possibility of the registration of the designation expressed in the letters of the Latin alphabet, subject to the presence of the registration/earlier application for such a designation in Cyrillic (and vice versa), is very small, as in this case the marks are phonetically identical or confusingly similar.

Regarding the choice of the Latin/Cyrillic alphabet for your mark, we would like to draw your attention to several other considerations. The designations expressed in Latin and applied in the name of a Russian individual may be classified by the examination as the marks capable of misleading the consumer regarding a person manufacturing the goods or providing services (on the basis of Clause 3 (1) of Article 1483 of the Civil Code). So, the consumer may think that the goods marked with such a trademark are of a foreign origin, imported from abroad, differ in quality from the Russian ones. And the Russian manufacturers who pretend to be foreign companies get unjustified competitive advantages, evoking among the consumers the feeling of a strong connection of the marked product with a particular country.

This is especially true for the designations, the legal protection of which is claimed for cosmetics, perfumes, clothing, accessories, as well as for food and beverages. In Rospatent’s practice there are a large number of examples of the refusal of the registration of the designations expressed in the Latin alphabet (especially the designations, which are the name and surname of a foreign origin).

Such somewhat a “prejudiced” attitude of Rospatent to the applications for registration of the marks in Latin some people consider to be unfair and infringing the applicants' rights, because it is based on the assumption of dishonesty of the manufacturer of goods and services. In addition, the Russian entrepreneurs, who are seeking to enter the international market, have to register different trademarks: separately for the “internal” use and separately for the “external” use. Although Rospatent applies the “non-public” restriction to the registration of a trademark expressed in Latin very selectively, and it shall be determined for each case individually taking into account a large number of subjective factors, at the same time the single practice has not yet been worked out.

Thus, when developing a designation for the individualization of your goods or services, it is necessary to take into account the position of the examination in this issue, as well as the fact that the maximum extension of the legal protection of such a designation may require additional costs: it is necessary to file an application for that mark and in that form, in which you plan to use it. It may be necessary to file two or more applications, but in the long run, the increased costs tend to pay off.