The Presidium of the IP Court upheld the decision which confirmed the legality of the decision of Rospatent to annul the trademark "TURKOMPLEX MANZHEROK"
The Presidium of the Intellectual Property Rights Court considered in an open court session the cassation appeal of Manzherok Tourist Complex LLC, filed against the decision of the court of first instance dated June 22, 2022 in case No. the sign according to the certificate of the Russian Federation No. 713393 is completely invalid.
In the case, Manzherok All-Season Resort LLC, represented by Zuykov and partners in the courts of first instance and cassation, took part in the case as a third party that did not file independent claims regarding the subject of the dispute.
In the court of first instance, the arguments of the Manzherok Tourist Complex society boiled down to the fact that the registration of the disputed trademark does not violate the provisions of paragraphs 1 and 6 of Art. 1483 of the Civil Code of the Russian Federation, since the disputed trademark did not indicate the place of provision of services as of the date of its priority , it acquired a distinctive ability and falls under the provisions of clause 1.1. Art. 1483 of the Civil Code of the Russian Federation.
However, contrary to the arguments of the disputed trademark owner to the contrary, the court of first instance came to the conclusion that the verbal element "MANZHEROK" is a direct reference to a well-known geographical object, which means that it cannot be recognized as a protected element in relation to the declared list of services, since semantically it will mean the place of activity of the copyright holder. The court also noted that the complex did not provide any evidence refuting the above conclusion, as well as information about the acquisition of distinctiveness by the disputed designation as a result of its intensive and long-term use and association among Russian consumers with a specific manufacturer - the complex, therefore there are no grounds for the conclusion that the consumer perceives the designation "MANZHEROK" not in the general lexical meaning as the name of the village of the same name, but as a means of individualizing the services provided by the copyright holder.
Based on the foregoing, the court of first instance recognized as legitimate the conclusion of Rospatent about the non-compliance of the claimed designation with the requirements of subparagraph 3 of paragraph 1 of Article 1483 of the Civil Code of the Russian Federation.
Disagreeing with the decision made by the court of first instance, Manzherok Tourist Complex LLC appealed to the Presidium of the Intellectual Property Rights Court with a cassation complaint, in which he pointed out the violation by the court of the norms of substantive and procedural law, asked the decision to cancel, send the case for a new consideration in court of first instance.
Having considered the arguments of the cassation appeal, the SIP Presidium agreed with the decision made by the court of first instance and saw no grounds for its annulment.
Thus, the court of cassation noted the validity of the conclusion of the lower court that the very fact of the joint use of the verbal elements “TURKOMPLEX” and “MANZHEROK” in the disputed service mark does not allow us to recognize a qualitatively different level of perception of the latter element and indicates a direct indication of the place of origin of services, provided by the copyright holder. The obviousness of the geographical connotation of the element was established by Rospatent and confirmed by the court of first instance according to dictionary and reference sources.
With regard to the argument of the applicant of the cassation complaint about the acquisition of distinctiveness by the disputed trademark, the Presidium of the Court for Intellectual Property Rights noted the legitimacy of the conclusion of the court of first instance that the disputed designation cannot acquire distinctiveness, since in the present case we are talking about the possibility of acquiring distinctiveness by a designation indicating a place provision of services (subparagraph 3 of paragraph 1 of Article 1483 of the Civil Code of the Russian Federation), which must be free for use by other persons in the public interest.
At the same time, the court of cassation did not see any violations in the actions of the court of first instance in terms of assessing the evidence of the acquisition of distinctiveness by the disputed designation, noting that the position taken by the applicant of the cassation appeal is based on disagreement with the assessment of the evidence presented in the case file carried out by the court of first instance and cannot testify in due to its subjectivity about the incorrect application of the norms of substantive and procedural law.
Thus, by the decision of the Presidium of the Intellectual Property Rights Court dated 10/21/2022, the cassation appeal of Manzherok Tourist Complex LLC, filed against the decision of the Intellectual Property Rights Court dated 06/22/2022 in case No. SIP-1241/2021, was denied, and the decision of Rospatent upheld.