Nice Classes 35 And 42: Identifying the Homogeneity of Services

Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation bans registration of designations that have confusing similarity or identical to the designations that are:

• Protected in Russia in respect of homogeneous goods and have an earlier priority date;
• Filed for registration for homogeneous goods, and the application has not been withdrawn or recognized as such;
• Have the status of a well-known trademark in respect of homogeneous goods.

As it appears from the foregoing, the kind and type of goods for which the applicant plans to use a similar designation, has essential importance. The importance of this is due to the need to exclude the possibility of misleading the consumer.

Efko Cascade Coordinating Distribution Center, LLC (hereinafter – Efko Cascade) owns trademarks with the word element “Sloboda’ for the services of the 36, 41 and 42 classes of the Nice Classification. In class 42, the right holder has registered the designation for such services as artistic design; professional business consultancy; services in the field of industrial aesthetics and services of designers in the field of packaging.

Later, Ibatullin A.B., an individual entrepreneur, applied for registration of the identical designation, also with respect to classes 35 and 42 of the Nice Classification. However, the applicant indicated Advertising (class 35) and industrial research and development (class 42) as necessary services. Rospatent refused to register the designation for an individual entrepreneur. In response, Ibatullin filed an opposition to the adopted decision, but the claims were denied.

Next, Mr. Ibatullin filed a claim to the Court for Intellectual Property Rights to invalidate the Rospatent refusal of the opposition. Efko Cascade was involved in the case as a third party without independent claims, and Zuykov and Partners law offices represented the company.

The claimant pointed out that the comparable types of services differ by the target audience, and there is no complementarity between them. Rospatent and lawyers of Zuykov and Partners law offices resisted the claim.

Having examined the evidence, the court noted the following.

• Homogeneity of goods, as well as services, is established on the basis of the fundamental possibility of an ordinary consumer of the goods to have the concept of belonging of these goods to one manufacturer.
• The claimant did not dispute that the designation he claimed has a high degree of similarity with already registered trademarks. Thus, the main factor to be determined by the court is whether or not the services being compared are homogeneous.
• As provided by the Civil Code of the Russian Federation, Federal Law on Advertising and the Federal Law on the Basic Principals of State Regulation of Trade Activities in the Russian Federation one can come to the conclusion about the homogeneity of the services listed in Class 35. This conclusion is due to the fact that advertising is an offer of goods to consumers, and demonstration of goods implies providing the buyer with access to products for review and evaluation.
• With respect to Class 42, the court also concluded that the services to be compared are homogeneous because industrial research and development includes the process of designing and creating industrial products, which involves solving problems in the field of artistic design and industrial aesthetics.

As a result of the examination of the case, the Court for Intellectual Property Rights turned down the claims filed by Ibatullin, an individual entrepreneur.