26 December 2016

Funny, Anecdotal or Contradictory to Public Interests Trademarks and Applied Designations: Where is the Edge?

Keywords: intellectual property, means of individualization, exclusive rights, trademark, registration of a trademark, application for a trademark, examination of application for a trademark, obtaining a certificate for a trademark, funny trademarks, anecdotal trademarks, contradictory to the public interests, refusal to register trademarks

The trademark is “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].

The trademark belongs to that category of subject-matters of intellectual property, the rights to which can arise only after the registration by the Federal Executive Authority on Intellectual Property – Rospatent. Accordingly, in order to ensure the legal protection for your trademark, you should register it by filing an application to the office. In accordance with Article 1482 of the Civil Code of the Russian Federation the following designations can be registered as trademarks: the word, figurative, three-dimensional and other designations or their combinations; the trademark can be registered in any colour or in the combination of colours.

However, the registration can take place only if, in the opinion of the examination, the chosen designation meets the criteria for protectability. The examination of designations shall be carried out on the grounds of the regulations of the Russian legislation, in particular, of Article 1483 of the Civil Code of the Russian Federation. In other words, the designation should not fall under a number of restrictions, which Article 1483 of the Civil Code of the Russian Federation (“Grounds for refusal of the official registration of a trademark”) contains. 

As we see the requirements for the trademarks, which the Civil Code of the Russian Federation stipulates in the form of the grounds for the refusal of their registration, which shall be divided traditionally into absolute and relative (other). This division shall be performed according to the following principle: absolute grounds are connected with inadmissible internal properties of the chosen designation, while other grounds relate to the similarity of the registered trademark with some other designations, as a result of which the rights of third parties may be infringed.

Among the absolute grounds for the refusal to register a trademark, it is necessary to identify those that are connected with the inadmissibility of infringing the public interestsAt the same time, the registration of such designations shall be prohibited due to the very fact that such elements are present in the designation, even if they do not occupy a dominant position in it.

Such designations are named in Clauses 2-4 of Article 1483, Article 1231.1 of the Civil Code. And in this article I would like to elaborate on the following provision of Article 1483 of the Civil Code of the Russian Federation: “... The designations shall not be officially registered as trademarks that are or contain the elements that are contradictory to the public interests, the principles of humanity and morality. ...” They may be, in particular, the words and images of obscene content, the appeals of the inhumane nature, insulting the human dignity, the religious feelings.

For example, Rospatent has refused to register trademark "INGODWETRUST" (translated from English –“we believe in God,” “we trust in God”), because, according to the examination’s opinion, this designation has religious semantics, it can affect the feelings of Christian believers. The commercial use of such a designation for the promotion of any goods/services may contradict the standards of morality and ethics. This adds to the fact, that “INGODWETRUST” is an official slogan of the USA, placed on the banknotes. The contradiction to the public interests is obvious. The applicant disagreed with the arguments of the examination and tried to attack them, but the arbitration courts confirmed the arguments of the office.

However, besides the obvious cases of contradiction of the applied marks to “... to the public interests, the principles of humanity and morality ...,” the practice of Rospatent knows many much more ambiguous examples.

Quite often, amusing, anecdotal, ridiculous designations “on the edge” are often filed for registration: they obviously evoke certain associations from the consumer, related to a non-literary language or, for example, “naughty” phenomena, which are not widely discussed in public. At the same time, such associations based on humor and even provocations are often not negative, but rather on the contrary, aimed at getting a bright positive emotional response from the consumers. It is thanks to such opportunities that these designations may enjoy a great popularity on the market and contribute to the commercial success of a particular company.

It is clear that for “serious” spheres, such as financial, insurance, education, etc., the use of such designations is usually uncharacteristic: they can blow the image of the organization, and the customer loyalty will be lost forever. But in the trade of consumer goods (hence, the closest to “the people"), for example, the manufacture of food products, alcohol products, products for the restaurant services, for bars, etc. the attempt to win the market share by such methods is quite justified.

But here the question arises if the registration of such designations “on the edge” is allowable? Where is this edge? Is the registration of each such mark an infringement of the public interests? What exactly can be considered the infringement of the public interests: the registration of “non-literary” expressions, or ridiculous or absurd ones, or, for example, the expressions insinuating something obscene?

It is impossible to give objective and unequivocal answers to these questions, the decision will always be subjective. Such designations can evoke different associations, and this connection is always informal and sometimes even not obvious. In addition, there is not and can not be a clear written set of principles of morality and ethics, criteria for categorizing particular phenomena as “contradictory to the public interests.”

Therefore, in each specific case, the examination has to establish for each designation applied for registration whether the mark is overstepping “the bounds of decency.”

The most obvious category of such marks is the designations with the elements of non-normative lexicon. Although such marks can evoke a genuine interest among the consumers, the examination, as a rule, refuses to register them. So, a Novosibirsk company has not been allowed to register trademark “Yoshkin Kot”: Rospatent has considered this expression to be abusive, obscene, having a non-normative lexicon. A Chelyabinsk entrepreneur has failed to register trademark “YADRENA MATRENA” with respect to beer, alcohol and soft beverages. The examination has come to a conclusion, that the designation was a substitute for the more abusive expression “yadrena mat’,” which is often used in the Russian obscene language.

More “harmless” expressions are set phrases filed for registration – vulgar expressions, phraseological units, modified idioms. The legal protection shall be provided for such marks, if they do not evoke negative associations clearly.

The examination can also take into account a continued use of the trademark, including in advertising. This fact will serve to the benefit of providing the legal protection to a trademark. For example, such well-known trademark as “Yolki-Palki” has long been associated with the names of restaurants, and not with vulgar jargon.

The source of problems are often the attempts to register the designations that are not combined by the meaning and/or emotional colour with the list of goods and services. And far from always such cases are due to the lack of diligence when drawing up the list of the application. For example: a life-affirming mark (“Neznaika Collects Friends”) for the services of a funeral house.

Rospatent has also refused to register mark “V Krugu Semyi” for alcohol beverages, because it thought that the registration would contradict to the public interests – by using the reputation of the family values, it could attract the consumers' attention to alcohol.

This article, of course, does not cover all categories of funny, anecdotal and other designations that may encroach on the public interests, principles of humanity and morality. There can be a lot of examples, because the applicants' imagination is boundless, and they have a strong desire to take their place on the market. The practice of Rospatent in this area has developed partly, and it continues to develop in some way. Therefore, studying it is necessary both for the manufacturers of goods and services, and for the specialists in the field of intellectual property: it is interesting and informative both from the professional and from the socio-cultural point of view.

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