Entrepreneur Challenges Rospatent’s Refusal to Register the “Shmotki” Brand

An entrepreneur from Sochi, Ekaterina Belova, filed an application in 2023 to register the trademark “Shmotki” (“Clothes” in slang). However, Rospatent refused to register the brand under Class 35 of the Nice Classification (covering services such as advertising, marketing, and business management).

According to the law, a trademark cannot simply describe the goods or services it is meant to represent. In other words, a business owner may hang a sign reading “Clothes” on their boutique, but they cannot obtain exclusive rights to that word as a trademark. Accordingly, Rospatent determined that the disputed mark could not be registered, since “shmotki” is a slang term that directly means “clothes.” The agency also noted that the word is colloquial.

In court, the entrepreneur pointed out that Rospatent had previously registered the trademark “Shmotochka” (a diminutive form of “shmotki”). The court of first instance ruled that the agency’s decision lacked proper analysis and reasoning to justify recognizing the disputed word element as descriptive of the services in question. The court also found it improper that Rospatent had refused registration for the entire Class 35 category.

“For the trademark registration, I see little difference between the words ‘shmotki’ and ‘clothes.’ Both describe the goods sold in stores under Class 35. For me, as for most consumers, it’s clear that a sign reading ‘Shmotki’ means clothes are being sold inside. Therefore, registering such a mark could cause confusion or rejection. However, the Intellectual Property Court found procedural violations in Rospatent’s decision and ordered the agency to reconsider the objections. In other words, the court disagreed with Rospatent’s reasoning for the refusal. I hope that upon reconsideration, Rospatent will again deny the registration—but this time with proper justification,” said Sergey Zuykov, patent attorney and managing partner of Zuykov and partners.

According to Zuykov, slang words cannot be registered as trademarks, and there is ample case law supporting refusals or cancellations of such marks. “As for the previously registered mark ‘Shmotochka,’ I would also consider it descriptive. It was registered but later lapsed due to the liquidation of the legal entity that owned it. Of course, there is some difference between ‘shmotki’ and ‘shmotochka’, though minimal. ‘Shmotochka’ is simply a diminutive form of ‘shmotki’—it still refers to clothes and related sales services. Therefore, citing the earlier registration of ‘Shmotochka’ is not a strong argument and will not help in obtaining registration for ‘Shmotki,’” concluded Zuykov.

Source: Rossiyskaya Gazeta