Zuykov and partners proved the illegality of the decision of Rospatent in relation to the CORTES trademark

The Intellectual Property Court considered the applications of the foreign entity Van Pur S.A. (Warsaw) and Oasis LLC (Ufa) to invalidate the decision of Rospatent dated 05/17/2024, adopted based on the results of consideration of the objection dated 09/06/2023 against the granting of legal protection to the trademark "" under the certificate of the Russian Federation No 926140. This trademark was registered on 03/03/2023 in relation to goods of the 32nd class of the Nice Classification "beer; non-alcoholic beverages; soft drinks, non-alcoholic." Alexandrovy Pogreba LLC (the person who filed the objection), as well as 9 organizations that are part of the Red & White group of companies, including Alfa M LLC (Moscow), were involved in the case as third parties that did not make independent claims regarding the subject of the dispute.

In this case, Zuykov and partners represented the interests of the plaintiff Oasis and the third-party Alfa-M (part of the Red and White group of companies).

Alexandrovy Pogreba LLC, being the owner of the trademarks "Hernan Cortes" and "Don Cortez" in the 32nd and 33rd classes of the Nice Classification, on 06.09.2023 appealed to Rospatent with an objection to the granting of legal protection to the trademark "CORTES". Based on the results of consideration of the objection, the decision dated 17.05.2024 invalidated the granting of legal protection to the disputed trademark.

Van Pur and the Oasis company, disagreeing with the decision of Rospatent, appealed to the IP Court with a statement that the differences between the opposing trademarks are sufficient so that the average consumer does not associate them as the same designation or designations of the same manufacturer. Oasis justified its interest in filing an application with the Intellectual Property Court by the fact that that it was an importer of alcoholic beverages ("Cortes Extra beer") to the territory of the Russian Federation, marked with the disputed trademark. In connection with the invalidation of the trademark, Alexandrovy Pogreba LLC appealed to the organizations that are part of the Red & White group of companies  with claims for infringement of its trademarks, and subsequently filed claims with arbitration courts for the recovery of compensation in the amount of more than 150 million rubles.

Having analyzed the disputed designation, as well as the trademarks opposed to it, the IP Court came to the conclusion that the similarity of the elements of "CORTEZ" / "CORTES" of the compared means of individualization is not sufficient to conclude that the designations as a whole are similar. Due to the additional figurative element of the trademark, the different number of words, syllables, letters of the compared marks, the grounds given by Rospatent only indicate the presence of a low degree of similarity of the compared designations.

In addition, the Intellectual Property Court noted that Rospatent did not take into account that, from the point of view of an ordinary consumer, the trademarks "HERNAN CORTES" and "DON CORTEZ" according to the certificates of the Russian Federation No 314675 and No 545627 the elements on which the consumer's attention is focused are the designations "Don" and "Hernan".

From the point of view of IP cases, a high degree of homogeneity of goods does not in itself compensate for the low degree of similarity between the disputed trademark and the opposing trademarks. In addition, even if there is some similarity of the compared trademarks, the widespread use of both may lead to the absence of the likelihood of their confusion in civil circulation.

Thus, the court noted that it is possible that when a senior trademark is widely known, popular, has a high reputation and the junior trademark at the time of filing an objection has also acquired fame, popularity, a certain reputation among the consumer, the likelihood of confusion of such designations is reduced, since consumers who often purchase the relevant products have information about both manufacturers, about the goods of each of them, as well as about those used by such manufacturers designations. If the objection is filed after the beginning of the actual use of the minor mark, then the confusion, even if it existed at the initial moment, may begin to decrease as the target group of consumers gets used to the coexistence of the older and lower marks, which may be taken into account by virtue of paragraph nine of Clause 2 of Article 1512 of the Civil Code. Among other things, this is the basis for the rule provided for by Subparagraph 2 of Paragraph 2 of Article 1512 of the Civil Code that an objection under Paragraph 6 of Article 1483 of the Civil Code may be filed only within five years from the date of publication of information on the state registration of a trademark in the Official Gazette (it is assumed that within five years the consumer becomes completely accustomed to the coexistence of marks). If a junior trademark is actively used, then consumers may get used to the coexistence of marks earlier than the five-year period.

Since these circumstances were incorrectly established by Rospatent when making the contested decision, the court declared the decision of Rospatent dated 17.05.2024 invalid in terms of satisfying the objection. Thus, Van Pur's claim to invalidate the decision of Rospatent dated 17.05.2024, adopted following the consideration of the appeal dated 06.09.2023 against the granting of legal protection to the trademark under the certificate of the Russian Federation No 926140, as not meeting the requirements of subparagraph 2 of paragraph 6 of Article 1483 of the Civil Code of the Russian Federation, was satisfied by the court.

Despite the refusal to satisfy the application of Oasis LLC, the general decision of the court is in the interests of Oasis, since the restoration of the trademark means that the importer legally sold the goods marked with this trademark.