IP Court supported Rospatent's decision to refuse registration of Milk Wave's drinks

The Intellectual Property Rights Court did not satisfy the claim of Gift LLC to challenge the decision of Rospatent, which refused to register Milk Wave's trademark for the beverage class. The reason for the refusal of registration was the similarity with the brand of chocolate bars Milky Way, controlled by the American company Mars.

According to the company's website materials, Gift distributes alcoholic and non-alcoholic beverages. The company has been trying to register Milk Wave's brand since 2022. Now, it sells drinks in 0.25-l aluminum cans in six different flavors.

Yuri Yakhin, advisor to the intellectual property practice of Melling, Voitishkin and Partners, notes that Gift may try to challenge the decision in the cassation instance. But, in his opinion, there are few chances to defend the brand. Patent attorney Sergey Zuykov calls the only way for Gift to get the Milk Wave's trademark is to file a lawsuit for early termination of registration of the Milky Way brand, citing the fact that it is not used in Russia. But it will be difficult to argue this: according to NTech calculations, in January—June, Milky Way accounted for 3.3% of the total natural sales of chocolate bars in Russia.

Mr. Yakhin says that Russian companies often start selling products without waiting for the official registration of a trademark. But such an approach, according to the lawyer, creates risks. In the case of the Gift, the decisions of Rospatent and the Intellectual Property Court entered into force, and now Mars has the right to apply to the manufacturer and sellers of these drinks, demanding the withdrawal of products from circulation and monetary compensation. Mr. Zuykov calls the scenario of such a trial likely.

Source: Kommersant