Zuykov and partners protected the interests of the “Doktorsky Garant” trademark owner

On June 17, 2024, by a decision of the Presidium of the Intellectual Rights Court in case No. SIP-825/2023, the cassation appeal of the Vladimir Standard company against the decision of the Intellectual Rights Court dated March 11, 2024 was left unsatisfied. The company filed an application to invalidate the decision of Rospatent dated May 17, 2023 to refuse to satisfy the objection to granting legal protection to the trademark under Russian Federation Certificate No. 869411 (“Doktorsky Garant”). ZAO Starodvorskie Sausages was involved in the case as a third party who does not make independent claims regarding the subject of the dispute.

In this case, Zuykov and partners represented the interests of the Starodvorskie Sausages company.

According to the cassation appeal, the Vladimir Standard society indicates that the court of first instance incorrectly applied the norms of substantive law in terms of assessing the similarity of the disputed and opposed trademarks. In addition, according to the applicant, the court of first instance did not take into account the legal position set out in the decisions of the Presidium of the SIP in cases Nos. SIP-732/2023, SIP-733/2023, according to which when assessing verbal designations they must be perceived and evaluated in their entirety, without identifying “weak” and “strong” elements. The applicant of the cassation appeal also points out that Rospatent in various disputes takes a contradictory position regarding the definition of “weak” and “strong” elements, and therefore the court of first instance had to apply the principle of estoppel to its actions . Also, according to the Vladimir Standard society, the court of first instance did not properly assess the sociological research presented by the Applicant.

The third party pointed out that the Presidium of the Intellectual Property Court has repeatedly emphasized that elements (including words) are considered strong or weak not in an abstract sense. The strength of an element is determined by:

1. Its specific designation and in relation to other elements of the mark.
2. Its application to specific goods (e.g., descriptiveness or customary use concerning the specific goods).
3. The perception of the designation as a whole by the target consumer group.

Thus, the determination of the number of elements in a trademark is carried out based on its perception by consumers.

The third party pointed out that, contrary to the cassation applicant’s arguments to the contrary, the court of first instance was not obliged to conclude that the disputed trademark should be assessed as a whole, without identifying “weak” and “strong” elements, since such a legal approach would be contrary to the established assessment methodology. While the assessment methodology by the court of first instance was fully complied with.

Although the third party considered the verbal designation "Doktorsky Garant" to be perceived as a single element, the court's decision to separate the disputed trademark into "strong" and "weak" elements did not lead to an incorrect decision. This is because the methodology for assessing the similarity of designations was not violated, and in both scenarios (whether the words "Doktorsky" and "Garant" are considered separate elements or a single entity), the similarity to the point of confusion was absent, indicating the legality of the court's decision.

In this regard, the judicial panel agreed with the conclusion of Rospatent that the contested trademark and the opposed trademark according to Russian Federation Certificate No. 583747 are not similar due to the different phonetic sound of their final parts “garant” / “standard”.

As for the application of the principle of estoppel, its main task is to prevent a party from receiving a benefit due to inconsistency in its behavior to the detriment of another party who relied in good faith on a certain legal situation created by the first party. The principle of estoppel can be defined as a prohibition to refer to circumstances that were previously recognized by a party as indisputable based on its actions or representations.

The Presidium of the Court for Intellectual Rights noted that Rospatent indeed, in a number of administrative cases in similar combinations, pointed out the weakness of a certain element, but this position of the administrative body did not find support when considering cases related to challenging such decisions of Rospatent in court. It is obvious that the administrative body should not repeat its mistake when considering subsequent administrative cases and this behavior of Rospatent has nothing to do with the principle of estoppel.

Finally, having analyzed the conclusion of the Research Institute for Intellectual Property Protection dated March 23, 2023 No. SE-2203-13, presented by the Vladimir Standard society, based on the results of a sociological study, Rospatent came to the conclusion that it contains a number of shortcomings and violations that could would lead to incorrect conclusions. The court of first instance noted that the wording of the sociological survey questions must comply with the principles of objectivity and neutrality and cannot include elements of the answer or provide deliberately unrealistic answer options. As the court of first instance noted, the questions of the presented sociological research are formulated in such a way that they lead respondents to the answers “needed” by the customer of the survey.

Thus, by the decision of the Presidium of the SIP in case No. SIP-825/2023 dated 06/17/2024, the decision of the trial court dated 03/11/2024 and the decision of Rospatent dated 05/17/2023 were upheld, and the Vladimir Standard company was the objection to the provision of legal protection to the trademark “Doctoral Guarantor” No. 869411, the copyright holder of which is the Starodvorskie Sausages company, was rejected.