Moscow Metro is arguing with Rospatent over the Facepay trademark

The Moscow Metro is trying to challenge Rospatent's refusal to register the trademark of the Facepay contactless payment service in the metro. The Face Pay subway face recognition system was launched in September 2021. The representative of Rospatent clarified that such an issue was submitted for consideration back in 2023, but the meetings were repeatedly postponed at the request of the applicant.

We are talking about one of the three applications of the metro for trademark registration, which were accepted for consideration in January 2023. One of them was a white schematic image of a man in white square brackets on a black background, the other was the inscription Face Pay with the red logo of the Moscow metro, and the third was the verbal trademark Facepay made in black letters on a white background without any additional characters. According to the application for the last sign, a preliminary decision on refusal was made, it follows from the documents of the service, which Vedomosti reviewed. A preliminary positive decision has been made on the first two applications, which does not fully satisfy the applicant. The Chamber for Patent Disputes will consider the relevant appeal of Moscow Metro on April 17.

"It can be assumed that according to applications for combined signs, the verbal Facepay element is excluded from protection, i.e. it is unguarded and can be used by someone else. That is why the Metro claims that it is not fully satisfied with the decisions on these applications, which is logical," says Sergey Zuykov, patent attorney, managing partner of Zuykov and partners.

While the Moscow Metro does not have trademark rights, anyone can use the word Facepay without asking the permission of the copyright holder, says Zuykov. Legal protection of trademarks will arise only from the date of their state registration, says Alina Akinshina, CEO of Online Patent.

At the moment, two trademarks similar in sound to Facepay are registered in the Rospatent database, which operate in the class 35 of the Nice classification of interest to the metro (online sales). The first is Faceday, registered in January 2017, the second is Faceway, registered in June 2021.

The prospect of a challenge depends on whether the metro will be able to provide evidence of the distinctive ability (intensive use) of this word before priority arises for "competing" trademarks, as well as on which goods or services such evidence will be presented, Zuykov clarifies. "Goods and services for which such evidence will be presented may be registered by Rospatent. If the metro does not provide any evidence of use before priority, then it is unlikely that it will be possible to change the decisions of the examination on the refusal / exclusion of the word from protection," the expert believes.

In January 2023, a vote was held on the Active Citizen portal to change Face Pay to the Russian version. 195,485 muscovites took part in the survey, 21% of whom chose the name "Biometric Payment System". However, no such applications were submitted to Rospatent, probably due to the fact that such a designation is not protectable, since this phrase describes the principle of providing a service using biometrics, explains Zuykov.

Source: Vedomosti