The Kristall plant will receive the rights to the Pirates of the Caribbean trademark by court order

The dispute began in March 2022, when the plant applied for trademark registration in Russian and English for a number of goods of the 32nd and 33rd classes of the ICGS, including beer, cider, rum, whiskey and vodka. In September 2023, Rospatent denied this, noting that the controversial designation "reproduces the name of a famous work of art (cinema)" — the Pirates of the Caribbean film series produced by Walt Disney Pictures.

The Kristall plant filed objections, which were also rejected in 2024, but have now been challenged by the plant in the IP Court. Kristall's arguments boiled down to the fact that the controversial phrase is generally used, does not have uniqueness and originality. Rospatent, in turn, referred to the conclusion of the Laboratory of Sociological expertise of the Institute of Sociology of the RAS, according to which 81% of respondents associate the designation "Pirates of the Caribbean" with the name of a series of films.

The first instance of the IP Court satisfied the claim of the plant, stating that "the existence of pirates in the Caribbean is a well-known historical fact, described in various sources," that is, they became known long before the appearance of the series of films. Therefore, the registration of a trademark for the Kristall will not mislead consumers, besides, the Disney company does not produce alcoholic beverages.

A ban on using a designation identical to the name of a work of science, literature or art known in Russia can only be imposed upon the request of an interested party, but Disney did not submit it. The Presidium of the IP Court left this decision unchanged; the Supreme Court refused to transfer the case to the economic board and upheld the decisions in favor of the plant.

The courts have recognized that the existence of copyrights to a work by a third party cannot be an unconditional basis for refusing to register a designation as a trademark, explains the head of IP practice of the K&P.Group Anna Molchanova. She clarifies that the owner of the rights to the Pirates of the Caribbean films has the right to declare to Rospatent his disagreement with the registration of the brand behind the factory.

To cancel the legal protection of the plant brand, the film studio will have to prove that the trademark is the name of a work known in Russia, the rights to which belong to it, adds Sergey Zuykov, managing partner of the law firm Zuykov and partners. However, the benefit of the plant from this trademark is quite controversial, since it does not give the right to use images of famous characters in the film — this will already violate copyrights, warns Sergey Zuykov.

Source: Kommersant