Court Clarified Valuation Rules forUnprotected Components of Trademark

Rospatent , having registered a combined trademark in respect of cottage cheese products, at the same time recognizing one of its components as unprotected.

The component remained unprotected even after consideration of the opposition of the trademark owner. Rospatent proceeded from the fact that the part excluded from legal protection was a realistic image of a spoon with curd products, and the trademark was intended for marking goods representing such products, in connection with which the component could not have a distinctive character.

The Court forIntellectual Property Rights (hereinafterthe IPR Court, the Court) in both the first[i], and cassation[ii]instances supported the owner, who filed an application to invalidate the decision of Rospatent.

The Court stressed that in examining the designation, Rospatent should have assessed whether the owner had another trademark containing a protected component similar to the one recognized as unprotected in the trademark in question. Where there are differences in the images which cause their distinctive character to be assessed differently, Rospatent should have indicated this,the IPR Court noted.

Therewith, the Court distinguished between the assessment of different parts of the disputed component: if the image of the product itself can be considered descriptive, the image of the spoon cannot be recognized as such, since it is a separate product, which also cannot be attributed to the traditional forms of packaging of goods covered by the trademark.The Court pointed out that for the purposes of application of paragraph 1 of Article 1483 of the Civil Code[iii], the use of this object for the consumption of productsdoes not matter, because it does not characterize it as a product.

Understandably, in Rospatent, the proceedings on each trademarkapplication are conducted separately, taking into account the peculiarities of the specific applied designation. This, however, does not cancel the presumption of the distinctive character of the component included in the trademark registered without a disclaimer. The Court noted that since the element was not excluded from legal protection, it has by virtue hereof a distinctive character, and otherwise must be substantiated.

Also, in this case, the question was raised about the possibility of a separate assessment of the parts of the pictorialcomponent, in respect of which the analysis of the protectability is carried out. For example, according to Rospatent, such a division was impossible as contrary to the nature of trademarks. However, a graphic component may be composite and is not, under any circumstances, a single object. The law does not define the nature of such signs in any special way so that it is possible to refer unambiguously to the impossibility of consistent evaluation of their parts.