Zuykov and partners proved the legality of trademark protection for "Kolbasny Standard" (Sausage Standard)

Vladimirsky Standard LLC filed an objection with Rospatent against the legal protection of the verbal and combined trademarks "Kolbasny Standard," registered under Russian certificates No. 812084 and 680891. The objection was motivated by non-compliance with the requirements set out in clauses 1, 3, 6, and 8 of Article 1483 of the Russian Civil Code. The trademarks are owned by "Starodvorskie Kolbasy" JSC.

Zuykov and partners represented the interests of the copyright holder in these cases.

By the decision of Rospatent, the objections of the Vladimirsky Standard company were denied, and the legal protection of the Kolbasny Standard trademarks was left in force.

Disagreeing with these decisions, Vladimirsky Standard filed a claim with the IP Court to invalidate Rospatent’s decisions to refuse to satisfy objections to granting legal protection to the Kolbasny Standard trademark.

By decisions of the courts of first instance dated 05.12.2023 and 20.12.2023 in cases No. SIP-733/2023 and SIP-732/2023, the decisions of the administrative body were declared invalid, the court ordered Rospatent to re-examine the objections of Vladimirsky Standard.

Starodvorskie Kolbasy, believing that the court of first instance incorrectly applied the norms of substantive law, and the conclusions of the court of first instance do not correspond to the factual circumstances of the case and the evidence available in the case, filed cassation appeals with the IP Court Presidium with demands to overturn the decisions of the courts of first instance dated 05.12.2023 and 20.12.2023 in cases No. SIP-733/2023 and SIP-732/2023.

The Presidium agreed with the arguments of the cassation appeals of the copyright holder and established that the conclusions of the court of first instance regarding the strength and weakness of the elements of the disputed trademarks “Kolbasny Standard” were made in violation of the applicable methodology.

By the decisions of the Presidium, the decisions of the courts of first instance in cases No. SIP-733/2023 and SIP-732/2023 were overturned, and the cases were sent for a new hearing to the IP Court.

In overturning the decisions of the court of first instance, the Presidium pointed out that the court of first instance, unlike Rospatent, established a different number of elements of the contested trademarks when checking their compliance with the provisions of subparagraph 3 of paragraph 1 of Article 1483 of the Civil Code of the Russian Federation and subparagraph 2 of paragraph 6 of the same article of the said Code. This methodologically incorrect judgment also led to conclusions about which of the two verbal elements is stronger (if the element is single, then its strength is determined as such, in its entirety). During the new review, the court of first instance must correct the methodological error committed.

The Presidium of the Intellectual Property Court noted that in the case where a trademark consists of several words, it is necessary to determine whether they are perceived as stable indivisible phrases or phraseological units. Designations of this group are characterized by integrity, due to which they acquire a new semantic meaning, different from the semantic meaning of the words that comprise them. The meaning of such expressions is not associated with the semantics of each individual word in its composition: the words of the phrase lose all independent features of the word (lexical meaning, forms of change, syntactic function), except for the sound image. The connection between the words in the composition of such expressions is inseparable. Accordingly, such expressions, although formally consisting of several words, are perceived as a single element due to their integrity and the loss of the features of the word by individual lexical units.

Several words may begin to be perceived as a single verbal element not only in the above cases, but also based on the features of the compositional construction of the elements of a trademark, due to which some words, which are independent lexical units, begin to be perceived by the consumer as a single whole in a specific trademark, taking into account the specifics of their location in it and the circumstances of the use of the mark.

Thus, the determination of the number of elements in a trademark is carried out based on its perception by consumers. In this case, the conclusion about the number of elements of a specific trademark does not depend on the basis on which the protectability of the mark is checked. If the element of the disputed trademark is single, then its strength is determined as a whole.

During the new consideration of cases No. SIP-733/2023 and SIP-732/2023, the court of first instance, taking into account the conclusions set out in the resolutions of the Presidium, upheld the decisions of Rospatent and rejected the objections of Vladimirsky Standard (decisions of the Intellectual Property Court of 01.07.2024 and 19.07.2024 in cases No. SIP-733/2023 and SIP-732/2023, respectively).

Having disagreed with the decisions of the courts of first instance during the new consideration of cases No. SIP-733/2023, SIP-732/2023, Vladimirsky Standard Company filed cassation appeals with the Presidium of the IP Court.

The Presidium of the Intellectual Property Court, having studied the case materials, discussed the arguments set out in the cassation appeal, and heard the representatives of the persons participating in the case, decided to reject the cassation appeals of Vladimirsky Standard and to uphold the decisions of the courts of first instance of 01.07.2024 and 19.07.2024.

Thus, the legal protection of the verbal and combined trademarks “Kolbasny Standard” under the certificates of the Russian Federation No. 812084 and 680891 is left in force, the interests of the copyright holder are protected.