Court Assessedthe Possibility of Using FoodDescription as Characteristic of CateringEnterprises

Upon the results of the opposition consideration, Rospatent did not cancel the legal protection of the

TomYumBar trademark No. 647236 in relation to the catering business. Rospatent have pointed out that

the word combination “tom yum” denoting a type of Thai cuisine cannot characterize the said services, as

the Opposer claims, because there is no such type of services or properties described by such word

combination.

The Opposer appealed to the Court for Intellectual Rights (hereinafter the IPR Court) to invalidate the

decision of Rospatent.

The court of the first instance ruled that Rospatent conclusion that the disputed designation did not

characterize the services in question was unlawful. The court proceeded from the fact that the designation

is not an absolute make-believe, but “...directly points to the finished dish offered. The consumer will

clearly understand that the named catering companies specialize in these types of dishes”.

In reviewing the case as a cassation appeal, the IPR Court upheld the findings of the first instance.

The court stated that if the designation “tom yum” was not merely descriptive, but evoked through

associations in the mind of the consumer the idea of the goods produced, it could have been granted legal

protection for the services in question. However, since serving ready-made meals is a direct result of the

activity of catering enterprises, the name of the meal characterizes their services.

As a result, the IPR Court cancelled the refusal of Rospatent to invalidate the legal protection of the

trademark in respect of the following services:“snack bars; cafes; cafeterias; restaurants; fast food outlet;

cooking and home delivery services”.

Sergey Zuykov, Managing Partner of Zuykov & Partners, Russian Patent Attorney and

Eurasian Patent Attorney comments:

“Under sub-paragraph 3 of paragraph 1 of Art. 1483 of the Civil Code of the RussianFederation, it is

not allowed to register as trademarks the designations describing the goods, including indicating their

type or property.However, the criteria for classifying designations as descriptive or a make-believe

are rather vague and the dividing line is very thin as the same designation can be considered

descriptive for some services, while for others it can be a make-believe.Catering enterprises are often

individualized by means of names of types of dishes (or designations derived from them), and it is

unlikely that the average consumer can assume that these enterprises serve only the dishes mentioned

in the name of the enterprise.In the case at hand, as an example of a protectable “food” designation,

Rospatent referred to the IPR Court decision in case No. СИП-54/2017, according to which the

registration of the Pesto trademark in relation to services of class 43 of the Nice Classification meets

the requirements of paragraph 1 of Article 1483 of the Civil Code of the Russian Federation.At the

same time, the court doubted the reference to this case and pointed out that this designation is not the

name of a standalone dish, which can be perceived by consumers as the scope of the organization

providing catering services.”